Official trademark search results to be submitted with all applications

The Venezuelan Trademarks Office has issued an official announcement stating that effective from May 5 2009, applicants must provide the official search results together with their trademark application. Surprisingly, this announcement came after the office suspended its expedited search service - official trademark search results are now delivered within five to nine days.

The office based its decision on Article 71 of the Industrial Property Act, under which trademark applicants must attest that "the mark applied for is not likely to be confused with an earlier registered trademark for identical or similar goods". One interpretation of this provision was that trademark applicants should submit, together with their application, a writ attesting that there is no likelihood of confusion between the mark applied for and any other registered trademark. However, the office considered that in order to comply with Article 71, applicants should provide the official trademark search results. In addition, the office interpreted this provision as meaning that failure to submit the search results at the time of filing will result in the rejection of the application.

This interpretation raised several concerns - for example, whether the new requirement should apply:

• to applications claiming priority under the Paris Convention for the Protection of Industrial Property; and
• where a trademark is already registered but the owner seeks to amend the registration.