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05-15-2012 (Newsletter Issue 8/12)Digital Signature Soon EffectiveThe digital signature will become effective in Paraguay as of June 2012 in all types of public or private transactions in any country of the world. In order to obtain electronic certificates, interested individuals will have to request it at a Certifying Company, showing their Identification Documents. The certificate can be granted through a card, a pen drive, or by downloading a software. The costs to obtain digital signatures will oscillate between USD 40 and USD 100, and their validity can be granted for one day or up to two years.
Source: Berkemeyer Attorneys and Counselors, Paraguay
Legal basis is the Trademark Act of August 6th, 1998, in force since October 1st, 1998.
Trademark protection is obtained by registration.
Nice classification, 10th edition
A registrable trademark may consist of one or more words, themes, emblems, monograms, stamps, vignettes, embossments; names, fantasy word, letters and numbers with different forms or combinations; combinations and colour display, labels, containers and wrapping.
Trademarks may also consist of the shape, presentation or conditioning of products or their containers or wrappings, or of the means or places of sale of the products or corresponding services. This list is merely illustrative.
The following trademark types are registrable: trade marks for goods and services, collective marks and certification marks.
The application is filed at the Office of Industrial Property, which will issue the corresponding filing receipt.
An individual application is required for each class.
The specification of goods will not be required if a trademark is applied for all goods included in one of the classes of the official nomenclature. In case of applying for a service mark, the specification of services shall be mandatory.
Foreign applicants need a local agent.
A power of attorney attested by a notary is necessary. Consular legalization of said document is not necessary for administrative procedures such as filing of trademark applications.
It is possible to file a trademark application without holding a power of attorney. In this case the notarised PoA document must be submitted to the Trademark Office within 60 working days after filing of the application.
Foreign applicants do not need a domestic registration. The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 8 months.
Before registration, the trademark application is published in a local newspaper on three consecutive days (there is no official gazette). The registrability or availability examination shall only be performed after expiration of the term allowed for opposition.
The opposition period is 60 working days from the next day of the last publication of the trademark application. An opposition can be based on a foreign trademark registration.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
Protection begins with the date of registration. A trademark registration is valid for 10 years from the date of registration. The registration is renewable indefinitely for periods of 10 years.
The grace period for renewals is 6 months from the expiration date as long as the same renewal formalities are fulfilled.
If the trademark has not been used within 5 years from registration or either its use has been interrupted for more than five consecutive years or has been made with substantial alterations of the original distinctive character of the trademark as described in the corresponding registration certificate of registration, the registration may be cancelled upon request of the interested party.
The official fee is USD 30.00 (approx. EUR 20.00).
Trademark Licence Agreement
In Paraguay licence agreements must be in writing. It is not permitted to license the use of unregistered marks. A licence can be restricted to only some of the goods or services in respect of which the mark is registered. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing: The Trademark Law No. 1294 sets forth that the contract regarding licence for use of the trademark must necessarily
include provisions that assure control on the part of the owner of the trademark over the quality of the products or services licensed without prejudice to the control that the competent authorities may exercise for the defence of the consumer.
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal is voluntary, but to be enforceable against third parties, the agreement must be recorded with the Trademark Office. According to relevant provisions of the Trademark Law the use of the trademark by a third party with owner’s consent or by an authorised party, including licensee, shall be considered use by the owner. The recordal of a licence agreement is mandatory in order to avoid a cancellation action based on the non-use of the trademark when its use is made by the licensee.
There is no time frame for a recordal. There are no special forms prescribed, according to the law every licence agreement must necessarily contain provisions to ensure control by the owner of the quality of the licensed products or services.
Further documents are required for a recordal:
1. The licence agreement (The Trademark Law admits the filing of a summary of the licence agreement in order to protect confidentiality.)
2. A power of attorney, granted either by the licensor or the licensee
The licence becomes enforceable against third parties as from the date of recordal with the Trademark Office. It is required to be published once before the Trademark Office orders the recordal.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. He may also call upon the trademark owner to institute infringement proceedings. If the proprietor refuses or neglects to do so, the licensee may institute such proceedings in his own name. The option to initiate proceedings shall be granted in the agreement explicitly. Whether the registered user is obliged to cite the proprietor as co-defendant in such proceedings or not has to be defined in the agreement as well.
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