SAPI introduces significant changes to trademark prosecution process


In Venezuelan IP Gazette No 546, in force since April 9 2014, the Venezuelan Trademark Office (SAPI) has issued notifications that change the criteria for trademark prosecution.

First, the amendments concern official notifications regarding changes of ownership of pending applications. Since 2008, and due to the reinstatement of the Venezuelan Industrial Property Act dated 1956, the SAPI had decided not to process any change of owner requests in connection with pending applications. This situation resulted in a huge amount of ex officio denials of trademark applications based on prior registrations of the same owner, forcing applicants to file appeals in order to maintain their applications, thereby delaying the registration process considerably - taking into account the fact that the SAPI has a significant backlog when it comes to issuing appeal decisions (currently, the average time for such a decision to be issued is approximately five years).

After years of having to bring these cases to the Venezuelan registrar, with all the negative and unjustified consequences that this implied, the official notification issued in the recent IP Gazette No 546 stated that a change of owner (applicant) for a pending patent or trademark application will be again accepted under the following terms:

  1. If the change of owner derives from an assignment, the parties must expressly mention in the assignment deed that the assignor is transferring the priority right of the pending application.
  2. Applications that are the subject of an assignment must be identified properly in the document, including the description of the trademark and the application number.

Second, the amendments concern the grounds for filing oppositions against trademark applications. Over the past years, an increasing number of oppositions have been filed by third parties in bad faith with the purpose of delaying the trademark registration process, taking into account the huge backlog of opposition decisions at the SAPI (the average time for an opposition decision is currently approximately nine years). According to the official notification, oppositions must be filed based on the grounds of non-registrability provided in Articles 33, 34 and 35 of the Industrial Property Act (violation of public order) or on the ground that the application would affect the rights of third parties based on prior applications and registrations. Furthermore, oppositions shall comply with the formal requirements established in law, such as the fact that the opposition writ must properly identify the opponent and its legal representative, if applicable, as well as the corresponding domiciles.  

Opposition writs that do not comply with such legal requirements will be declared inadmissible in the IP Gazette. Opponents may file an appeal against such decision within the established legal term. Otherwise, the prosecution of the application will continue as set forth in law.

The official notifications constitute a step in the right direction for the Venezuelan trademark prosecution process which, since the reinstatement of the 1956 act, has been facing many obstacles and has moved backwards due to an applicable legislation that is totally outdated and does not meet the minimum international IP standards.    

Ricardo Alberto Antequera H and María Alejandra Castillo G, Estudio Antequera Parilli & Rodríguez, Caracas

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