VENEZUELA Trends and Developments Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
contested products, creating a significant chain-of- title obstacle for the trade mark owner. The forthcom- ing decision is expected to address the extent to which a bad-faith argument may carry weight in this context, and whether such an argument can help establish use in the absence of direct evidence of sales. Commercial use during the relevant two-year time period Commercial use must be substantiated by evidence of local sales dated within the relevant two-year time period. The most persuasive categories of evidence consistently accepted by the IP Office in cancellation proceedings include the following: • dated invoices and purchase orders reflecting sales of goods bearing the mark in Venezuela; • dated images of packaging materials showing the mark available in online or physical retail stores in the country; and • dated advertisements of the products bearing the mark directed at Venezuelan consumers. Supporting materials such as local sanitary permits, point-of-purchase materials and licence agreements may help corroborate a claim of commercial activ- ity but are insufficient standing alone. They must be accompanied by direct evidence of actual sales of goods or services bearing the mark. Venezuelan territory The territorial requirement reflects the foundational principle that trade mark rights are national in scope and must be exercised within the territory where pro- tection is claimed. For multinational brand owners, this means that sales activity in neighbouring markets, including former Andean Community member states, Local practice is notably strict in its approach to defences against non-use cancellation actions: prov- ing genuine use in the relevant two-year term is the only proven defence, subject to the fulfilment of each criterion set out by the IP Office. See “Criteria for Genuine Use”, above. will not satisfy the use requirement. Defences to Claims of Non-Use
So far, the IP Office has not recognised any other argument – including a better-right claim (whether based on prior registration or notoriety) or the claim- ant’s alleged bad faith – as independent ground for defeating a claim of non-use. This places Venezuela among the stricter jurisdictions globally in terms of the defences available to rights-holders in non-use proceedings. Further, such a strict approach represents a meaning- ful departure from the treatment of notoriety in other proceedings under Venezuelan law; in opposition actions and nullity proceedings, notoriety can ground a claim based on a better right, giving the owner of a well-known mark a basis to challenge a conflicting registration even without prior registration in Venezue- la. That protection, however, does not extend to non- use cancellations, where the inquiry is strictly limited to genuine use within the statutory period. Strategic implications The absence of any defence beyond use has important practical consequences. It means that a rights-holder cannot rely on the strength of its brand reputation, the length of its commercial history in Venezuela, or the evident opportunism of the petitioner to preserve a registration that is not supported by direct evidence of use. For brand owners, particularly foreign rights- holders whose market presence has diminished, this underscores the importance of maintaining a contem- poraneous evidentiary record of commercial activity in the country and, where use cannot be demonstrated, of reassessing the strategic value of maintaining reg- istrations that are vulnerable to challenge. Undefined Limits of Permissible Variant Use of a Registered Mark A trade mark registration confers rights over a specific sign as it appears on the register; it is not a general licence to use an unlimited range of related variations. Where the mark used in commerce has drifted from its registered form, the registration may no longer accu- rately represent the sign consumers associate with the brand owner’s goods or services. Administrative prac- tice is currently testing the limits of permissible vari- ation, most recently in a dispute involving the widely recognised “María” cookies ( galletas María ), a brand with over a century of commercial presence across
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