“A situation of uncertainty” – fees debacle at Venezuelan IP office leaves brand owners “in limbo”

  • Venezuelan IP Office has suspended payment of official fees by foreign applicants
  • Move follows Venezuelan government’s devaluation of the country’s currency
  • Local practitioners describes “situation of uncertainity” as “lacking legal basis”

The Venezuelan Patent and Trademark Office has suspended payment of official fees by foreign applicants for the foreseeable future. The situation, which has resulted in services including renewals and changes of ownership grinding to a halt for many brand owners, has been described by one local attorney on the ground as “lacking legal basis” and leaving IP owners “in limbo”.

The situation began on January 29, when the Venezuelan government published a new Currency Exchange Rate Adjustment. This resulted in an increase of the official currency exchange rate (ie, a devaluation of the country's currency). This move will have a significant impact on the taxes and official fees paid by foreign applicants for IP rights in Venezuela, and in response the Venezuelan PTO informed users that payment of official fees by foreign brand owners was suspended until new official fees are published. It is understood the suspension only affects services for which payments are made in US dollars by foreign rights holders, such as renewals, final granting taxes, patent annuities and changes of ownerships. Some services, including trademark filings, continue as usual, as do any other proceedings involving domestic applicants (or those paid in local currency).

For IP practitioners on the ground, the situation is a serious one. Patricia Hoet Limbourg, a partner at Hoet Peláez Castillo & Duque in the country’s capital Caracas, tells World Trademark Review that the official notice published by the office confirming the fees suspension “lacks legal basis and leaves us in limbo and a situation of uncertainty – our hope is that the situation must be solved soon”.

While there are concerns that some brand owners could be vulnerable to losing rights during this process, there is one possible option to use as a safeguard. “Brand owners can file a writ in those cases where it is necessary to preserve the IP right due to an upcoming deadline,” Limbourg explains. “This is, however, a temporary solution which does not provide any sense of security to the IP owners as the law requires. Outside of that, my advice to international rights holder is to keep yourselves informed. Good communication with your local representatives is the key to maintaining your IP rights in Venezuela. The situation will have to be resolved sooner or later; once it is solved, you will want to ensure your trademark rights are duly protected.”

The question, then, is when this situation will be resolved – and for now the answer is difficult to predict. Limbourg spoke of the frustration that a solution hasn’t been found for something that, on the surface, appears to be easily rectifiable – and revealed that her firm is considering taking matters into its own hands. “We expected that this situation would be solved by now, but unfortunately no decision has yet been taken,” she states. “We have had several meetings with the registrar and all IP agents have pressured the office to solve the situation. At this point, it is very difficult to predict how long it will last. In the past, when we had a similar situation, it took them a couple of months to come up with a solution. At any rate, we are already considering the possibility of taking further legal actions against this arbitrary decision.”

For now, then, trademark practitioners should be mindful of possible delays and hurdles to retaining rights in Venezuela. It appears that patience is wearing thin within the local legal community – so the hope is the IP office steps up and ends the uncertainty soon.

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