VENEZUELA Law and Practice Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
Grounds for Refusal Articles 33 and 34 of the LPI set out the grounds on which registration will be refused. These prohibitions fall broadly into two categories: absolute grounds, which relate to the inherent nature of the sign, and relative grounds, which concern conflicts with prior rights. On absolute grounds, a mark will be refused if it is immoral, unlawful or misleading, or if it lacks sufficient distinctiveness. The LPI bars marks connected to ille- gal or harmful goods or activities, as well as official symbols, including domestic and foreign flags, coats of arms, public insignia and Red Cross emblems, unless duly authorised. Also excluded are geographic names used solely to indicate origin, product shapes or colours standing alone, non-novel geometric fig- ures, generic terms, and descriptive expressions that convey the nature, quality, origin or form of the goods or services. Personal names and surnames may not be registered unless presented in a sufficiently dis- tinctive form, and, where the name belongs to a third party, the consent of that person is required. Marks that ridicule persons or ideas are likewise prohibited. On relative grounds, registration is refused where a mark resembles a prior registered mark as to risk con- fusion or deception among consumers, whether the goods or services are identical or analogous. Despite this statutory prohibition, the IP Office has, in practice, allowed the registration of identical trade marks in the same class where it considers that the relevant goods do not give rise to consumer confusion. Additionally, the IP Office examiner retains discretion to allow reg- istration where the owner of a conflicting mark has entered into a coexistence agreement with the appli- cant. Descriptive trade names and certain commercial slogans are excluded from registrability, except to the extent they incorporate a sufficiently distinctive ele- ment. Unregistered Signs and Better Rights Exclusive trade mark rights are ordinarily acquired through registration rather than through prior use. However, the LPI provides a mechanism through which the owner of an unregistered sign may chal- lenge a conflicting application or seek to invalidate a
under Article 66 must be filed within two years from the date of grant. Importantly, the opposition and nul- lity routes are mutually exclusive: a third party must elect either to oppose the application before grant or to challenge the granted patent through nullity pro- ceedings. Practical Considerations In practice, these remedies are not commonly pur- sued. While patent enforcement can involve practi- cal hurdles, including limited judicial precedent, the absence of specialist courts, and the time and cost associated with proceedings, rights-holders should assess on a case-by-case basis whether civil or crimi- nal avenues, or a combined approach, offer the most suitable course of action. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Registrable Signs Trade mark protection is governed by the LPI and the LOPA. Article 27 of the LPI defines a trade mark broadly to include any sign, figure, drawing, word, combination of words, slogan or other novel and dis- tinctive sign used to distinguish goods or a business. Non-Traditional Marks The LPI does not expressly recognise non-traditional marks such as sounds, scents or three-dimensional shapes as independent categories; although Article 27 permits the registration of “figures”. However, Article 33 prohibits the registration of shapes and colours given to products by their manufacturer, as well as colours or colour combinations alone. Recent administrative practice nonetheless suggests that certain shape- and colour-based features may be protected where they form part of a broader graphic or composite mark. As such, the stronger basis for protection remains the overall visual configuration of the sign, rather than any single colour or shape claimed in isolation. Where protection is sought for the ornamental appearance of a shape, industrial design or industrial model protection may be more appropri- ate (see 8.4 Trade Marks, Trade Dress and Industrial Designs ).
418 CHAMBERS.COM
Powered by FlippingBook