Oct 20, 2021 (Newsletter Issue 15/21)
Official Fees Changed
On September 10, 2021, the Official Notice No. DG-0014-2021 informed that applicable official fees for Industrial Property matters in Venezuela have been modified.
The new official fees are applicable immediately, as of September 13, 2021, for all new or pending matters filed before the Trademark Office.
Source: www.bentata.com
Dec 03, 2020 (Newsletter Issue 20/20)Automatic Recognition of TRIPS Agreement by SAPI AnnouncedOn November 9, 2020, the Autonomous Intellectual Property Service (SAPI) signed Official Notice No. DG-09-2020 dated October 1st, 2020, announcing the automatic recognition of the TRIPS agreement and other International Treaties (Paris Convention for the Protection of Industrial Property) as preferred and immediate applicability over national legislation.
As of October 1st, 2020, the direct application of substantive and adjectival rules for obtaining and defending all IP rights that are more favorable to the holders of patents and trademarks included in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) are in force both before the National Patent and Trademark Office (SAPI) and in the Courts and National Courts in Administrative Litigation.
In cases where the Trade-Related Aspects of Intellectual Property Rights (TRIPS) do not establish any specific procedures for filing, obtaining, opposition and monitoring IP rights, the SAPI will continue to apply those contained in the national Industrial Property Law.
With regard to trademarks and geographical indications, the following issues may be concerned:
- Trademark examiners will need to have much broader criteria to determine whether a trademark is registrable or not.
- Renewals of trademark registrations filed within the grace period of six months after expiration should be accepted.
- Recognition of well-known and non-traditional trademarks.
- Recognition of geographical indications.
More information can be seen here. An English translation (by our contributor) of the Official Notice can be found here
Source: Pi360 LEGAL, Venezuela May 14, 2020 (Newsletter Issue 7/20)
Electronic Procedures by IP Office Allowed
On April 24, 2020, the Venezuelan Registry Office (SAPI) made the following decisions in an Official Notice:
a) Starting on April 27, 2020, and until the Government lifts the obligatory quarantine generated by the COVID-19, only the following procedures can be submitted electronically: Applications for registration of distinctive signs, patent applications, assignments, mergers, name and address changes.
All essential documentation that must be filed at the time of the applications must also be submitted in electronic format, complying with the formalities of law. Such documentation includes apostilles, certifications and authentications, with the commitment to present the originals documentation once the obligatory quarantine has been lifted.
b) All terms of the official bulletins that were valid on the date the obligatory quarantine was declared, remain suspended, and payments will only be accepted for publication orders in press and concessions that have been notified in said bulletins.
The Official Notice does not contain any reference to the submission of documents relating to cases prior to the obligatory quarantine; therefore these should only be presented when compulsory quarantine is lifted.
Source: www.ecv.com.ve
Feb 20, 2020 (Newsletter Issue 2/20)Nice Classification Exclusively / New Official Fee / Accelerated Opposition ExaminationThe Venezuelan Patent and Trademark Office informed that all new trademark applications have to be filed exclusively under the 11th edition of the International Classification of Goods and Service for the purpose of trademark prosecution of the Nice Convention. This is effective as of 10 February 2020 and the dual system has been ceased where applications had to be filed according to the national classification along with the equivalent international class according to the Nice Agreement.
Further, the Patent and Trademark Office introduced a new official fee when filing for opposition proceedings. As from 10 February 2020, it is mandatory to include the official fee payment receipt as an annex to the opposition writ in order to receive a filing date.
In addition, the Office will introduce an accelerated examination process in order to obtain an early first instance decision of the Office on the opposition. Interested parties would have to file a writ requesting for an accelerated examination and pay the corresponding new official fee during a fixed time frame to receive the new service. It is expected that the new service will be available during the current year.
Venezuela is also preparing for a new Industrial Property Law with the purpose of designing a new, appropriate and updated legal framework involving Patent, Utility Model, Trademark, Design, Geographical Indications, Denominations of Origin, Unfair Competition and modern enforcement regulations among other aspects. The final draft must undergo a public presentation to gather participation of interested parties and a second discussion prior to approval. We will keep you posted on the developments with the assistance of our partner Mr. Sebastian Gonzalez Yanes of Citemark International IP from Venezuela.
For further information, please click here
Source: Citemark International IP, Venezuela Feb 14, 2019 (Newsletter Issue 2/19)
Requirement for Cryptocurrency for Foreign Applicants
The Venezuelan Patent and Trademark Office has issued an Official Notice establishing that official fees relating to trademarks and patents on behalf of foreign applicants must be paid in “Petro” cryptocurrency.
The official notice also establishes a 60-day term for payment of official fees for trademark applications granted in Official Bulletins 580 through 590.
Source: www.hpcd.com
Feb 28, 2018 (Newsletter Issue 4/18)
Payment of Official Fees in USD Suspended Temporarily
The Venezuelan Patent and Trademark Office (SAPI) has informed by official notice published on February 2, 2018, that they have temporarily suspended payments in USD for their services. Such decision is based on the revocation of the regulation that fixed the Exchange Rate to be used to calculate the Official Fees in said currency.
This applies to the Official Fees to be paid by Foreign IP owners for trademark renewals, patent annuities, granting of patents and trademarks as well as changes of proprietorship and address.
Those patents or trademarks having a close due date must be filed with a writ before the SAPI in order to guarantee the owner’s rights.
This procedure will be in force until the Venezuelan authorities define the new payment procedure, amounts and currency to be used.
Source: www.clarkemodet.com
Jun 30, 2015 (Newsletter Issue 10/15)Tax Stamps IncreaseThe Venezuelan Patent and Trademarks Office (VPTO) has issued a group of notices confirming that, as of May 28, 2015, the increase in value and change in acceptable currency of payment applicable to transactions by foreign individuals and corporations as established in Article 06 of the Presidential Decree No. 1398 that reforms the Stamp Duty Law of November 18, 2014, will be mandatory.
Holders of foreign nationality have to pay an equivalent payment in USD, at the lowest exchange rate in the market, determined by the Banco Central de Venezuela. The payments have to be done by the holder to a specific account created by SAPI. An official notice by the VPTO was published on May 22, 2015, confirming that the currency exchange rate of VEF 6,30 X USD 1,00 will be applicable, for the time being.
The new fees and the aforementioned payment method for companies or natural person of foreign nationality is effective since May 28, 2015 and will concern the following procedures:
-Payments of registration fees (granting) of trademarks and patents
-Registration of assignments and mergers that include trademarks and patents
-Trademarks renewal
-Registration of licenses of use that include trademarks and patents
-Registration of name and/or address changes of trademarks and patents holders
-Payment of annuities for the maintenance of patents, according to the table attached to the official notice
Source: Citemark International IP, Venezuela; B&R Latin America IP LLC, Colombia and Moeller IP Advisors, Argentina
Mar 18, 2015 (Newsletter Issue 4/15)Autonomous IP Service in ProgressThere have been several important developments at Venezuela’s Autonomous Intellectual Property Service (SAPI) in the last six months. Most recently, on January 29, 2015, Cristina Piña Sierralta was appointed as the new Director of SAPI’s Industrial Property Registry.
On October 15, 2014, users, interested parties and the general public were notified via an Official Notice that the pricing of products and/or services provided by SAPI had been adjusted, effective the same date.
Additionally, on August 19, 2014, SAPI established a “Taquilla Integral,” which is a central office where applicants can initiate proceedings at the Trademark Office.
In addition to the traditional way of making bank deposits, the Autonomous Intellectual Property Service has implemented new payment options, such as bank transfers and point of sale debit card payments.
Also, the online help system, WEBPI, will offer a new option which will allow users to process their application and search a phonetic and/or graphic registration history from their home or office.
These changes should help to improve efficiency for trademark applicants in Venezuela overall, particularly with respect to electronic search results. For more information, please click here
Source: INTA Bulletin, Vol. 70 No. 4, contributor: Barbarita Guzmán, Markven Propiedad Intelectual S.C., Caracas and verifier: Ricardo Alberto Antequera, Estudio Antequera Parilli, Caracas May 16, 2014 (Newsletter Issue 8/14)Change of PracticeThe Venezuelan Patent and Trademark Office (VPTO) has published in the Bulletin No. 546 dated 9 April 2014 three Official Notices of relevant content:
1) Oppositions to TM Applications
The VPTO established that oppositions against the registration of a trademark application may be filed on the basis of (i) the grounds for non-registrability provided in articles 33, 34 and 35 of the current local IP legislation, (ii) on the grounds for absolute non-registrability referred to public policy, or (iii) on the grounds that third parties rights are affected based on prior applications and registrations.
2) Spanish sworn translation of documents
Trademark applicants are reminded that all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be accepted.
3) Change of owner regarding pending applications
As of 9 April 2014, it is again possible (as it was under the former Andean Legislation) to file a change of owner (applicant) for a pending Patent and Trademark application. In case of an assignment, it will be specifically required that the assignor assigns the priority filing rights of the pending applications involved in the transfer.
Source: Citemark International IP, Venezuela Oct 11, 2013 (Newsletter Issue 15/13)
Official Fees Increased
On September 11, 2013, the Venezuelan Patent and Trademark Office informed the general public about the enforceability of a new tax rate based on the Special Act for the Fiscal Stamp in the Capital District, published on May 2nd, 2012.
This new rate of 10 tax units is equivalent to Venezuelan Bolivars (BsF) 1,112.80; or US$ 177.19, as per the Official Currency Exchange rate.
Accordingly, the Venezuelan Patent and Trademark Office will apply this new rate for:
1) The filing of new trademarks, trade names and slogans, and;
2) The filing of new applications for patents of invention, utility models, industrial designs and improvements thereof.
Source: Hoet Pelaez Castillo & Duque, Venezuela
Feb 07, 2012 (Newsletter Issue 2/12)
TM Application Simplified
The Venezuelan PTO issued a notice abolishing the requirement to physically file a hard copy of a trademark application. As of January 2, 2012, the PTO will allow applicants to file trademark applications along with a copy of the search payment receipt. It will no longer be necessary to enclose the search results as this requirement has been abolished.
The filing and review process shall be made more efficient with these changes. It shall also reduce paper waste.
Source: Bentata Abogados, Caracas, Venezuela
Apr 11, 2011 (Newsletter Issue 6/11)Late Filing of PoA AbolishedThe Venezuelan PTO issued an official announcement, informing that applications not accompanied by the Power of Attorney (PoA) will not be accepted. The late filing of this document has been abolished. The annoucement has become effective end of March 2011. Applications without PoA will not be accepted. Furthermore, copies of the Powers will not be accepted either; only original Powers duly legalized will be valid.
Please find below additional information to this matter:
- Although the above resolution was issued in October 2010 same became effective on March 30th, 2011 without previous warning. The information was verbally informed by the PTO officers, who are in charge of receiving the application filings.
- Until now, the resolution involves only new applications, but no specific mention has been made regarding requirements for renewal proceedings.
- Applications filed before March 30th, 2011 will follow the normal course; in those cases the PTO will officially publish a term to complete the formal requirements.
- It is still possible to file general powers, i.e. for all IP matters of the applicant.
- The Priority documents for trademark or patent applications are not involved in this resolution, therefore same can still be filed later, namely within 9 months (trademarks) and 16 months (patents) as from the filing date of the Venezuelan applications.
Source: Moeller IP Advisors, Buenos Aires, Argentina Feb 21, 2011 (Newsletter Issue 3/11)Electronic 'Registration Certificates' IntroducedThe Industrial Property Registry (SABI) has recently implemented a new procedure by means of which the corresponding certificate is uploaded in the Registry’s database once a particular trademark has been granted and assigned its registration number.
The certificate, however, does not contain an official or electronic signature. The attorney of record for the trademark in question must review the certificate and if it does not have any errors, print it and file it with the Registry for purposes of signature. After 8-10 working days the duly signed certificate may be retrieved. The same procedure applies in case the certificate has an error, the attorney of record must request that the certificate be corrected and files the documents evidencing where the error lies.
To access the website please click here
Source: Baker & McKenzie, Caracas, Venezuela Dec 10, 2010 (Newsletter Issue 17/10)
Filings with Complete Documents Only
Following an Official Notification dated October 1st, 2010 and published on October 6th, 2010, the Venezuelan PTO announced that the filing of any new IP matter will not be accepted unless all the required documents and information are submitted at the same time.
'IP matters' refers to patents, designs, trademarks, comercial names, slogans, trademark renewals, changes of name or address, assignments and licence agreements.
In case the documents are not complete and the legal requirements, such as notarization and/or legalization by Apostille, are not fullfiled, the application will be rejected and will have to be filed later, once all necessary data is complete, and no priority will be considered.
As this new resolution violates certain International Agreements, such as the Paris Convention, the Venezuelan IP Attorneys Association (COVAPI) is presenting its different point of view and complaints and expects some adjustments in the resolution soon.
Source: www.moellerip.com
Until April 22, 2006, Venezuela was a member of the Andean Pact and as such, trademarks and patents were governed by Decision 486 of the Andean Pact. On April 22, 2006, Venezuela notified the Andean Pact countries of its decision to withdraw from the Pact. In spite of this decision, the Venezuelan Industrial Property Registry had consistently applied Decision 486 with respect to industrial property matters. On September 12, 2008, the Registry issued an official notice informing the general public that they would no longer be applying Decision 486 and that, instead, they would be applying the 1956 Industrial Property Law. As of such date, the Industrial Property Law has been reactivated entirely.
A proposal for new legislation is been studied and drafted by the National Assembly.
As of 10 February 2020, new trademark applications have to be filed exclusively under the 11th edition of the International Classification of Goods and Service for the purpose of trademark prosecution of the Nice Convention. The dual system has been ceased where applications had to be filed according to the national classification along with the equivalent international class according to the Nice Agreement.Multi-class applications are not allowed.
Registrable as a trademark are all types of "distinctive signs" that identify goods and services ("marks"). The Law allows the registration of trade names and slogans (which must be associated to products or services trademarks).
The legislation does not grant registration for non-traditional trademarks such as sound, texture, scent, shape, appearance and motion marks.
According to the Venezuelan IP Law, the trademark may not include words or terms that are considered of general use or have a meaning. The applicant must expressly disclaim from such terms, and preferably eliminate the same from the trademark for which registration is applied for.
The trademark registration process pursuant to the 1956 Industrial Property Law is a little different from that under Decision 486. The applications are now reviewed as to compliance with formalities and, once they have approved this review, the Industrial Property Registrar orders advertisement of an abstract of the application in the PTO’s Gazette prior to the publication in an Official Bulletin for opposition purposes.
The following is a brief description of the registration process:
1. The application is filed, a separate application must be filed for each class of interest, considering that the 1956 Industrial Property Law does not provides multi-class applications. A power of attorney is is required, and this document must be authenticated before a Notary Public and legalized by Apostille (or by the Venezuelan Consulate of the country of origin, if applicable). This document can be filed afterwards as a late filing upon request of the formalities examiner who will issue an office action requesting this mandatory formality and setting a deadline to comply with this request. A set of mandatory search reports over the object of the application have to be included with the application otherwise the file will not be received.
It is compulsory for the applicant, paying in advance the publication fees together with the filing fees.
Further, all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be acceptable or processed by the Venezuelan Registry Office (SAPI).
2. The application is reviewed as to the fulfillment of formal requirement. If the requirements are not met, the application will be subject to a formalities office action issued by the examiner requesting to comply during the thirty (30) working days that follow the office action notification. After these 30 working days, an extension up to three (3) months may be requested to fulfill the formalities. The granting of this extension is optional for the Registrar, and the IP Office shall notify the period granted in a subsequent IP Gazette.
3. The SAPI orders (via official notice in the Industrial Property Bulletin) the advertisement of the application in IPO’s digital newspaper, at this stage, the opposition stage has not initiated. This advertisement has to be arranged and accomplished during the 2 months that follow the order and will be subject to review and approval.
4. The application is published in the Official Gazette for opposition purposes. Third parties can file oppositions within thirty 30 days from publication date. If an opposition is filed, the applicant will be notified in the Industrial Property Bulletin and will have fifteen (15) days to be notified of the opposition and obtain a copy of the opposition brief. Subsequently, the applicant will have fifteen (15) additional days to file a Reply Brief with the allegations it deems pertinent for its defense. The lack of reply of an opposition leads to the declaration of abandonment of the trademark application.
5. If no oppositions are lodged during opposition period, the application will be subject to a substantive examination check for absolute and relative grounds for refusal; if a refusal is notified in the Industrial Property Bulletin, the applicant can appeal this decision during the fifteen (15) days that follow the decision.
6. If no grounds for refusal are raised and no oppositions are filed, the application will be published as granted in the Official Gazette. The payment of final registration and issuing of the electronic trademark certificate fees must be made within 30 working days after the publication of the official notice of allowance, and the electronic trademark certificate will be issued within 2 – 3 months after the verification of the payment.
National:
The opposition period is 30 working days from publication date of the application in the Official Gazette. Failure to file a response to the opposition within the last fifteen (15) days of this period will result in the application being declared withdrawn. An opposition can be filed on the basis of better rights and prior national use: In this case the opposition proceedings will be held in a civil court as a regular civil trial.
Trademark rights are granted and calculated from the date of registration and renewal due date. Before September 12, 2008, the trademark right grant was valid for 10 years from the date of registration or from the renewal due date. After September 12, 2008, a trademark registration is granted for 15 years from the date of registration and is renewable for similar and successive periods of 15 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereSince February 1, 2019, the Venezuelan IP Office has decided to use the "Petro" cryptocurrency (PTR) as a means of payment and exchange unit for the calculation of official fees. The PTR is adjusted on a daily basis by the government. Since April 24, 2020, both national and foreign applicants are allowed to pay the official fees in national currency (BS), or in “Petro” cryptocurrency. However, this means that the official fees vary in the amount on a daily basis.
Due to currency fluctuations, the cost of the official fees is given in USD:
The official fee for filing a trademark application (word or figurative) is USD 108. The publication fee is USD 47, and the registration fee is USD 210. The official fee for filing a trademark application (combined) is USD 153, publication fee is USD 47, and the registration fee is USD 210.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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May 17, 2023
Continental IP, S.C., Caracas, Venezuela