General trademark information of Venezuela

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

B. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

10 months to a year, approximately.

C. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides prima facie evidence of ownership and validity;
  • it allows the registrant access to bring actions in particular courts;
  • it helps to deter others from unlawfully using the trademark;
  • it provides a defense to infringement;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
  • it encourages licensees and provides the opportunity to generate royalties through licensing.

II. Pre-Filing

A. Registrable Trademarks

• 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

(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.

• The special requirements for the registration of three-dimensional shapes are:

 Three images must be provided, such as the bottom, middle, and upper side of the shape.

• The special requirements for the registration of colors are:

 a shape or a design must be filed. (Colors are not registrable per se unless they are defined by a shape.)

• The special requirements for the registration of sounds are:

 Lyrics or a digital representation, together with a CD, must be filed.

• The special requirements for the registration of trade dress are:

 The trade dress, excluding all generic terms contained therein, must be filed.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

Currently, the PTO requires applicants to claim black and white as colors.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • well-known marks;
  • service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

Retail services are allowed as from the application of the 11th Nice Classification of Goods and Services.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • marks that function principally as surnames;
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin).

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  •  the 1955 Industrial Property Law.

• The following products or categories are subject to GI protection in this jurisdiction:

A product originating in the territory of Venezuela, or a region or locality of that territory, when a certain quality, reputation, or other characteristic of the product is fundamentally attributable to its geographical origin. Examples are rum and cacao.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;

In accordance with the interpretation of the 1955 Law, the PTO Issued an official notification stating that an official pre-filing search is mandatory and must be filed with the application. However, a private pre-filing search is optional.

• The national office is accessible online at the following URL:

 https://sapi.gob.ve/

• The official register can be searched online,

 but with limitations. Please consult a local agent or attorney.

C. Use

• An applicant does not benefit from pre-filing use of a trademark.

However, an opposition based on the prior right to a trademark can be brought.

• When a mark is not registered, use of that mark may provide the following benefits:
  •  An opposition based on the prior right to a trademark can be brought.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • an administrative process;
  • a determination by the court resulting from an action for infringement;
  • a determination by the court (other than one resulting from an action for infringement).

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Nice Agreement.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services

(The list of goods must be filed in compliance with the Nice Classification of Goods and Services and the local classification system, which is similar to the U.S. system. No multiple-class applications are allowed.);

• power of attorney;
• official filing fee;
•  compulsory search issued by the PTO.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark;
  • specimen of trademark (an actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration)

(Please note that photographs are not allowed, in accordance with the PTO opinion.);

• representation of trademark (a depiction of the mark an applicant seeks to register);
• list of goods/services

(The list of goods must be filed in compliance with the Nice Classification of Goods and Services and the local classification system, which is similar to the U.S. system. No multiple-class applications are allowed.);

• power of attorney;
•  compulsory search issued by the PTO.

• The list of goods and services in this jurisdiction may specify:
  • “all the goods” or “all the services” of the relevant class(es);
  • the relevant class heading;
  • the relevant local subclass and/or subgroup.

• The following number of copies of the trademark must be submitted:

one copy, submitted electronically, in .jpg format and 500x500 pixels.

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications can be filed online at the following URL:

 http://webpi.sapi.gob.ve, 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:

 https://sapi.gob.ve/

• Applications are officially searched as to prior trademarks.

 This takes up to two weeks.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
• If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)

C. Classification

• This jurisdiction uses the Nice Classification System.

• 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.

D. 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, even if not a citizen of or domiciled in the jurisdiction

(If the applicant is not a citizen or is not domiciled in the jurisdiction, a trademark representative must file the application.).

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication and online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • citizenship of applicant;
  • application number;
  • application date;
  • goods/services;
  • representation of trademark;
  • specimen(s) of use.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing 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.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

While the practice is not compulsory, in some cases the examiner may request that the applicant disclaim any exclusive right to a particular element for lack of distinctiveness.

• The order of the application process is as follows:
  • examination, publication, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark.

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name.

• An application is published for opposition purposes before formal examination of the application.

• The opposition period begins on the following date:

on the day the trademark is published in the Official Bulletin.

• The opposition period ends on the following date:

30 days after publication of the application in the Official Bulletin.

• The following parties may initiate an opposition:
  •  If the basis of the opposition is absolute grounds, e.g., lack of distinctiveness, color per se, or the name of the currency, anyone may oppose. If the basis of the opposition is relative grounds, the opponent must prove legal interest.

• Oppositions cannot be filed online.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

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

A. Assignment

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application must be for all of the goods or services listed in the application.

• An assignment of a registration must be for all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal)

(Please note that although nominal consideration is accepted, the amount cannot be so low as to be considered a donation.).

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal).

• Legal verification of a written assignment document of an application is required by:
  • notarization;
  • legalization

(or certification by Apostille, as the case may be).

• Legal verification of a written assignment document of a registration is required by:
  • notarization;
  • legalization

(by Apostille).

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

B. Licensing

• Use of a mark that is the subject of an application cannot be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of a registration must be for the entire territory covered by the registration.

• A license of a registration must be for all of the goods or services listed in the registration.

• A license of a registration can be exclusive (only one licensee, with the owner excluded).
• A license of a registration can be sole (only one licensee and the owner).
• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a registered mark must be licensed.

 In order to avoid a cancellation action, a trademark must be used by its owner or by a duly recorded licensee.

• A license of a registration can be made with or without a time limitation.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • territory of the license;
  • quality control provisions.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization;
  • legalization

 (by Apostille).

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, legalized by the respective consulate/apostille;
  • deed of assignment, legalized by the respective consulate/apostille;
  • certificate of proof of change of name, legalized by the respective consulate/apostille;
  • certificate of merger, legalized by the respective consulate/apostille.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

a certified copy. Only the city, state, and country must be included; the full address is not needed.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 Liens must comply with the Venezuelan law. Among other formalities, the lien must include the amount in Bolivars, which currently is a disadvantage. Liens are not only very rare to file, but also difficult. Please consult a local attorney.

VI. Registration

A. Requirements

• A fee is required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring (a cancellation action against a subsequent conflicting registration)

(It has to be analyzed on a case-by-case basis.);

• the right to sue for infringement against confusingly similar third-party trademark use;
• the right to license third parties to use the trademark;
• the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
• the right to obtain damages for infringement

(While contemplated by the law, the procedure to obtain damages is long and costly.).

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • counting from the date of registration of the mark:

 two years. The nullity of a registration must be filed before the competent Courts (Art. 84, Industrial Property Law of 1955).

• The territorial limit of registration is:

Venezuela.

C. Term

• The initial term of a registration is:
  •  15 years.

• The beginning of the term of a registration is calculated from:
  • the registration date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it serves as public notice that the trademark is registered and can lower the chance of infringement.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • TM;
  • ®.

• The use of ® is legally recognized.

• The legal consequences of false or misleading marking are:

Since the applicable law is dated 1955, the established fine is very low.

VII. Post-Registration

A. 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:

 two years from the registration date.

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale

according to the relevant market for the specific product or service.

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

A cancellation action for lack of use can be brought by any interested third party (as from two years from registration).

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • the trademark office, "ex officio";
  • any interested third party.

• Non-use can be excused under the following circumstances:
  •  Please consult a local attorney.

• Resumption of use after non-use for the prescribed period (see above) does not cure non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

• The following parties may bring a cancellation action:
  • any interested party.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:
  • power of attorney

(if a new attorney is filing the renewal);

• none

(if the renewal is being filed by the attorney of record).

• The first renewal date of a registration is:
  •  15 years from the registration grant date.

• Subsequent renewals last for the following period of time:
  •  15 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

 six months.

• There is no grace period for renewing registrations once the renewal date has expired

with respect to trademarks filed under the Trademark Law of 1966; however, there is a grace period with respect trademarks registered under Decision 486. That grace period is six months.

• Renewal can be effected online at the following URL:

 http://webpi.sapi.gob.ve, but the paper application must be filed at a later date.

• At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

• There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

IX. Domain Names

A. Domain Names

• Any domain name may be protected as a trademark.

• The following approved registrars can register a domain name in this jurisdiction:

https://nic.ve/

• Availability of domain names in this jurisdiction can be searched through the following website(s):

https://whois.nic.ve/whois/

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.ve

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned.

• Domain name registrations can be licensed.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO).

• If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 by paying the corresponding renewal fee and by requesting the reactivation of the domain name by the administrative authority. This works if the domain name has not been requested by third parties after six months from the due date.

• The application to register a domain name as a trademark will not be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration cannot create rights effective against a later-filed trademark application filed by another.

• In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes.

domain name is registered as a trademark, then the trademark regulation would apply.

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

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