SOME ASPECTS REGARDING THE ANDEAN COMMUNITY, VENEZUELA, MEXICO

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1 SOME ASPECTS REGARDING THE TRADEMARK LEGISLATION IN THE ANDEAN COMMUNITY, VENEZUELA, MEXICO AND PANAMA RICARDO METKE Many thanks to Laura Estrada (Baker & McKenzie Mexico), Dianne Phoebus (Baker & McKenzie Venezuela), Marissa Lasso de la Vega (Alfaro, Ferrer & Ramírez - Panama), Maria Cecilia Romoleroux (Corral & Rosales - Ecuador), Hector Alvarez (Rodrigo, Elias & Medrano - Peru) and Perla Koziner (Bufete Aguirre Soc Civ - Bolivia) for their valuable cooperation for this presentation.

2 Index 1. Preliminary comments 2. Effects of registration 3. Signs that may be registered as trademarks 4. Trademark application requirements 5. Registration Proceeding 6. The obligation to use 7. Renewal of Registration ti

3 1. Preliminary comments - The Andean Community industrial Property common regime. - The Venezuelan case

4 2. The effects of registration - AnCom registration has an attributive effect - In Mexico registration is unopposable before a prior user. - In Panamá the right over registration arises with use.

5 3. Types of signs registrable as trademarks - ANDEAN COMMUNITY AND PANAMÁ Perceptible signs - VENEZUELA Words, devices and word & design trademarks. Three-dimensional signs are not allowed. - MEXICO Visible sbesg signss

6 4. Trademark application requirements - Applicant. Individuals or corporate entities. National or foreign. - Directly or by means of a representative (mandatory in Panama and Ecuador).

7 Content of applications - Official forms: Bolivia: bo Colombia: - Formulario Ecuador: ec Peru: Mexico: i - Formulario Panama: - Formulario Venezuela:

8 Official Fees BOLIVIA COLOMBIA ECUADOR PERU MEXICO PANAMA VENEZUELA US$225 US$370 US$116 US$200 US$196 US$124 US$50

9 Application form - Applicant s information - Image or drawing of the trademark (drawing, description) - List of products or services

10 - Additional requirements: Power of attorney and certificate of legal existence and representation of the company. Priority documents Consent documents to register the trademark. Clear drawing of the mark if needed

11 - Additional requirements: - In Mexico the date of first use of the mark must be indicated. - Panama an affidavit regarding the use of fthe mark must tbe submitted.

12 Products and services - International Nice Classification of Goods and Services (except for Venezuela). - One-class applications (except for Peru: multiclass). - Trademark Law Treaty TLT 1994: Peru and Colombia

13 5. Registration proceeding - It is an administrative proceeding and it is held before an administrative authority BOLIVIA COLOMBIA ECUADOR PERU COMPETENT Servicio Nacional Superintendencia de Instituto Ecuatoriano Instituto Nacional de Defensa ENTITIES de Propiedad Intelectual SENAPI Industria y Comercio SIC de la Propiedad Intelectual IEPI de la Competencia y de la Protección de la Propiedad IntelectuaL INDECOPI WEB SITE

14 MEXICO PANAMA VENEZUELA COMPETENT Instituto Dirección General del Servicio Autónomo ENTITIES Mexicano de la Registro de la de la Propiedad Propiedad Industrial Propiedad Industrial Intelectual DIGERPI (SAPI) IMPI WEB SITE

15 Procedural stages - Examination on formal requirements. - In-depth examination

16 - Publication of the application for opposition purposes (except for Mexico). - Through Industrial Property Bulletins or Gazettes. - Peru: Diario Oficial Peruano (Official Peruvian Diary). - In Venezuela it is published one time in a wide circulation newspaper before it is published in the Official i Bulletin (Boletin Oficial).

17 Oppositions (except for Mexico) - AnCom: it has an administrative nature and may be grounded on absolute or relative prohibitions - In Venezuela, there is also the possibility of opposing on the grounds of a better right, this opposition is followed before Court - In Panama, oppositions are processed before courts, regardless if they are grounded on absolute or relative prohibitions.

18 - The decision that denies registration may be contested through the administrative authorities by means of a reconsideration motion submitted before the same officer, and by means of an appeal motion filed before the immediate superior. - The decision i that ends the administrative i i proceeding may be challenged before the administrative/civil courts.

19 - The duration of the administrative proceeding for registration of the mark ranges between 6 and 12 months, without objections, and between 6 months and 2 years, with objections. - In Venezuela, the duration is of 1-3 years, without objections, and 3-5 years with objections.

20 - Free Trade Agreements and obligations regarding trademark registration ti proceedings.

21 6. Obligation to use the trademark - Burden to use the mark in the country - Cancellation of the registration as a sanction for non- use of the mark. - Non use may be justified upon proving special - Non use may be justified upon proving special circumstances which excuse such non use.

22 - The use in any member-state of AnCom prevents cancellation. - In Panamá the placement of products in the national or international market is valid. - In AnCom and Mexico, use of the mark for products destined to being exported is considered d use of the mark.

23 Periods of mandatory use of the mark - In the AnCom Three years preceeding the filing of the cancellation action. - In Venezuela Within the two years following the date of registration.

24 - In Mexico During the three years preceeding the cancellation action. - In Panama Five years preceeding the cancellation action

25 - The cancellation action must be filed by an interested party. In Venezuela it may also be initiated ex officio. - In AnCom and PANAMA cancellation may be total or partial.

26 - In México the trademark must be used at least to identify one of the goods or services covered. - Secondary and accessory elements within the trademark may modified when using the mark.

27 7. Renewal of registration - Registration is granted for 10 years. In Venezuela for 15 years. - In AnCom the term is counted as from the date in which h registration ti was granted.

28 - In Mexico and Panama the term is counted as from the date in which application was filed. - The renewal petition must be filed within the previous six months. Asixmonth grace period is established - A six-month grace period is established (except for Venezuela).

29 - Official i fees need to be paid for renewal of registration which is automatically granted, for equal periods. - In Mexico, an affidavit attesting the continued use of the mark for a period of at least three years must be submitted.

30 Thank you Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a partner means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an office means an office of any such law firm.