Disproportionate increase in official fees comes into force

Venezuela

Effective from June 2015, the Venezuelan Trademark Office has published an official communication relating to the implementation of the official fees set forth in Article 6 of the new Tax Act in connection with industrial property procedures, including trademarks renewals, assignments and licences.

The act establishes disproportionately high fees; the fees for most of the services have increased by more than 100% compared to the former fees. Additionally - and, arguably, more importantly - the act sets forth that foreign applicants must pay such fees in US dollars at the lowest official exchange rate in the market.

An official notice was subsequently issued by the Trademark Office stating that the exchange rate applicable to the fees would be Bs6.3 per US$, which means that the official fees are totally disproportionate, in clear violation of the national treatment principle established in the international treaties signed by Venezuela.

Some of the increased fees are shown in the following chart:

Service

Official fees in US$

Payment of final registration fees

1,190.48

Renewals

2,388.95

Licences

3,571.42

Assignments

2,380.95

Annulment actions against the provisions of Article 6 of the Tax Act have been lodged with the Venezuelan Supreme Court by the Venezuelan Association of Industrial Property Agents, which claimed that there had been several violations of international treaties and international law principles, such as the national treatment and the most-favoured nation treatment.

It was also claimed in the annulment actions that such a disproportionate increase of the official fees was not properly supported by analysis, which is mandatory for any law to be passed. Comparing the new fees with those in other countries in the region, it appears that Venezuela has become the most expensive jurisdiction for trademarks matters.

However, until the Supreme Court issues a decision, the act will remain fully in force. Even though preliminary injunctions have been requested, it is impossible at this stage to forecast when a decision will be issued.

Finally, it should be highlighted that, in the case of trademark applications, the new official fees should be paid once the application has been granted - that is, approximately 12 months after its filing.

Ricardo Enrique Antequera, Estudio Antequera Parilli & Rodriguez, Caracas

Get unlimited access to all WTR content