Uncertainty regarding applicability of international IP-related treaties

On November 5 2008 the Venezuelan Trademark Office issued an opinion stating that the rules of the Andean Community were no longer applicable in the country, referring specifically to the international treaties relating to industrial property, namely:

• the Paris Convention for the Protection of Industrial Property;
• the Agreement on Trade-Related Intellectual Property Rights (TRIPS); and
• the Nice Agreement.

In this opinion, the Trademark Office stated that, following Venezuela’s withdrawal from the Andean Community, neither TRIPS nor the Paris Convention could be applied directly, since the text of those treaties had not been consolidated into national law. It also stated that the implementation of the Nice Classification was conditional to Venezuela being a formal member of MERCOSUR.

However, although Venezuela's entry into MERCOSUR was approved on July 31 2012, to date there has been no official statement regarding the implementation of the relevant international treaties, which, according to the opinion issued by the Trademark Office, should be applicable once Venezuela had become a formal member of MERCOSUR.

Nevertheless, despite the absence of a ruling by the competent authorities, it has recently been discovered in the definitions provided on the official website of the Trademark Office - specifically, in the definition of 'collective marks' - that collective marks are not governed by national law (ie, the Industrial Property Act of 1955), but by the Paris Convention.

Moreover, on November 18 2014, the director of the Trademark Office officially filed an application for the registration of the collective mark SUCRE, indicating that collective marks represent a flagship project of the Trademark Office and that they are framed within the policies of the government, thus showing signs that the relevant international conventions are applicable.

However, despite the above, and although the Protocol on the Harmonisation of the Rules on Intellectual Property No 8/95 of MERCOSUR sets forth that member states shall undertake to observe the Paris Convention and TRIPS, in addition to applying the international classification, in Venezuela there is no uniform approach regarding the implementation of the Paris Convention. Indeed, the Trademark Office does not currently allow for a grace period for filing applications for the renewal of trademark registrations, among other things, but, on the other hand, the Paris Convention is mentioned as the applicable standard in the definitions provided on the Trademark Office's official website. Moreover, the office openly proclaimed that it was processing the application for the collective mark SUCRE which, to the best of our knowledge, would be pursuant to the Paris Convention.

It is hoped that the Trademark Office will strengthen the criteria that it has developed regarding collective marks, and that it will apply the Paris Convention to its full extent.

Ricardo Enrique Antequera and Dinora García, Estudio Antequera Parilli & Rodríguez, Caracas