INTA - Country Guides Essential Information On Trademark Protection Worldwide PDF

10/10/2019 INTA :: Country Guides Essential Information on Trademark Protection Worldwide
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CONDENSED REPORT
This guide provides a basic profile of this jurisdiction’s trademark law and practice and is not intended to take the place of professional
advice given with full knowledge of the specific circumstances of each case and proficiency in the law of this jurisdiction such as might be
provided by a local trademark attorney.
ARGENTINA
Registration Requirement:
Registration is mandatory to establish rights to a trademark; this is a "first to file"
jurisdiction. In accordance with Article 4 of the Trademark Act (Law No. 22,362),
ownership of a trademark and exclusive use thereof are acquired through registration.
Use of an unregistered mark for any goods or services is legal. The Trademark Act
encourages registration of marks by granting exclusive rights, among other benefits,
upon registration. However, use of an unregistered mark is not illegal.
Registrable Signs:
The following signs that can be reproduced graphically and are capable of
distinguishing the goods or services of one person or entity from another are
registrable as a trademark: words; names; devices; certain three-dimensional shapes;
colors; slogans; sounds; smells (olfactory trademarks); motion; touch.
In addition to regular trademark registrations, the following types of trademarks are
registrable: collective marks; well-known marks (However, please note that there is no
specific category for well-known marks in the application form.); service marks.
Register Search:
The official register can be searched online.
Types of Registration:
In this jurisdiction, the following type of registration is available: national.
Domain Names as Trademarks:
A domain name may be protected as a trademark only if the domain name is not
merely a Web address but is used or intended to be used in connection with goods or
services.
The application to register a domain name as a trademark will be examined for
conflicts with prior trademarks.
An earlier-filed domain name registration can create rights effective against a later-
filed trademark registration application filed by another only if the domain name is
being used as a trademark in addition to being used as an address.
In general, the courts apply the same principles to domain name disputes as are
applied to trademark disputes.
Online Filing:
Applications cannot be filed online.
The official file cannot be accessed online.
Classification:
https://applications.inta.org/apps/cgs_presentation/search_result_condensed/?iso=32_68_76_152_170_218_484_600_604_862 1/23
If a trademark is or will be used in more than one class of goods and/or services, it is
necessary to file a separate application for each class of goods and/or services.
Representation:
An application to register a trademark may be filed directly in this jurisdiction by: the
applicant, but only if a citizen of or domiciled in the jurisdiction; a trademark
representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.
Examination:
Applications are examined in respect of: formalities: i.e., for compliance with the filing
requirements; classification: i.e., to ensure that the goods or services fall within the
class(es) listed in the application. An examination in respect of all other aspects, i.e.,
descriptiveness, distinctiveness, deceptiveness, conflict with earlier registrations
and/or applications, is conducted following publication.
Opposition:
Opposition is available.
The opposition period begins on the following date: the day after publication of the
application.
The opposition period ends on the following date: 30 days after publication of the
application.
Assignment:
An application can be assigned.
A registration can be assigned.
Licensing:
An application can be licensed.
A registration can be licensed.
Term:
The initial term of a registration is: 10 years.
Marking Requirements:
Marking is not compulsory for registered trademarks, but is advisable because: it
alerts third parties as to the registration, so that they cannot later on claim they are
innocent infringers.
Any marking should be in the form(s) mentioned below. Please consult a local
trademark attorney in case of doubt. ®; MR.
The use of ® is not legally recognized, but it is recognized in practice.
Use Requirements:
Attack on the ground of non-use is available.
To avoid being attacked on the ground of non-use, a trademark must be used within
the following period of time: five years from the registration date.
Cancellation:
Cancellation is available against registrations.
There is a deadline for bringing a cancellation action. Note, however, that there is no
deadline for bringing a cancellation action on the ground of non-use. See Section
VII.A. Use Requirements.
The deadline for bringing a cancellation action is: 10 years from the registration date.
Some court decisions have held there is no time limit for requesting the cancellation of
a registration in the case of well-known marks. Note that there is no deadline for
bringing a cancellation action on the ground of non-use. See Section VII.A. Use
Requirements.
Renewal:
The first renewal date of a registration is: 10 years from the registration grant date.
Subsequent renewals last for the following period of time: 10 years from the renewal
date of the registration.
There is no grace period for renewing registrations once the renewal date has expired.
Last updated: October 2018
Contributor: Silvia Fabiana Faerman, Universidad de Buenos Aires School of Law (Buenos Aires,
Argentina), Buenos Aires, Argentina
BOLIVIA
Registration is required to establish rights in a trademark; this is a "first to file"
jurisdiction.
Use of an unregistered mark for the following specified goods only is not legal:
pharmaceutical products (This provision is not always enforced, and it is not
uncommon to see pharmaceutical products that are not covered by a registered
trademark being allowed into the market, even though the Trademark Law (Law of
January 15, 1918, on Trademarks and Industrial and Commercial Records) provides
for the mandatory registration of a trademark for pharmaceutical products.).
Registrable Signs:
colors (defined by a specific shape); slogans; sounds; smells (olfactory trademarks)
(as long as they can be represented graphically, for example, by their chemical
formula); trade dress/get-up; holograms; motion; taste; touch. Anything that has
distinctive capacity can be registered as a mark as long as it can be represented
graphically.
registrable: collective marks; certification marks; well-known marks; service marks.
Register Search:
The official register cannot be searched online.
Any domain name may be protected as a trademark. It may be registered as long as it
complies with the registration requirements, as any other mark would need to do. A
domain name application will not be afforded protection over the www, .com, etc.,
portion of the mark.
An earlier-filed domain name registration cannot create rights effective against a later-
filed trademark application filed by another.
In general, the courts do not apply the same principles to domain name disputes as
are applied to trademark disputes. The following unique considerations are of
particular note: There is scant substantive law and regulation regarding domain
names.
Online Filing:
Classification:
Representation:
applicant, even if not a citizen of or domiciled in the jurisdiction; a trademark
representative/attorney/agent, even if not a citizen of or domiciled in the jurisdiction.
Examination:
class(es) listed in the application; clarity: i.e., that descriptions are clear and
understandable; descriptiveness: i.e., to check whether a trademark functions solely to
provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented
graphically and of distinguishing the goods or services of one individual or
organization from those of other individuals or organizations; deceptiveness: i.e., to
check whether a trademark is of such a nature as to deceive the public (for instance,
as to the nature, quality or geographic origin of the goods or services); conflict with
prior registration, prior-filed application or earlier unregistered rights resulting from an
official search. A trademark receives an initial formal examination to determine
compliance with requirements, then it is published for opposition purposes, and finally
it undergoes a registrability examination, to determine compliance with substantive
requirements of the law.
Opposition:
The opposition period begins on the following date: the day the official gazette is
published.
The opposition period ends on the following date: 30 administrative days, counted as
of the first publication date.
Assignment:
Licensing:
An application cannot be licensed, because it is not possible to license or give rights to
something that does not exist yet (such as an application).
Term:
provides constructive notice to third parties and would-be infringers, and this fact can
assist in a showing of bad faith.
trademark attorney in case of doubt. ® (There are no marking requirements stipulated
by law. If any, the ® symbol would be the most suitable one, as this is the generally
accepted symbol everywhere.).
The use of ® is not legally recognized.
Use Requirements:
the following period of time: during the last three consecutive years.
Cancellation:
There is no deadline for bringing a cancellation action; a cancellation action can be
brought at any time. The deadline for bringing a nullity action is divided in two: If the
nullity claimed deals with absolute prohibitions (such as being descriptive; generic;
depicts an emblem; etc.), there is no deadline to bring the action. If the nullity claimed
deals with relative grounds (such as having been obtained in bad faith or being similar
to a notorious mark, etc., etc.), the statute of limitations for this type of claim is five
years.
Renewal:
There is a grace period for renewing registrations once the renewal date has expired.
The grace period after the renewal date has expired is: 6 months.
Last updated: November 2018
Contributor: Juan Ignacio Zapata, Bolet & Terrero (La Paz, Bolivia), La Paz, Bolivia
BRAZIL
jurisdiction. Exceptions include well-known marks, trade names and prior use that can
overcome the "first to file" rule.
Use of an unregistered mark for any goods or services is legal, provided that the mark
does not fall into one of the prohibitions set forth by the law, such as conflict with prior-
registered or well-known marks; signs that are contrary to morals and good customs;
signs that are contrary to religious beliefs; or signs that suggest a false indication as to
nature, origin, source, etc.
Registrable Signs:
colors (combination of colors only); trade dress/get-up.
Register Search:
The official register can be searched online, but only in Portuguese.
Any domain name may be protected as a trademark. Domain names are registered on
a first-come, first-served basis by Nic.br, Brazil’s domain name registration authority.
Once a domain name has been registered, Nic.br prohibits the registration of other
domain names that are identical (except for different punctuation). Nic.br also declines
to register domain names containing trademarks that were declared "well known,"
except where the domain name registrant is the proprietor of such a well-known mark.
Further, Nic.br subjects foreign companies to additional application requirements and
requires that they incorporate a Brazilian subsidiary within one year or assign the
registration to a Brazilian company, otherwise they lose the registration.
being used as a trademark in addition to being used as an address.
Online Filing:
Applications can be filed online at the following URL: http://www.inpi.gov.br.

The official file can be accessed online at the following URL:
https://marcas.inpi.gov.br/emarcas/ (using an individual username and a password).
Classification:
Representation:
Examination:
official search.
Opposition:
The opposition period begins on the following date: the date the application is
published for opposition purposes in the Official Bulletin.
The opposition period ends on the following date: the 60th day of the opposition term,
counted from the date the application is published for opposition purposes in the
Official Bulletin.
Assignment:
An application can be assigned. All applications and registrations for the same or
similar marks that identify identical, similar or related goods or services must be
assigned together. If not, they will be cancelled ex officio.
Licensing:
Term:
serves to inform third parties of the status of a certain mark.
trademark attorney in case of doubt. TM; SM; ®.
Use Requirements:
the following period of time: five years from grant. Registration can be challenged at
any time after five years from grant if the use of the mark has been interrupted for
more than five years.
Cancellation:
There is a deadline for bringing a cancellation action.
The deadline for bringing a cancellation action is: for an administrative nullity action,
180 days counted from the grant of registration; for a court nullity action, five years
counted from the registration date.
Renewal:
Last updated: December 2018
Contributor: Andre Ferreira de Oliveira, Daniel Law (Rio De Janeiro, Brazil), Rio De Janeiro, Brazil
CHILE
jurisdiction. It is possible, nonetheless, to file cancellations and oppositions against
third-party trademark filings based on a previously used trademark in Chile.
Use of an unregistered mark for any goods or services is legal, provided there are no
prior-registered marks that are confusingly similar to the unregistered mark.
Registrable Signs:
registrable as a trademark: words; names; devices; colors (combination of different
color shapes); slogans; sounds. Product shape is not protectable. However, a three-
dimentional mark not consisting of the product shape should be registrable.
Nevertheless, in practice, the Trademark Office does not accept three-dimentional
marks.
registrable: collective marks; certification marks (Note that the statute confuses
collective and certification marks. Thus, the definitions of the terms in Chile are
different from what is understood internationally.); well-known marks; service marks.
Register Search:
The official register can be searched online at the following URL:
https://ion.inapi.cl/Marca/BuscarMarca.aspx.
In this jurisdiction, the following types of registrations are available: local (commercial
enterprise -- 15 Administrative Regions) (An amendment to the law that would abolish
this local class is under discussion.); national.
services.
being used as a trademark in addition to being used as an address. The parties must
overcome this obstacle through opposition, cancellation or litigation.
particular note: In domain name matters, being the owner of a trademark is not
dispositive. Rather, use is a very important claim to attest superior rights. In fact, in
many circumstances, prior use is considered to be stronger than a trademark
registration. Also, in domain name matters, the existence of a trademark widely
registered abroad (but not in Chile) is a very good argument in a claim. One need not
prove notoriety. Instead, it is necessary to demonstrate only a legitimate interest in the
domain name (as long as it is a better right than the right of the first applicant). Finally,
in domain name matters, the formalities regarding evidence are more flexible: the NIC
Chile arbitrator usually accepts simple copies and information from the Internet to
attest prior rights and use. No notarization or legalization is required.
Online Filing:
Applications can be filed online at the following URL: http://www.inapi.cl. A local
representative is mandatory.
The official file can be accessed online at the following URL: http://www.inapi.cl.
Access is granted to the file prosecution history but not to the official file itself.
Classification:
If a trademark is or will be used in more than one class of goods and/or services, one
application can cover multiple classes of goods or multiple classes of services, but
separate applications are also permitted.
Representation:
applicant, even if not a citizen of or domiciled in the jurisdiction (a local address must
be given); a trademark representative/attorney/agent, but only if a citizen of or
domiciled in the jurisdiction.
Examination:
deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the
public (for instance, as to the nature, quality or geographic origin of the goods or
services); conflict with prior registration, prior-filed application or earlier unregistered
rights resulting from an official search.
Opposition:
The opposition period begins on the following date: when the application is published
in the Official Gazette.
The opposition period ends on the following date: 30 business days after publication in
the Official Gazette.
Assignment:
Licensing:
An application can be licensed. The effect of the license and one's ability to enforce it
depend on the grant of registration.
Term:
Marking is compulsory for registered trademarks.
The use of ® is legally recognized.
Use Requirements:
Attack on the ground of non-use is not available.
Cancellation:
The deadline for bringing a cancellation action is: five years from the date of grant of
the registration. In the case of bad faith, the cancellation period does not end.
Renewal:
The grace period after the renewal date has expired is: 30 days.
Contributor: Felipe Claro, Claro y Cia. (Santiago, Chile), Santiago, Chile
COLOMBIA
jurisdiction.
Use of an unregistered mark for any goods or services is legal.
Registrable Signs:
registrable as a trademark: words; names; devices; certain three-dimensional shapes
(if distinctive); colors (within a shape); slogans; sounds; smells (olfactory trademarks);
trade dress/get-up (if filed as a design and if distinctive); holograms; motion; taste;
touch.
registrable: collective marks; certification marks; service marks.
Register Search:
The official register can be searched online. The database can be accessed online to
check the status of a particular application/registration and to double-check marks that
are identical or contain the same initial letters or words. Confusingly similar words
and/or devices cannot be searched.
In this jurisdiction, the following types of registrations are available: national
international (Colombia became a party to the Madrid Protocol effective as of August
29, 2012.).
Any domain name may be protected as a trademark and must be used in observation
of trademark regulations.
being used as a trademark in addition to being used as an address. This is true only
when the domain name is specifically being used as a trade name.
Online Filing:
Applications can be filed online at the following URL: http://www.sic.gov.co. Foreign
applicants when filing directly before the Colombian PTO (national trademark
application owned by a foreign applicant) must appoint a local attorney except when
using the Madrid Protocol. In order to reply to an office action or an opposition, to
modify/limit/waive products or services, to file an appeal or to interact with the
Colombian PTO, a Madrid Protocol applicant who has designated Colombia must also
appoint a local attorney.
The official file can be accessed online at the following URL: http://www.sic.gov.co.
Classification:
If a trademark covers more than one class of goods and/or services, one application
can cover multiple classes of goods or services.
Representation:
representative/attorney/agent, even if not a citizen of the jurisdiction. There are no
agents in Colombia. The application should be filed by the applicant or a resident
attorney-at-law in Colombia. A power of attorney is required at the outset, but the
Colombian PTO may ask for it at any time. The power of attorney may be executed by
the grantor's signing it and sending it via email.
Examination:
class(es) listed in the application (The list of goods/services should be specific;
otherwise, an office action may be issued.); clarity: i.e., that descriptions are clear and
official search; consumer confusion.
Opposition:
Opposition is available (for third parties within 30 working days after publication).
The opposition period begins on the following date: the publication date.
The opposition period ends on the following date: 30 working days after the publication
date.
Assignment:
An application can be assigned. The application may be assigned through an
assignment agreement. The assignment must be recorded before the Colombian PTO
as a modification of the applicant on the application. Please note that because the
trademark and slogan system is based on registration, an assignment can be properly
done only once the right is granted; before that the applicant only has an expectation
(an application). The information below reflects this concept.
Licensing:
An application can be licensed. The license agreement shall state that it is a pending
application, which shall end if the trademark application is denied.

Term:
Marking is not compulsory for registered trademarks, but is advisable because: that
way trademark owners may advise customers and competitors that the brand is
protected.
trademark attorney in case of doubt. ®; Marca Registrada.
The use of ® is not legally recognized, but it is recognized in practice.
Use Requirements:
the following period of time: A cancellation action for non-use may be brought only
after the third year from registration of the mark. Once the non-use cancellation action
is filed, the owner must submit evidence of use during the past three years to
overcome it, unless force majeure can be pledged.
Cancellation:
Cancellation is available against registrations. Cancellation would be understood as
the possibility of a trademark registration, duly granted and having no appeals
opportunities, being cancelled as a result of an annulment action filed before the
Council of State (the highest court for administrative decisions, such as a granting act
of the Colombian PTO). Exceptionally, and in a very few cases, the Colombian PTO
may revoke its own acts. This annulment action could take five or more years to be
finally resolved; it is a unique instance case (and no appeals are allowed). A previous
opinion should be requested from the Andean Court of Justice, and usually there is no
possibility of suspending the trademark registration while the annulment action is
being decided.Another cancellation action that can be filed before the Colombian PTO
is one based on vulgarization, which proceeds against the trademark registration for
any mark that has become a generic term for a certain type of products, when its
owner has done nothing or not enough to prevent this from happening.As another
alternative, the cancellation action can be based on notoriousness, which means that
the owner of a notorious trademark that is already registered in Colombia for a third
party could file a cancellation action claiming that his trademark was notorious in
Colombia as of the application date for the trademark sought to be cancelled.
The deadline for bringing a cancellation action is: four months after the registration
date, if based on local law; five years after registration, if based on Andean
Community Decision 486. There is no deadline if the action is based on a claim of bad
faith. If based on vulgarization or notoriousness, the cancellation action must be
brought while the registration is valid.
Renewal:
The first renewal date of a registration is: 10 years from the registration grant date, for
domestic trademark registrations; 10 years from the application date, for trademark
registrations arising from Madrid Protocol designations.
The grace period after the renewal date has expired is: 6 months. Governmental fees
are higher than those applicable within the regular renewal period.
Contributor: Juan Carlos Carlos Cuesta Quintero, Cuesta & Asociados SAS (Bogotá, Colombia),
Bogotá, Colombia
ECUADOR
jurisdiction.
Use of an unregistered mark for any goods or services is legal. Although not
prohibited, use of an unregistered mark entails risks of infringement or registration by
a third party.
Registrable Signs:
colors; slogans; sounds; smells (olfactory trademarks); trade dress/get-up; touch.
registrable: collective marks; certification marks; well-known marks (The well-known
status of a trademark must be recognized by the Trademark Office, either within
prosecution of a case or by voluntary petition of recognition of the well-known status of
a registered trademark.); service marks.
Register Search:
The official register cannot be searched online.
services. A domain name will be subject to the same scrutiny as a regular trademark
application and therefore must comply with the intrinsic and extrinsic requirements.
The application to register a domain name as a trademark will not be examined for
particular note: Ecuador has ratified the ICANN and WIPO dispute settlement rules
and procedures for domain name conflicts.
Online Filing:
Applications can be filed online at the following URL:
https://solicitudes.propiedadintelectual.gob.ec/solicitudes/.
The official file can be accessed online only in relation to one's own application and
filing details. Access to the online platform requires a username and password.
Classification:
Representation:
An application to register a trademark may be filed directly in this jurisdiction by: a
trademark representative/attorney/agent, but only if a citizen of or domiciled in the
jurisdiction.
Examination:

organization from those of other individuals or organizations; conflict with prior
registration, prior-filed application or earlier unregistered rights resulting from an
official search.
Opposition:
The opposition period begins on the following date: the date of publication of the
monthly National Gazette.
The opposition period ends on the following date: 30 working days following
publication of the National Gazette.
Assignment:
Licensing:
An application can be licensed. However, licensing of an application will confer only
expectation rights until the trademark is granted.
Term:
Marking is not compulsory for registered trademarks. Marking is not required under
Ecuadorean law and does not provide any benefit.
trademark attorney in case of doubt. TM; ®. Marking is not required under Ecuadorean
law and does not provide any benefit.
Use Requirements:
Attack on the ground of non-use is available. Use can be justified in any of the
countries of the Andean Community (Ecuador, Peru, Colombia, and Bolivia).
the following period of time: three years from the registration date.
Cancellation:
Cancellation is available against registrations. Cancellation actions are available only
for lack of use or subject to demonstrating that the registered trademark was well
known or notorious at the time of grant. Annulment actions are also available based on
absolute grounds. Article 227 of the Ecuadorean Intellectual Property Law specifies
the grounds for annulment: (a) when a registration was granted based on false
documents or information; (b) when a registration was granted without complying with
the intrinsic requirements for registration (distinctiveness); (c) when a registration was
granted without complying with the extrinsic requirements (affects third-party prior
rights); (d) when a registration was obtained in bad faith.
There is no deadline for bringing a cancellation action; a cancellation action can be
brought at any time.
Renewal:
Contributor: Luis Marin-Tobar, Perez, Bustamante & Ponce, Abogados (Quito, Ecuador), Quito,
Ecuador
MEXICO
jurisdiction. However, the law provides the possibility of bringing a cancellation due to
an earlier use in Mexico or abroad and to defend an infringement due to an earlier use
in Mexico. Enforcement action cannot be taken relying on use, because there are no
common law rights.
Use of an unregistered mark for any goods or services is not legal. However, it may
expose the user to infringement proceedings if a third party holds a previously
registered trademark, or, if a third party secures a registration after the use was
commenced, it may bring legal actions against the user. The party will be able to
defend itself by claiming and proving the earlier use.
Registrable Signs:
registrable as a trademark: words; names; devices (If it is filed as a design, it would
protect the device only in a two-dimensional shape, so to actually protect the device it
should be protected as a three-dimensional design or as an industrial design.); certain
three-dimensional shapes; colors (Isolated colors cannot be registered, only color
combinations.); slogans; sounds; smells (olfactory trademarks); trade dress/get-up (In
Mexico there is no trade dress protection per se; however, some trade dress can be
protected by securing trademark registrations for words or for words and designs,
essentially the labels and the box or package, considering that it would be
distinguishable and that it identified the goods/services.); holograms; taste;
certification trademarks.Many of these noncoventional trademarks are allowed in
Mexico as a result of the amendments to the Industrial Property Law.
registrable: collective marks; well-known marks (In Mexico, it is possible to obtain
recognition of a well-known or famous mark, but it is not stricly necessary, as Mexico
is a signatory of the Paris Convention; in fact, it may not be advisable, as renewal is
required every five years.); service marks.
Register Search:
The official register can be searched online.
In this jurisdiction, the following types of registrations are available: national;
international.
services.
particular note: Trademark disputes are filed directly with IMPI and the decisions may
be reviewed with the Federal Court of Tax and Administrative Affairs, the Federal
District Court and/or the Circuit Court or the Court of Appeals. Domain name disputes
are filed with WIPO.
Online Filing:
Applications can be filed online at the following URL: http://www.impi.gob.mx.

However, you need a local address, you must have an electronic signature with the tax
authority, and you must state under oath that your activities are conducted mainly in
Mexico.
The official file can be accessed online at the following URL: http://www.impi.gob.mx.
Classification:
Representation:
applicant, even if not a citizen of or domiciled in the jurisdiction (but a local address to
receive notifications is required); a trademark representative/attorney/agent, but only if
a citizen of or domiciled in the jurisdiction.
Examination:
official search.
Opposition:
Opposition is available (as of September 1, 2016).
The opposition period begins on the following date: the publication date.
The opposition period ends on the following date: one month after the publication date.
Assignment:
Licensing:
Term:
The initial term of a registration is: 10 years. The term is counted from the application
date, not the registration date.
Marking is not compulsory for registered trademarks, but is advisable because: it is not
possible to request preliminary measures or claim damages if the mark was not
properly marked.
trademark attorney in case of doubt. ®; Marca Registrada; M.R.
Use Requirements:
the following period of time: three years counted from the registration date. Any non-
use gap of three years would make the registration vulnerable to cancellation as long
as it is contested.
Cancellation:
There is a deadline for bringing a cancellation action. It depends on the gound, but
there is a statute of limitations for bringing certain actions.
The deadline for bringing a cancellation action is: three years from the date on which
the registration is published in the IP Gazette. However, certain actions may be filed
within five years from the publication date, and some may be filed at any time.
Renewal:
The first renewal date of a registration is: 10 years from the application filing date.
Contributor: Enrique A. Diaz, Goodrich, Riquelme & Asociados (Cuauhtémoc, Mexico), Mexico City
06500, Mexico
PARAGUAY
jurisdiction. The Paraguayan trademark system is an "attributive" system, namely,
rights over a certain name, device, etc., are acquired by registration, and generally, the
first use of a trademark in the market is not valid in order to enforce any legal rights.In
this sense, Article 15 of the Paraguayan Trademark Law establishes that "[r]egistration
of marks pursuant to this Law shall give their owners the right to the exclusive use of
the mark and the right to take the necessary action and measures before the
competent judicial authorities against any person who infringes their rights...."
Use of an unregistered mark for any goods or services is legal. The use of an
unregistered mark is not illegal per se, unless such use infringes third parties' rights
(for example, where the unregistered mark is identical or extremely similar to a
registered trademark and the products/services are the same or very much related). It
is also worth noting that some products can be commercialized only if the
corresponding trademark is registered (for example, in the case of pharmaceutical
products that require a sanitary registration, which is issued by the corresponding
health authorities only provided that the trademark is duly registered before the
National Directorate of Intellectual Property in Paraguay).
Registrable Signs:
colors; slogans; sounds; smells (olfactory trademarks); trade dress/get-up; holograms;
motion; taste; touch. The definition of a trademark given by the Paraguayan
Trademark Law is very ample. Article 1 provides that "[m]arks are any signs used to
distinguish products and services" and that the same "may consist of: words, mottoes,
emblems, monograms, seals, vignettes, reliefs, names, fanciful word forms, letters and
numbers in distinctive shapes or combinations, and arrangements of colors, labels,
containers and wrapping. They may also consist of the shape, presentation or
packaging of products or their containers or wrapping or the mode or place in which
the corresponding products or services are provided." It further states that the list is
merely indicative. However, it is worth noting that the officers and directors at the
Trademark Office in Paraguay generally are reluctant to grant registration to marks
that are not words or figurative elements. Therefore, it is very hard to attain rights over,
for example, a three-dimensional mark, and in most cases such applications are
rejected.
Register Search:
The official register can be searched online at the following URL:
https://servicios.dinapi.gov.py/.
Any domain name may be protected as a trademark.
Online Filing:
Classification:
Representation:
An application to register a trademark may be filed directly in this jurisdiction by: a
trademark representative/attorney/agent, but only if a citizen of or domiciled in the
jurisdiction.
Examination:
official search; determining whether the mark could be within any of the prohibitions for
registration of the Trademark Law (e.g., the same could infringe a copyright, constitute
a geographical indication, etc.).
Opposition:
The opposition period begins on the following date: the day following the date of last
publication (trademarks are published for three consecutive days).
The opposition period ends on the following date: 60 working days from the date of
last publication (approximately three months after publication).
Assignment:
Licensing:
An application cannot be licensed.
Term:
informs the public that the mark is effectively registered and may warn third parties
from using the same mark for their own products and/or services.
trademark attorney in case of doubt. TM; SM; ®.
Use Requirements:
the following period of time: five years from the date of its registration.
Cancellation:
Cancellation is available.
There is a deadline for bringing a cancellation action (nullity action) except when bad
faith in the registrant can be evidenced or when the act was void and null.
The deadline for bringing a cancellation action is: five years from the date of the
mark's registration, unless bad faith in the registrant can be evidenced or the act was
void and null.
Renewal:
Last updated: February 2019
Contributor: Hugo R. Mersan, MERSAN, Abogados (Asunción, Paraguay), Asunción, Paraguay
PERU
jurisdiction. Protection for notorious marks and trade names is the exception to the
"first to file" rule in Peru.
Registrable Signs:
colors (protectable insofar as delimited within an outline; color combinations are also
protectable); slogans (registrable under the category of "lema commercial"); sounds;
smells (olfactory trademarks); trade dress/get-up (if filed as a three-dimensional
trademark); motion (The first motion trademark was applied for registration on June
28, 2018.).
registrable: collective marks; certification marks; well-known marks (There is no
specific registry for well-known marks. Rather, the status of notoriety must be claimed
and substantiated by the interested party when enforcing rights in the well-known
trademark, i.e., in opposition proceedings, nullification actions and infringement
actions.); service marks.
Register Search:
The official register cannot be searched online. While a third party has the ability to
search a particular registration online, the official register, as a whole, cannot be
searched online.
Any domain name may be protected as a trademark, provided that the domain name
does not fall within absolute and relative grounds for refusal.
particular note: There is no jurisprudence from the courts relating to conflicts between
trademarks and domain names.
Online Filing:
Applications can be filed online at the following URL:
http://systems.indecopi.gob.pe/registroSolicitudes/.
Classification:
If a trademark covers more than one class of goods and/or services, one application
can cover multiple classes of goods or services. In addition, single-class applications
are allowed.
Representation:
Examination:
official search (The Peruvian Trademark Office does not perform searches for
unregistered rights; however, the owner of an unregistered trade name being used
nationwide in Peru is entitled to oppose a trademark application.); also, among other
things, whether: the mark is generic; the mark conflicts with appellations of origin
protected in Peru; the mark is contrary to the law and morality.
Opposition:
The opposition period begins on the following date: the first working day following
publication.
The opposition period ends on the following date: 30 working (or business) days after
publication.
Assignment:
Licensing:
Term:
Marking is not compulsory for registered trademarks, but is advisable because: while
not detailed in the law, it informs the public of protection through registration. A product
bearing a trademark containing a geographical name must indicate where the product
was actually made. The use of ® without having the trademark registered is absolutely
prohibited, and it is considered a violation of the trademark law.
trademark attorney in case of doubt. ®; Marca Registrada, M.R. or any other
equivalent.
The use of ® is not legally recognized, but it is recognized in practice. The law refers
to "M.R.," "marca registrada" or other equivalent.
Use Requirements:
the following period of time: three years from the registration date. More accurately, a
trademark registration becomes vulnerable to non-use cancellation only upon
completion of a three-year period counted from the date of notification of the
administrative decision that ends the registration proceeding. While there is no legal
requirement to file evidence of use before the Trademark Office as a condition to
maintaining rights in a trademark or to supporting a renewal application, the law is
drafted in terms of demanding use of the mark and filing evidence supporting such use
if a non-use cancellation action is filed by a third party. The registrant has the burden
of proving use of the mark. Additionally, if a trademark is in use for only some goods or
services covered by the registration, the registration could be partially cancelled for the
goods/services for which it is not in use.
Cancellation:
The deadline for bringing a cancellation action is: five years from the date of
registration, if based on relative grounds. Otherwise, the mark can be attacked at any
time. The five-year statute of limitations also applies to cancellation actions based on
bad faith.
Renewal:
Subsequent renewals last for the following period of time: 10 years from the last due
Contributor: Alfredo Barreda, Barreda Moller (Lima, Peru), Lima, Peru
Contributor: Micaela Mujica, Barreda Moller (Lima, Peru), Lima, Peru
VENEZUELA
Registration is mandatory to establish rights in a trademark; this is a "first to file"
jurisdiction.
Registrable Signs:
colors (Colors are not registrable per se unless they are defined by a shape.); slogans;
sounds; trade dress/get-up. There are no cases in connection with smells, holograms,
motion, taste or touch.
Register Search:
The official register can be searched online, but with limitations. Please consult a local
agent or attorney.
Any domain name may be protected as a trademark.
Online Filing:
Applications can be filed online, but the printed application must be filed at the PTO at
a later date.
The official file can be accessed online at the following URL: http://www.sapi.gob.ve.
Classification:
necessary to file a separate application for each class of goods and/or services. If
filing an application under one of the 1955 Industrial Property Law’s local
classifications that corresponds to more than one international class, separate
applications must be filed for each.
Representation:
representative/attorney/agent, even if not a citizen of or domiciled in the jurisdiction. If
the applicant is not a citizen of or domiciled in the jurisdiction, a trademark
representative has to file the application.
Examination:
requirements; If the application complies, it will be published for opposition, both in the
local newspaper and on the new online publishing service of the PTO. The application
will be examined for compliance with local rules as to registrability.
Opposition:
The opposition period begins on the following date: the date on which the application
is published in the official bulletin.
The opposition period ends on the following date: 30 working days after the trademark
is published in the official bulletin (Art. 77 No. 2, Industrial Property Law of 1955).
(Saturdays, Sundays and national holidays are excluded from the calculation of the 30
days.)
Assignment:
Licensing:
An application cannot be licensed.
A registration can be licensed. Certain types of licensing are under official control. It is
advisable to consult a Venezuelan trademark attorney in this situation.
Term:
serves as public notice that the trademark is registered and can lower the chance of
infringement.
trademark attorney in case of doubt. TM; ®.
Use Requirements:
the following period of time: two years from the registration date.
Cancellation:
The deadline for bringing a cancellation action is: A nullity action based on grounds of
better right can be brought before the competent court up to two years from the date of
the registration certificate. A non-use cancellation action can be brought if the mark is
not used within any period of two consecutive years following the certificate date.
Renewal:
There is a grace period for renewing registrations once the renewal date has expired,
only with respect to trademarks registered under Andean Community Decision 486.
Trademarks filed under the 1955 Industrial Property Law do not have a grace period.
Contributor: Maria Nebrada, Hoet Pelaez Castillo & Duque (La Castellana, Venezuela), La Castellana,
Venezuela
Permissions Statement
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Disclaimer
All information provided by the International Trademark Association in this document is provided to the public as a source of general
information on trademark and related intellectual property issues. In legal matters, no publication whether in written or electronic form can
take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of
the relevant country. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as
the basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property
laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be
relevant or accurate for all countries or states.
Copyright © 2003-2019 International Trademark Association, 655 Third Avenue, 10th Floor, New York, NY 10017-5617 USA
phone +1 (212) 642-1700 | fax +1 (212) 768-7796 | www.inta.org | memberservices@inta.org

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Applications can be filed online at the following URL: http://www.inpi.gov.br.

A registration can be licensed.

distinctiveness: i.e., to ensure that trademarks are capable of being represented

Applications can be filed online at the following URL: http://www.impi.gob.mx.

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