General trademark information of Guatemala

 Special packaging regulations have been enacted in respect of the Tobacco and Alcohol industries by the regulatory authorities (Health Ministry), but have not yet reached the point of requiring plain packaging.

B. Time Frame for Obtaining Registration

The time frame to secure registration is six to eight months, provided the application is filed in good order and with all supporting documents (particularly power of attorney).

C. Advantages of Registration

(With the sole exceptions mentioned above, the registration of a trademark is the only means one has to acquire rights over a trademark and enjoy an exclusive use over it.);

(Ownership of a trademark is legally proven based on the registration certificate issued by the Trademark Office.);

(Registration provides protection on a national basis (across the entire country).);

(Based on registration, the proprietor of a trademark is able to initiate legal actions for infringements before the courts. Actions cannot be brought on the basis of pending applications.);

(It definitely helps, as the fact that the trademark is registered on the Trademark Register allows third parties to conduct a search and become aware of its existence, and consequently avoid the unlawful use of the mark.);

(If a mark is registered and actions are brought against its owner for an alleged infringement of a third-party trademark, such registration would definitely serve as a legitimate defense against it. Additionally, its prior cancellation would most likely be required.);

(This is applicable only to well-known trademarks, which can be enforced in Guatemala even if lacking registration (i.e., opposing conflicting marks).);

(Lacking a registration, the licensee would have no certainty that it is validly using a given trademark and could be subject to infringement actions from third parties. Trademark licenses can be recorded only against existing registrations and not in respect of pending trademark applications.).

II. Pre-Filing

A. Registrable Trademarks

(A recently established and extremely controversial administrative criteria adopted by the Trademark Office has deemed that in trademark filings for word and device marks, in which words are deemed entirely generic and/or descriptive and/or of necessary use in commerce, the applicant not only has to disclaim exclusive rights over such words, but also has to delete the words from the name of the mark, and needs to name the mark just as DEVICE.

The above criteria is generating a considerable number of formal office actions, which unless complied with make it impossible for the trademark applications to be formally admitted. There are a number of appeals already under administrative and judicial review, questioning the validity of such criteria.);

(Colors are not protectable by themselves.);

(The prevailing administrative criteria regarding slogans is that their registration is only possible if done through a separate category of IP rights (Advertising Slogans), which grant trademark-like protection to phrases used in advertising campaigns and/or which seek to draw consumers' attention to particular goods or services. If slogans are filed as trademarks, they are frequently objected on the basis of being devoid of the required distinctiveness to be protected as trademarks. If the applicant proves to the Trademark Office that the slogan at hand is indeed used as an indicator of source of the goods and/services at hand, instead of just being a phrase used in advertising for a particular trademark or brand, then the objection can be overcome.);

 According to the regulations of our IP Law, applications for three-dimensional shapes require the applicant to submit graphic bidimensional representations or photos of the shape being protected. Preferably, several views of the shape should be submitted.

 A prohibition exists by which colors by themselves are not protectable. However, secondary meaning provisions apply in such cases; therefore, an application for the registration of a trademark for a particular color can be allowed if the applicant proves to the Trademark Office that it has acquired secondary meaning for identifying the source of particular goods and/or services.

 Apart from the regular requirements, the applicant must submit a clear, intelligible, and objective description of the sound it wants to register as a trademark and media containing it.

 Apart from the regular requirements, the applicant must submit a clear, intelligible, and objective description of the smell it wants to register as a trademark.

 There are no special requirements for the registration of trade dress as a trademark. Nonetheless, it is recommended that several bidimensional views of the trade dress at hand be included with the application, in order to allow the examiner to properly examine the mark (and, e.g., not refuse it on non-distinctiveness grounds) and to grant the applicant adequate protection of its mark.

 There are no special requirements for the registration of holograms as a trademark. Nonetheless, it is recommended that several bidimensional views of the hologram at hand be included with the application, in order to allow the examiner to properly examine the mark (and, e.g., not refuse it on non-distinctiveness grounds) and to grant the applicant adequate protection of its mark.

An extremely controversial administrative criteria has been adopted by our Trademark Office, deeming that only marks filed in black and white (background must be white) can be afforded protection as registered and in any other color and/or combinations of colors.

If the filing is in grayscale or if the mark is even in black and white (but not in a white background), then the filing is considered as making a claim of the specific colors depicted in the graphic representations of the mark. If the applicant does not comply, formal office actions (on the grounds of non-compliance with legal requirements) are issued, until the applicant modifies its application to comply with the standing criteria.

(included in International Classes 35 through 45).

 Retail services are registrable in International Class 35 (reclassified as detailed in the Nice Classification - 8th Edition). Identifying the specific nature of the retail services covered is advisable.

(It is important to point out that the concept of secondary meaning is included and recognized in the IP Law, and, as such, if one is successful in proving it to the Trademark Registrar, this can gain registration for an initially unregistrable mark.);

(provided their use could lead to deceit or confusion in the marketplace regarding the geographical origin of the products and/or services covered by the mark);

(which are included in a special section of the IP Law, as well as in specific provisions of several Free Trade Agreements and/or similar Agreements which have been entered by Guatemala);

(The recognition of specific individual geographical indications in Free Trade Agreements, albeit subject to local registration procedures, most notably the ones set out in the Association Agreement entered with the European Union in 2013.).

B. Searching

 (particularly in cases where a total blockage exists.);

 https://www.rpi.gob.gt/ The website is in Spanish. A username and password is required and can be easily obtained. Access is free.

 The official Trademark Database can be searched online and at no cost. However, the following limitations must be disclosed: (a) many records are not fully available online, and thus it is necessary to physically check the official books and records for complete and accurate information; (b) information is not 100% reliable, i.e., the database mechanism has limitations and on occasion conflicting marks are not revealed; (c) graphic searches for device marks are very unreliable.
Recently, the ability to conduct corporate searches (TM records by owner) has been added to the website.

C. Use

In general, pre-filing use results in no benefit, as Guatemala follows a "first-to-file" trademark system. However, in cases of non-distinctive trademarks which have acquired "secondary meaning" due to their use in the marketplace, such pre-filing use would be relevant in order for the application to be eventually allowed.

In the case of well-known marks that are not registered, their use in Guatemala would definitely be helpful in any opposition proceedings against identical and/or similar marks that could result in confusion in the marketplace and/or take unfair advantage of the prestige and public knowledge of such well-known trademark and/or that would dilute the well-known mark. Opposition proceedings are conducted first by the Trademark Office, then by the Ministry of Economy, and eventually by Administrative Courts, which are in charge of reviewing the legality of the administrative proceedings.

(An administrative opposition allows the lawful owner of a well-known mark to oppose in the jurisdiction, even lacking registration in Guatemala. However, for opposition action to be successful, well-known status of the mark must be proven within Guatemala.);

(Arguing the well-known status of the mark and the provisions of Article 6bis of the Paris Treaty, could be an actionable cause before the Civil Courts. As pointed out above, proving the well-known of status within the jurisdiction is indispensable.);

(An action to nullify an earlier mark which misappropriates a well-known mark is available. Such an action must be brought before the Civil Courts, with the plaintiff having the burden to prove the well-known status of its mark and how the earlier registered mark affects its rights. No statute of limitations applies in such cases.).

D. International Treaties

(The Trademark Law Treaty was approved by the Guatemalan Congress on February 26, 2016. However, the Treaty and its Regulations have not yet entered into force in Guatemala, with a number of internal and external steps still required, among them the amendment of incompatible provisions of our Intellectual Property Law and its regulations.);

III. Filing

A. Requirements

 A local service address must be included in the application (basic requisite), which is usually the address of the authorized agent of the foreign applicant.

Joint applications are admissible, but in such case each of the co-owners must grant and appoint an attorney-in-fact (which may be the same). The general provisions of our Civil Code regarding joint ownership would apply in most of those cases, including the need for having the co-owner's consent prior to in any way disposing, transferring, or encumbering the joint rights held over the mark.

No use, either actual or intended, is required for filing of an application.

(For foreign physical persons filing applications in Guatemala, the Trademark Office is requiring either one of the following: (a) legal residence obtained in Guatemala; (b) power of attorney assigned to a local attorney.);

(Apostille is required. Legalization by the Guatemalan Consulate is required in those jurisdictions where apostille is not available.);

(It is an acceptable practice. However, doing so does not mean that all goods/services in a given class would be covered; therefore, the applicant must be certain such class heading indeed covers the products and/or services it puts in commerce. Otherwise, the registration may not adequately protect the products and/or services and could be eventually vulnerable to non-use cancellation.);

(Based on our IP Law, one must include the specific names of the products or services in respect of which the mark will be used. Consequently, class headings may not be admissible and/or in some cases such headings will not refer to the specific products or services covered by the mark. It is advisable for the applicant to use the specific names of the goods or services of interest, or if desired, the class headings plus the list of names of the specific goods or services.).

Where a mark consists of or includes a device, four graphic representations of the trademark must be submitted. Special considerations apply to nontraditional marks such as sounds and smells.

Registration, if granted on a national basis, is for the entire Guatemalan territory.

Only pre-filing (data entry) of applications is available (due to fiscal obligations which need to be fulfilled at the time of submission of applications).

In view of this, the submission of the physical application is still required and is until the time that a filing date/priority is secured. The filing of a physical application requires also the submission of supporting documentation (power of attorney, priority document) in hardcopy.

 https://www.rpi.gob.gt/
Recent files are reliable while older ones are not as reliable. With the introduction of the online filing module (VERPI), the system should become more reliable.

A novel examination of each application is performed by the examiner, in which potentially conflicting prior marks are revealed and analyzed.

B. Priority

 An additional consideration is that, according to our IP Law, it is possible to claim priority even after an application has been filed. In such cases, priority must be claimed within a 90-day term following the expiration date of the home application priority that is being claimed. For example: If a U.S. home application was filed November 1, 2015, the Guatemalan application was filed May 1, 2016, and no priority was claimed, priority could still be claimed in the Guatemalan filing, provided it is claimed prior to August 1, 2016.

C. Classification

The 11th Edition is currently in use.

Although Guatemala is not a party to the Nice Agreement, it does follow the International Classification of Goods and Services established therein. The adoption of the 11th Edition was enacted officially through Ministerial Accord 397-2021.

 Guatemala does not yet allow multi-class trademark applications, but has assumed an obligation to ratify in the future the Trademark Law Treaty (1994). Consequently, separate applications and separate official fees have to be filed for each class in which a mark is being filed.

D. Representation

(The applicant can file applications directly if he or it is a citizen of or has a domicile in Guatemala. Otherwise, he or it must designate a legal agent in Guatemala for representation in the application process. If such agent lacks sufficient powers to represent the applicant in Guatemala, necessary powers are automatically granted to the agent by virtue of law.);

(Through a trademark representative/attorney/agent any person or entity can file a trademark application in Guatemala and obtain rights over the mark. Such agent must be a Guatemalan attorney who is licensed to practice and must have all necessary powers for representing the principal in all matters pertaining to the acquisition, maintenance, and protection of his or its rights; if he or she lacks such powers, the law automatically grants him or her such rights.).

IV. Application

A. Publication

Upon publication in the Trademark Office Gazette (Boletin Oficial del Registro de la Propiedad Intelectual (BORPI)) the filing particulars of an application are made available to the public. In all cases of unpublished applications, one has to search the official database and get access to the file in order to obtain information.

As pointed out before, the only applications made available to the public are the ones which have been admitted, have passed formal and substantive examination and that have been published in the official bulletin of our Trademark Office (BORPI). All other applications have to be searched and/or reviewed either online and/or physically at the Trademark Office.

B. Examination

The Trademark Office criteria had always been inconsistent in this respect and now has become even more complicated with recently issued extremely controversial administrative guidelines, dealing with trademark examination and the admissibility of coexistence agreements/consent letters.

At present such guidelines differentiate the following cases:

a. In cases of similar but not identical trademarks, the Trademark Office can accept at its sole discretion the trademark coexistence agreements, as long as the goods/services covered by the filed trademark application and cited registration are sufficiently different and cause no confusion in the marketplace (public interest).

b. In cases of identical marks in the same class, even when covering different goods and/or services, coexistence agreements as means to overcome objections will not be allowed. This applies even when owner and applicant are part of the same corporation (for example, identical marks owned/filed by the car division and heavy machinery division of the same corporation).

The criteria in this respect are that in those cases applicant needs to negotiate and execute a trademark license with the owner of the cited mark. This would mean the applicant would not be able to obtain a registration in its own name, apart from the fact that the owner of the mark would have to exercise quality control over the goods/services being produced and rendered under the licensed mark, although their source is completely different.

We consider such administrative criteria to be wrong and lacking legal grounds, and we would expect it to be revoked upon appeals made to the higher administrative authority or the courts.

The law includes a provision that expressly provides that elements of trademarks which include elements deemed to be "common use" and/or necessary in commerce are granted no protection in respect of such specific non-exclusive elements. Apart from such provision, applicants may and will usually disclaim elements of the mark which are not distinctive and are not intended to be used exclusively. Otherwise, the Register might object to their application.

Opposition period takes place during a non-extendable two-month period after first publication in the Official Gazette.

C. Prosecution

No such alternative exists. If the application is filed in good order, the examination should take place in a matter of three to four weeks after filing.

(Guatemala is a part of the Paris Convention.);

(Novel or substantive examination is precisely based on prior registrations and pending applications.);

(The law does grant opposition rights to parties with pending applications. Oppositions can be as effective as those based in registered rights.).

D. Opposition

Ample grounds for opposition are available, both on the basis of domestic laws and international treaties. Opposition must be exercised within two months of publication of the pending application in the Official Trademark Office Bulletin and such term may not be extended under any circumstances.

Registration can only be granted once the application has been published with no opposition, or when it has overcome third-party opposition.

(Earlier conflicting marks can be existing registrations or pending applications.);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

(Well-known marks enjoy protection even if unregistered, provided they are being used in Guatemala or have become well known by their promotion by any means. Criteria for proving the well-known status of a trademark are set out in the regulations to the IP Law. The well-known status of a mark has to be proven by its owner on a case-by-case basis.);

(Oppositions can be lodged and can succeed on such basis. Trade names are also protected under the General Inter-American Convention for Trademark and Commercial Protection, which has the following signatories: Bolivia, Brazil, Colombia, Costa Rica, Chile, Cuba, the Dominican Republic, Ecuador, Guatemala, Haiti, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Venezuela, the United States of America, and Uruguay.);

(A general clause exists in the IP Law protecting the industrial property rights of third parties, and consequently an opposition could be lodged on such basis.);

(As part of the personality rights inherent to all individuals, particularly those who enjoy great recognition or fame, their personal names or pseudonyms cannot proceed to registration in the name of third parties, without the person's prior consent or authorization (or that of their heirs or successors).);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

(is similar to and/or is a translation of a geographical indication or appellation of origin protected in Guatemala, which might lead to likelihood of confusion and/or risk of association by consumers);

(Although the opposition proceedings exist primarily to safeguard third-party rights over earlier marks and/or copyrights, it is also a usual and admissible practice to oppose on the basis of a mark's being included in prohibitions for its registration (inadmissibility due to intrinsic motives), as an interested party could be affected by the achievement of rights over a presumably unregistrable mark--which the Trademark Office failed to detect in the formal examination process.);

once novelty or substantive examination has taken place.

the date the single publication takes place in the Boletin Oficial del Registro de la Propiedad Intelectual (BORPI). Please note how the two-month term is measured: If, for example, publication in the BORPI takes place on August 20, opposition must be lodged at the latest on October 20. If October 20 is a non-working day, the opposition period does NOT extend to the next working day; the opposition must be filed on the last working day prior to the expiration of the deadline.

Oppositions are not yet possible to file online.

two months following the date of the single publication in the Boletin Oficial del Registro de la Propiedad Intelectual (BORPI). If the end of the opposition period falls on a non-working day, the opposition deadline will fall on the preceding working day. Thus, if publication in the BORPI took place on August 20, opposition must be lodged at the latest on October 20. If the final day of the opposition term is a non-working day, the opposition period does NOT extend to next working day; it must be filed on last working day prior to the expiration of the deadline.

 (Legitimate interest must be shown at the time of filing of opposition.);

 (This might refer to an existing registered right or the owner of a pending application.);

(if the licensee is exclusive or if the license agreement stipulates that the licensee will be responsible for the defense of the licensed mark or marks).

Opposition is still a very formal procedure, which requires all documents to be filed and signed physically, along with submission of a notarized copy of the power of attorney.

E. Proof of Use

No use--either actual nor intended--is required for registration.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

It is possible to assign a pending application. For such effect the same procedure as for assigning a registered trademark would apply, including publication. The assignment of the pending application would be subject to publication in the IP Gazette published by the Trademark Office (BORPI). An annotation would be issued once the proceeding is completed. No certificate would be issued until the pending application matures into registration.

 Registrations are granted on a national basis and their partial assignment is not allowed. The same rules would apply for a pending application.

 Once the mark is registered, it would be possible to obtain a division of the registration into separate goods/services and a partial assignment. Before registration, it would not be possible.

This is possible, provided one has previously divided the registration into two or more sub-registrations, and then assign such sub-registrations as the case may be. Nonetheless, caution is required, as our IP Law is very clear in establishing that partial assignments that are susceptible of generating confusion in the marketplace as to the correct source of the respective goods and/or services can be annulled and revoked.

 Our law does not require goodwill to be included as part of an assignment of an application. In this respect, our law even allows for a trademark registration to be assigned freely and independently from the business enterprise (or fraction thereof) of its proprietor.

Our law does not require goodwill to be included as part of an assignment of a registration. In this respect, our law even allows for a trademark registration to be assigned freely and independently from the business enterprise (or fraction thereof) of its proprietor.

 (The signatures of both the assignor and the assignee must be notarized.);

(If apostille is not available in the foreign jurisdiction, legalization by nearest Guatemalan Consulate would be required.);

 (The signatures of both the assignor and the assignee must be notarized.);

Guatemala, in general, follows a legal system that gives credibility and value to rights and transactions which have been recorded before Public Registries (publicity principle, what appears recorded and/or filed before the Trademark Office would have precedence over earlier yet unrecorded assignments). Consequently, in order for an assignment of application to be effective, it must be submitted to the Trademark Office and the corresponding annotation should be made in respect of the pending application.

Guatemala, in general, follows a legal system that gives credibility and value to rights and transactions that have been recorded before Public Registries (publicity principle). Thus, what appears recorded and/or filed before the Trademark Office would have precedence over earlier yet unrecorded assignments. If unrecorded, an assignment cannot be enforceable against third parties. A notice of assignment is given to the public. This type of notice is still made through the Boletin Oficial del Registro de la Propiedad Intelectual (Official Trademark Office Gazette).

B. Licensing

Our IP Law refers exclusively to the possibility to license registered trademarks. Additionally, given our "first-to-file" trademark registration system, licensing a pending application would grant basically no rights to the licensee. A contract might be entered between two parties licensing a pending application, as part of their freedom of contract, but no rights would be enforceable against third parties.

Our IP Law regulates and allows only the recordal of trademark licenses, and consequently, of licensees of a registered trademark. Authorized users are very briefly referred to in our IP Law, but no mechanism exists for recording them in respect of a registered mark.

It is possible; however, the general rule unless the parties agree otherwise, is that a trademark license grants the licensee the right to use the mark in the entire Guatemalan territory.

 Unless otherwise agreed by the parties, a license of a registered trademark would grant the licensee the right to use the mark in respect of all of the goods and/or services for which the mark is registered. Nonetheless, the parties can validly limit the scope of goods and/or services as they see fit.

 It is entirely voluntary for a company to license its trademarks to a related company, although it is advisable in the event of proving use and/or for defending the mark before the courts and/or for royalty payment purposes.

The general rule, unless the parties agree otherwise, is that a trademark license grants the licensee the right to use the mark while the trademark remains valid.

(If such provision is not included in the license agreement, the licensee would have the right to use the mark in respect of all the goods and/or services for which the mark is registered.);

(If no term is specified, the license would be deemed valid while the licensed trademark remains in force.);

(If such provision is not included in the license agreement, the licensee would have the right to use the mark in the entire Guatemalan territory.);

 Although not indispensable, registration of a license can aid local taxpayers to demonstrate and justify royalties being paid for the trademark rights being used in their business, particularly if transactions are between related companies.

The license remains in effect while the trademark remains in force, unless otherwise agreed by the contracting parties.

 (The signatures of both the licensor and the licensee must be notarized.);

C. Other Changes to Trademark Records

(Hague Convention became effective September 18, 2017. After such date, all documents bearing an apostille are admissible, with no need for legalization by the Guatemalan Consulate. All other formalities in respect of the documents are still required: recordation in the ledger of a Notary Public, translation to Spanish, and recordal before the power of attorney's Register (for powers of attorney).);

(Hague Convention became effective September 18, 2017. After such date, all documents bearing an apostille are admissible, with no need for legalization by Guatemalan Consulate. All other formalities in respect of the documents are still required: recordation in the ledger of a Notary Public, translation to Spanish, and recordal before power of attorney's Register (for powers of attorney).);

(Hague Convention became effective September 18, 2017. After such date, all documents bearing an apostille are admissible, with no need for legalization by Guatemalan Consulate. All other formalities in respect of the documents are still required: recordation in the ledger of a Notary Public, translation to Spanish, and recordal before the power of attorney's Register (for powers of attorney).);

(Hague Convention became effective September 18, 2017. After such date, all documents bearing an apostille are admissible, with no need for legalization by Guatemalan Consulate. All other formalities in respect of the documents are still required: recordation in the ledger of a Notary Public, translation to Spanish, and recordal before the power of attorney's Register (for powers of attorney).).

None, only a writ from the authorized agent in fact of the registered owner. No proof of change of address is required.

 notarized document which contains the contract between the parties and the security interest over the specific marks involved. For documents executed abroad, they must be notarized and apostilled. Security interests over trademarks should also be recorded, besides at the TMO, at a separate public office dealing with movable property being given as collateral to loans and other obligations, which is called the Movable Guarantees Register (Registro de Garantías Mobiliarias).

VI. Registration

A. Requirements

The following fees apply upon registration of a trademark:

B. Rights

(in respect of the specific goods or services covered by the registration);

(However, the right to oppose is also granted to owners of pending applications.);

Spanish is the official language in the jurisdiction.

(i) If it infringes or is obtained in breach of any of the prohibitions for registration derived from intrinsic reasons, as established in Article 20 of our IP Law;
(ii) If the trademark was obtained in bad faith. Bad faith is presumed in the following cases:
(ii.a.) The registration was obtained using false or inexact information, as provided by the applicant;
(ii.b) The applicant is or at some point was agent, representative, client, user, or distributor, or has maintained any other business relationship with a foreign person, and that foreign person has previously registered and/or applied for the particular mark or a very similar mark in its country of origin;
(ii.c) If the mark being contested affects a well-known mark;
(ii.d) If the applicant, by virtue of its activities, knew or should have known of the existence of the mark being contested.
In cases of nullity, the proceedings are also judicial before the competent Civil Courts. However, in such cases, not only the interested party can seek the nullity of a mark, but also the State of Guatemala Attorney General's Office.

Trademark rights are granted on a national basis, that is, for the entire Guatemalan territory.

C. Term

 (For example, if the mark was registered on April 24, 2016, the 10-year initial registration period ends on April 23, 2026.)

D. Marking Requirements

 It clearly indicates to third parties that the trademark being used enjoys protection as a registered trademark.

 The use of such symbol was recognized and expressly required by our former IP legislation (in effect until October 2000). It is no longer mandatory to include such marking, but it is advisable, as pointed out above.

 The use ® was formerly recognized and required, but this is no longer the case. In practice many still use ® in respect of their registered trademarks.

None. Formerly, under our prior IP Law, such practice could result in an unfair competition action being brought against the party responsible for the false claim; however, this is no longer the case.

VII. Post-Registration

A. Use Requirements

Based on actions initiated by interested third parties, where those third parties have to file legal action before the competent Civil Courts. Thus, use is not verified "ex officio."

 There are two scenarios under which a trademark becomes vulnerable to attack on the grounds of non-use: (i) Five years from registration date; (ii) At any other time after the original five-year term post registration has passed, provided the trademark has not being used for the preceding five years.

Notwithstanding the extremely vague definition of use provided above, it is generally understood and interpreted that usage of a trademark must take place in Guatemalan territory.

Cancellation brought by an interested party before the Civil Courts; cancellation may be either total or partial, which would result in its removal from the Trademark Office, or partial deletion of the unused goods/services, as the case may be.

As pointed out above, use is not verified "ex-officio" and a trademark owner is not required to prove it before the Trademark Office at any time. Therefore, no mandatory use statements or any other filings are required.

However, if the trademark is challenged before the courts on the grounds of non-use, the trademark owner must prove it is using the mark in order to keep it.

 Legitimate and verifiable interest must exist in the party seeking the cancellation of another's mark due to non-use. If such party fails to prove such legitimate interest, the cancellation action might be dismissed on such grounds.

Such "restorative use" must take place three months prior to the initiation of the legal action seeking the cancellation on the grounds of non-use.

 (In this regard, our IP Law clearly specifies that such differing usage must be only in respect of non-essential details or elements, which do not alter the mark's identity.)

 (A fresh application, and a resulting additional registration, would be required in such cases.)

B. Cancellation

Cancellation of an existing registration can only occur with a prior declaration issued by the competent Civil Courts. Grounds for cancellation can be the following:

(i) Genericization of a registered trademark, declared within judicial proceedings initiated by any interested party before the competent Civil Courts;

(ii) Non-use of the trademark registration, declared within judicial proceedings initiated by any interested party before the competent Civil Courts;

(iii) Annulment: A trademark registration can be annulled within a five-year term from registration. In such case, a judicial annulment action has to be filed before the competent Civil Courts by an affected party, if such trademark registration infringes on earlier trademark rights, copyrights, personality/image rights, or in general affects other industrial property rights.

(iv) Nullity: A trademark can be contested at any time and declared totally null, with no statute of limitations, if its registration was obtained in any of the following circumstances:

(iv.a) If it infringes or is obtained in breach of any of the prohibitions for registration derived from intrinsic reasons (non-distinctiveness), as established in Article 20 of the IP Law;

(iv.b) If the trademark was obtained in bad faith. There is a presumption of bad faith in the following cases:

(iv.b.i) The registration was obtained using false or inexact information, as provided by the applicant;

(iv.b.ii) The applicant is or at some point was agent, representative, client, user, or distributor, or has maintained any other business relationship with a foreign person, and this foreign person has previously registered and/or applied for the particular mark or a very similar mark in its country of origin;

(iv.b.iii) If the mark being contested affects a well-known mark; (iv.b.iv) If the applicant, by virtue of its activities, knew or should have known of the existence of the mark being contested.

Nullity proceedings are also judicial before the competent Civil Courts. However, in such cases, not only the interested party may seek the nullity of a registration, but also the State of Guatemala Attorney General's Office.

(Annulment proceedings (unless earlier mark is a well-known mark, in which case nullity proceedings would be applicable).);

(Nullity proceedings. This would not apply where the trademark being canceled has acquired secondary meaning.);

(Nullity proceedings. This would not apply where the trademark being canceled has acquired secondary meaning.);

(nullity proceedings);

(nullity proceedings);

(annulment proceedings);

(nullity proceedings);

(nullity proceedings);

(nullity proceedings);

(annulment proceedings);

(annulment proceedings);

(Nullity proceedings. This would not apply where the trademark being canceled has acquired secondary meaning.);

(Nullity proceedings. This is applicable only if referring to a prohibited geographical indication, as not all geographical indications are banned from registration.);

(nullity proceedings);

The deadline depends on whether the mark is being subject to cancellation due to annulment or nullity. In the second case, nullity proceedings, no statute of limitations applies.

Depends on the grounds for cancellation:

(i) An action based on genericness can be brought at any time.

(ii) An annulment against a mark in use commercially must be brought within five years from the registration date, at which time the registration becomes incontestable. Cases of marks not being used in commerce would be subject to different rules, which are addressed in Section VI.

(iii) A nullity action against a registered mark, based on the special grounds applicable in such case and addressed above, can be initiated at any time (no statute of limitations applies).

(A legitimate interest must be shown to the Courts. Otherwise, the case could be dismissed on the basis of a lack of standing.);

(An owner of an earlier right being affected by the registration can promote cancellation.);

(if the license agreement is exclusive and/or if it expressly stipulates that licensee will be responsible for the defense of the licensed trademark being affected.).

 Cancellation actions are judiciary proceedings, before the competent Civil Courts.

C. Renewal

 Thus, for example, if the mark was originally registered on November 10, 2015, it would elapse November 9, 2025.

 Thus, for example, if the mark was renewed on November 10, 2015, it would elapse November 9, 2025.

 One year. If filed prior to such time, the renewal application would be refused on the basis of being filed prematurely.

in accordance with article 5bis of the Paris Convention.

During such six-month term, the registered trademark maintains its validity and is taken into account in official availability searches and novel examinations.

Online filing of applications, either for initial registration or for other proceedings, are for the time still not available. However, we expect they will become available shortly in the new, online filing module (VERPI).

The registered mark suffers no changes; registration number remains the same.

If you would like to know the trademark registration process of Guyana ? Click on here!