Good news for mark owners as evidence filing requirements for Andean oppositions are relaxed


Although the Bolivian Patent and Trademark Office has, for years, been deferring several subject matters and procedural issues to regulations and guidelines, a couple of weeks ago its much-anticipated IP bylaw was finally adopted.

Among the new procedural amendments, additions and novelties, the bylaw - called the Internal Bolivian Industrial Property Bylaw - sets forth a new standard for filing evidence in Andean oppositions. Parties to Andean oppositions - and especially opponents - will no doubt welcome the introduction of simplified requirements, which will impact such procedures in terms of time, effort and costs.

For those readers who are less familiar with the Andean Community legislation, it may be recalled that, in an Andean opposition, the opponent may file an opposition in a member country where it does not own an application or registration, based on an application or registration in another member country. 

Prior to the enactment of Article 241 of the new bylaw, the basic compulsory evidence needed in Andean oppositions was twofold:

  1. A trademark application or registration in one of the Andean countries with seniority over the opposed application in the country where the opposition was filed; and
  2. A fresh trademark filing in the country where the opposition was filed to show real interest.

In relation to the first requirement, the invoked application or registration certificate in a third country had to be duly legalised by various institutions, up to the Bolivian Consulate. This apparently simple condition meant that an opponent had to go to the third country’s Patent and Trademark Office and obtain a certified copy, which could take a few days; it would then have to take the copy to the appropriate governmental agency for legalisation of the certifier’s signature, which could take a few days or even weeks; it then had to go to the Foreign Affairs Ministry for further legalisation of the paperwork, which could take several days; finally, it had to go to the Bolivian Consulate for yet more legalisation, which could take several weeks. 

This was just the first part of the process. Once the documents arrived in Bolivia, the local legalisation process required approximately the same number of steps, and the same amount of time and costs. It was not rare, therefore, for deadlines to be missed.

Article 241 of the new bylaw now provides that an opponent can meet the first requirement merely by submitting a simple copy of the earlier application or registration certificate and a web address for the IP National Office of the country where the invoked application or registration was lodged for verification purposes.

The time savings that this change will bring will be substantial for case processing at the Bolivian Patent and Trademark Office. This will reduce backlogs and delays and is expected to save significant resources, either monetary, human or otherwise, which ought to lead to other much-needed IP-related changes with regard to legalisation.

Juan Ignacio Zapata, Bolet & Terrero, La Paz 

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