Court grants rare interim injunction in IP dispute


In a significant decision for the IP community, the Second Administrative Court has granted an interim injunction suspending the legal effect of four trademark registrations granted to a Venezuelan entity by the Intellectual Property Autonomous Service in violation of the claimant’s IP rights. The claimant had been unable to register several of its well-known trademarks due to the registrations obtained by the defendant in violation of national and international IP conventions.

The decision arose from a nullity action filed by the claimant against a resolution of the Venezuelan Trademark Office in which the latter had registered four designs as trademarks on behalf of a third party. The claimant argued that these designs were identical to artistic works owned by it which are protected under the Venezuelan Copyright Law, as well as under trademark law in several jurisdictions. Since oppositions were not filed when the marks were accepted for registration, a nullity action before the administrative courts was the best course of action to obtain a remedy.

Once sufficient evidence had been provided, the exclusive trademark rights of the defendant over the designs were duly suspended. The court held that the injunction aimed to prevent consumers from being deceived into purchasing goods that do not have the quality of those commercialised using the image of well-known works of art, which deserve cumulative protection under both copyright and trademark law. The court noted that the fumus boni iuris required to grant an interim injunction was satisfied in this case.

Furthermore, the court stated that the claimant had shown that the damages suffered could not be adequately compensated at trial, since the registration of the designs by the defendant constituted an act of unfair competition which had a direct impact on the claimant's sales. Therefore, the requirement of periculum in mora was also met prima facie

This decision not only safeguards the claimant’s position until the end of the main proceedings, it also indicates the court’s position when it comes to local companies seeking to infringe well-known trademarks and other IP rights owned by foreign companies. Such infringement is expressly forbidden by the Venezuelan IP legal framework.

Moreover, this injunction will constitute a precedent in Venezuela, where it is not common - almost unheard of - for courts to grant interim injunctions in IP disputes, especially when the trademark at issue has been registered. It is hoped that similar decisions will be taken in the future in order to create a more appropriate environment for both national and foreign investors.

Ricardo Alberto Antequera H and María Rusé Ruggiero G, Estudio Antequera Parilli & Rodríguez, Caracas 

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