LA PETROLEA violates Hydrocarbons Law

The Venezuelan Trademark Office has annulled the registration of the mark LA PETROLEA in Class 37 of the Nice Classification for "oil and lubricants, vehicle devices and accessories sale services" on the grounds that it violated the Hydrocarbons Law (Case 125, March 28 2007).

Venezuela's Hydrocarbons Law establishes in Article 64 that:

"subaltern registries and notary offices shall not process any documentation related to operations required to be previously authorized by the Ministry of Energy and Mines if a certified copy of the authorization referred to in this article is not submitted together with such documentation. Actions carried out without such authorization shall have no effect whatsoever."

In addition, both the version of the Organic Hydrocarbons Law applicable when the LA PETROLEA application was accepted for registration and the current law establish in Article 61 that:

"individuals or companies wishing to engage in supplying, storing, transporting, distributing and trading hydrocarbon by-products shall have [to obtain previously] a permit from the Ministry of Energy and Mines" (now called the Ministry of Popular Power of Energy and Petroleum).

This provision further states that subaltern registries' obligations do not end with the fulfilment of formal requirements - their obligations extend to a duty of vigilance, in particular with regard to the examination of any application and, if need be, the amendment of any error or the annulment of a registration where the error is too "complete and radical" to be amended.

Gerardo Alberto Chacon, the individual who held the mark LA PETROLEA, did not file with his application any authorization from the Ministry of Energy and Mines. Accordingly, the Trademark Office declared (ex officio) the registration invalid on the grounds that (i) it was granted in contravention of the Hydrocarbons Law, and (ii) the mark was intended to protect a service constitutionally reserved to the Venezuelan state.

The requirement that an applicant may need an authorization other than from the Trademark Office to obtain a trademark registration may seem questionable, even where the trademark applies to services reserved to the state, considering that the Trademark Office is charged with giving an opinion solely about the distinctiveness of the mark at issue. However, it is important that trademark owners obtain an authorization to do business from the competent authority in the matter, in this case the Ministry of Popular Power of Energy and Petroleum.

Cristina Galavis Sucre, Estudio Antequera Parilli & Rodriguez, Caracas