TRADEMARKS FILING AND PROSECUTION IN VENEZUELA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Venezuela are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.[1]
| Relevant office | Autonomous Service of Intellectual Property Ministry of the Popular Power of Industries and National Production (SAPI) |
| Nice classification | Yes(11th edition) |
| Paris convention | Yes |
| Madrid system | No |
| Multi class system | No |
| Documents required for filing a trade mark application | Power of Attorney legalized by the Venezuelan consulate |
| Prosecution process | Filing publication of the mark in trademark journal opposition (within 30 days from the date of publication) registration renewal |
| Registration term | 15 years from the date of registration |
| Renewal term | 15 years |
Trademark searches in Venezuela
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark searches in Venezuela can be conducted for word marks, device marks, numeral and labels. The official search can be conducted at the records of the Autonomous Service of Intellectual Property, Ministry of the Popular Power of Industries and National Production (SAPI). For the search to be conducted the applicant must previously pay the cost of the search and the request must be submitted along with receipt of the search and the copy of the form along with the receipt. The searches are usually obtained within three days. [2]
Trademark word search edition of Venezuela follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Venezuela can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Venezuela.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filing trademark applications in Venezuela
A person can file a single class trademark application in Venezuela.
Trademark applications in Ecuador can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Venezuela:
Ordinary trademark applications filed in Venezuela are applications which are filed without claiming any priority. Ordinary application are filed with the Autonomous Service of Intellectual Property, Ministry of the Popular Power of Industries and National Production (SAPI). Applicant must duly fill the Form FM-02 with its respective class at the SAPI offices.[3] Further all the documents issued by the personal or legal foreign entity, whether public or private must be translated into Spanish by Venezuelan sworn translator. Multi class trademark applications cannot be filed in Venezuela, separate applications are to be filed for each class.[4]
Priority/convention trademark applications in Venezuela:
A priority trademark application should be filed in Venezuela within 6 months after the date on which the application was made in the convention country.[5]
Paris convention
The Paris Convention for the protection of Industrial Property, signed in Paris, France, on March 20, 1983, established a union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim on the Paris convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Venezuela within 6 months of after the date on which the application was made in the convention countries.
Trademark classes for goods and services in Venezuela
Venezuela follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
Trademark examination in Venezuel
Once the application is submitted for the registration, the application is reviewed as to the fulfillment of the formal requirements of the registration. If the application does not comply with the formal requirements, the office action is issued by the examiner and shall notify the applicant to comply with all the requirements within 30 working days from the date of the office action notification. After the end of this 30 working days an extension may be requested up to 3 months for fulfilling the formalities. The granting of this extension period is optional to the registrar, if the extension has been granted, the IP office shall notify the period in the subsequent IP gazette.
The SAPI orders the advertisement of the application in the IPO’s digital newspaper via official notice in the industrial property bulletin, during this period no opposition stage has started. This advertisement arrangement is to be made and accomplished during the 2 months and will be subject to the review and approval.[6]
Trademark opposition in Venezuela
Once the application for the registration has successfully completed the examination period, the application is accepted and published in the official gazette for the third party observations. Any interested party may file a notice of opposition within 30 days from the date of publication.
If the opposition is filed the applicant will be notified the industrial property bulletin, the applicant will have the 15 days to be notified and obtain the copy of the opposition thereof.
The applicant will be given additional 15 days to file a reply in support of his application. The failure to file a reply within this period may lead to a abonnement of the trademark application.
In case no opposition is filed during this period, the application will undergo the substantive examination check on the basis of the absolute and relative grounds for refusal, if the application is refused it is notified in the industrial property bulletin. The applicant can appeal the decision within 15 days followed by the date of decision.[7]
Trademark registration in Venezuela
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 15 years from the date of registration of the application and registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://sapi.gob.ve/servicio-marcas/#1600292761613-9db8abd4-8079
[3] https://sapi.gob.ve/servicio-marcas/#1600289465207-e403a27a-ad88
[4] https://www.country-index.com/country_surveys.aspx?ID=239
[5] https://wipolex.wipo.int/en/treaties/ShowResults?search_what=C&treaty_id=2
[6] https://www.country-index.com/country_surveys.aspx?ID=239
[7] https://www.country-index.com/country_surveys.aspx?ID=239