VENEZUELA Law and Practice Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
2.3 Trade Mark Registration System With the limited exception of cases in which a claim- ant may substantiate a “better right” through evidence that the mark is well-known, registration is required to secure enforceable trade mark rights in Venezuela. Trade mark rights are acquired through registration rather than use, as Venezuela follows a first-to-file regime. Trade mark applications must be filed before the IP Office either directly by the applicant or through a local agent. Where an application is filed through an agent, the applicant must submit an original, notarised and legalised power of attorney together with the application or, at the latest, in response to an office action issued by the IP Office as part of its formal examination. Importantly, the LPI does not contemplate multi-class applications. Applicants must therefore file separate- ly in each class, which can materially increase filing and maintenance costs. Applicants seeking protec- tion across multiple classes should also consider the nation’s non-use cancellation regime and limit their filings to classes that are commercially relevant and that they genuinely intend to use in the local market (see 2.4 Term, Use and Maintenance – “Assessment of Use”). The trade mark application process generally includes the following steps. • Mandatory clearance search, including separate searches for the denominative and graphic ele- ments of composite marks, at an official cost of approximately USD44 per search, subject to exchange-rate fluctuations. • Filing the application before the IP Office, together with proof of the search request, proof of payment of the filing fee, a specimen for graphic or com- posite marks, a power of attorney (if filed by a local agent), and any priority document (if applicable), with supporting documents translated into Spanish and certified by a local translator. The filing fee is approximately USD108. • Formal examination, where the IP Office reviews the application for compliance with formal require- ments set out in Article 71 of the LPI. If any
prior registration by asserting a “better right”. In gen- eral, such a claim requires proof of all of the following: • the mark’s notoriety or well-known status; • prior use; and • bad faith. For more information on the types of evidence the IP Office and courts have historically accepted in support of notoriety claims, see 2.2 Requirements for Trade Mark Protection – “Well-Known Distinctive Signs”. 2.2 Requirements for Trade Mark Protection The core requirements to acquire trade mark rights are distinctiveness and novelty. Although the mainte- nance of trade mark registrations is technically sub- ject to a statutory use requirement, the absence of an administrative enforcement mechanism means that non-compliance may only be challenged through can- cellation proceedings brought by interested third par- ties. See 2.4 Term, Use and Maintenance – “Assess- ment of Use”. Well-Known Distinctive Signs Although unregistered notorious or well-known marks do not enjoy independent statutory protection, a mark’s notoriety may nonetheless be invoked to assert “better right” over a third party’s application in an opposition proceeding, or as the basis for a nullity action brought against a third-party registration. Administrative practice has historically been strict in its assessment of evidence substantiating claims of notoriety. To succeed, a claimant would generally be expected to present a combination of the following: • foreign registrations or applications, industry rec- ognitions or awards associated with the relevant mark or product; • third-party publications featuring the relevant mark (such as advertising materials, technical publica- tions comparing product features, independent reviews or independent studies); and • commercial records demonstrating use across multiple jurisdictions.
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