Puerto Rico (PR)
05-26-2010 (Newsletter Issue 11)Trademark Law AmendedBy enacting Act 169 of December 16th, 2009, the government has adopted a more organized and comprehensive trademark regime. For example a more flexible registration process is available. New elements can be registered like sounds and smells. There has been also some changes for the opposition of trademarks.
For more information please click here to read the article of Moeller IP AdvisorsSource: www.iloinfo.com Legal basis is the Trade Mark Law, in force since February 14th, 1992 last amended by Act 169 of December 16th, 2009. Although Puerto Rico is part of the USA with special status, it has a trademark law independent of the USA. The former alternative of obtaining a Puerto Rico Trademark based on an US registration is no longer available.
The international classification of goods and services consisting of 45 classes has been adopted.
Trademark protection is obtained by registration in the case of marks that are not in use (intent-to-use applications) and by prior use in the case of marks that are in use in Puerto Rico. Secondary meaning can be obtained by proving use of the trademark in commerce for the last five years.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colors, three-dimensional forms, sound marks, smell marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks.
The application is filed at the Trademark Registry, which is kept by the government.
A separate application has to be filed for each class.
Foreign applicants need a local agent.
A power of attorney is not needed. The Rules and Regulations of the Trademark Office provide that when an attorney files an application for registration as well as other transactions that relate to registered marks or pending applications, it is presumed that he or she is authorized by the mark owner to so proceed.
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. 15 to 20 months.
The opposition period is 30 days from publication date of the application. The 2009 Act provides, for an extension of time of 20 days (with just cause) to file an opposition to the registration of a mark after the 30 opposition period has lapsed. The extension has to be requested prior to the expiration of the original 30 day term.
A trademark registration is valid for 10 years from the date of registration, which dates back to the filing date and can be renewed for equal periods. A 6-months grace period for renewing purposes is available.
A trademark is considered to have been abandoned after 3 years of non-use.
The filing of a statement of continued use by and during the 5th and 10th year of registration is required. The Registrant can request an extension of 1 year for filing said statement which can be granted or not by the TM Office depending on the justifications given by the Registrant
The official fee is USD 150.00 per class (approx. EUR 107.00). Additional fees associated with mark applications include publication costs of USD 60.00 (approx. EUR 31.00) and notarization costs of USD 25.00 (approx. EUR 18.00).
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
210,00 € |
150,00 € |
| Word Mark Search (identical) |
190,00 € |
120,00 € |
| Extended Search (word mark, company name, domain) |
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| Device Mark Search (availability) |
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| Trademark Owner Search |
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| Company Name Search |
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| Domain Name Search (extended) |
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| i-Search (word mark availability + legal opinion) |
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The Prices above are S.M.D. Markeur Search Fees