VENEZUELA Law and Practice Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
required documents are missing, it will issue an office action requesting that the deficiency be cured within 30 days, which may be extended for up to three months upon request, at the IP Office’s discretion. • Publication of the application, first in the Official Gazette and then in the Official Bulletin, which opens a 30-day window for third-party oppositions. The applicant’s failure to respond to an opposi- tion results in abandonment of the application and suspension of its prosecution. • Substantive examination, where the IP Office assesses the mark’s distinctiveness, novelty, and compliance with the prohibitions set out in Arti- cles 33 to 35 of the LPI. If the examiner raises any objections, the applicant will be afforded an oppor- tunity to make the required adjustments. • Grant, followed by a 30-day period for the appli- cant to pay the registration and grant fees, which are approximately USD210. Unopposed applications that do not receive office actions or refusals generally proceed to registration in approximately ten to 15 months from initial filing. 2.4 Term, Use and Maintenance The term of trade mark protection is 15 years from the date of registration, and registration may be renewed indefinitely for successive periods of the same dura- tion. To maintain protection, there is technically a statu- tory use requirement pursuant to Article 36 (d) of the LPI, which provides that a mark becomes invalid fol- lowing two consecutive years of non-use. However, there are no reporting obligations, use declarations or independent oversight mechanisms to ensure com- pliance at any stage of the trade mark’s life cycle. In the absence of any administrative enforcement mechanism, the use requirement is policed exclusively through adversarial proceedings brought by interested third parties. Assessment of Use The standard of genuine use under the LPI’s cancella- tion regime is strictly construed by both the IP Office and the reviewing courts, with qualifying use limited to actual sales within Venezuela during the relevant two-
year period. Use in other Latin American jurisdictions is irrelevant to the analysis. The evidence most com- monly accepted consists of contemporaneous com- mercial documentation, such as dated invoices, sales ledgers, and purchase or sale records correspond- ing to the relevant time period. Supporting materials such as licence agreements, distribution agreements or social media content are insufficient on their own, making thorough evidentiary preparation essential in any proceeding where non-use may be alleged. Constructive use through a licensee may satisfy the use requirement, provided that (i) the licence agree- ment is recorded with the IP Office and (ii) the licensee is able to substantiate actual sales within the country during the relevant period. Critically, the rights-holder must also be able to establish a clear chain of title between licensor and licensee, demonstrating that the sales in question are attributable to the mark owner’s authorised use of the mark rather than to an independ- ent third party or infringer. A recorded licence agree- ment alone, without accompanying proof of sales and a traceable connection between those sales and the mark owner, will not suffice. 2.5 Trade Mark Rights and Limitations Registration grants the owner the exclusive right to use the registered trade mark, trade name or slogan in connection with the goods, business establishment or activity covered by the registration. That protection is limited to the relevant class and goods or services for which the mark was registered. The registered owner may accordingly prevent third parties from using an identical or confusingly similar sign in relation to the same or analogous goods or services without authori- sation, and may bring infringement proceedings and claim damages in respect of unauthorised use. In practice, the principal limitations and defences are those relating to scope of protection, recorded licensed use, and own-name use. • Scope of protection – The rights conferred by registration are limited to the class or activity for which the mark was registered. A third party may therefore argue that its use falls outside the scope of the registered right where the goods or services in question belong to a different class, or where the
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