Venezuela

“Great news for the IP community” – US government authorises trademark protection in Venezuela

A General Licence has been issued by the US government that explicitly authorises the protection of all intellectual property in Venezuela. The move follows significant challenges for US companies seeking to protect their brands in the country.

“Great news for the IP community” – US government authorises trademark protection in Venezuela
“Unusual and very risky” – warning to brands as Venezuelan IP office launches cash payments of fees
13 May 2019

“Unusual and very risky” – warning to brands as Venezuelan IP office launches cash payments of fees

The Venezuelan IP Office has introduced a new payment method involving paying cash deposits at a specific bank branch. Experts describe the process as complicated and have warned of significant risks.

What brand owners need to know about the serious trademark issues and risks in Venezuela
5 Mar 2019

What brand owners need to know about the serious trademark issues and risks in Venezuela

In this exclusive guest post, experts from Venezuelan firm Antequera expand on recent “major setbacks” for international brand owners seeking IP protection in the Latin American country.

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1 May 2020

New temporary e-filing system for duration of covid-19 national emergency

The Venezuelan Intellectual Property Office has announced that, starting from 27 April 2020 and as long as the national sanitary emergency remains effective, the office will implement a temporary e-filing system for certain IP-related matters, including trademark applications. Read more

2 Apr 2020

Venezuela establishes new procedure for protecting local GIs

The Venezuelan Intellectual Property Office has established a new procedure for protecting local geographical indications based on the Paris Convention, which it published in a bulletin in February 2020. Read more

25 Feb 2020

Venezuela to use Nice Classification exclusively

In a significant development for trademark applicants and owners, as of 10 February 2020 trademarks applications in Venezuela must use only the International Classification of Goods and Services established by the Nice Agreement. Read more

10 Feb 2020

IP prosecution fee change sparks concern among US rights holders

New regulations that will directly affect Venezuelan trademark prosecutions look set to clash with a US executive order as to how US entities can transact with the Venezuelan government. Read more

Anti-Counterfeiting

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15 Feb 2019

Venezuela trademark warning, IP Australia chatbot success, and triumph for Butlers in the Buff: news digest

In our latest round-up, we look at a new online service launched by the Swedish IP Office, the Babybel wax-coating trademark being invalidated, scammers filing “fake trademarks” to hijack Instagram accounts, and much more. Read more

18 May 2017

Procedures and strategies for anti-counterfeiting: Venezuela

Although in recent years the authorities have shown increasing concern over counterfeiting and implemented mechanisms to combat it, these efforts have been largely inadequate, due to increased traffic in these goods worldwide.

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2 Sep 2011

Court confirms protection of IP rights despite deficient legal framework

A Venezuelan court has granted Babyliss, the well-known French manufacturer of hair care appliances, the possibility to take precautionary measures against a business located in Punto Fijo, one of Venezuela’s free-trade zones. This resulted in the seizure of 588 counterfeit hair straighteners.

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24 Mar 2011

Amendment to Act against Smuggling Crimes is passed

An amendment to the Act against Smuggling Crimes has been published in the <i>Official Gazette</i>. The amendment seeks to criminalise and punish acts and omissions that constitute criminal or administrative smuggling acts, and strengthen controls over customs officers and their assistants.

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Brand management

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15 Mar 2018

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

​​​​​​​The Venezuelan Patent and Trademark Office has suspended payment of official fees by foreign applicants for the foreseeable future. The situation has been described by one local attorney on the ground as “lacking legal basis” and leaving IP owners “in limbo”.

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1 Jul 2017

Pharmaceutical brands in the Americas: practical strategies for a fast-moving sector

Experts from Canada, the United States and Venezuela discuss cutting-edge strategies for the creation, protection and exploitation of brands in the pharmaceutical industry

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29 Mar 2017

Trademark procedures and strategies: Venezuela

In Venezuela, exclusive trademark rights are granted only by registration according to the Industrial Property Law. However, the owners of unregistered trademarks may be able to prevent the registration of marks by filing an opposition to the application.

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10 Nov 2015

Edenred's ownership of CESTATICKET mark compromised by new law

A new law called the "Law on Socialist Cestatickets for Workers”, which concerns food benefits for employees, has set an ominous precedent for the trademark system in Venezuela by using a registered trademark as a generic term, thereby forcing all the competitors of the trademark owner to use that mark.

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Enforcement and Litigation

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4 Feb 2016

E-commerce: protecting your IP rights in Venezuela

This chapter outlines the actions that rights holders can take to protect their rights on the Internet and prevent the import, storage and online sale of infringing goods. It also summarises methods of securing compensation for damages.

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17 Oct 2014

Supreme Court considers registrability of descriptive terms

The Supreme Court has dismissed an action filed by CDS TELECOM CA against CANTV in relation to the alleged infringement of CDS’ rights in the mark LISTO (meaning 'ready' English). Among other things, the court found that there was no graphic, visual, phonetic and conceptual similarity between the marks LISTO and CANTV LISTO and that, in any case, LISTO should not have been registered as a trademark in the first place.

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11 Jul 2013

Supreme Court of Justice reaffirms fundamental principles of trademark law

The Supreme Court of Justice has reaffirmed some of the fundamental principles of trademark law - namely those relating to the presumption of ownership of a trademark, the limits of the exclusive rights to use a mark and the impossibility of registering generic signs. The plaintiff in this case sought to prevent the defendants from using the mark VALE based on its rights in the marks VALEVEN and VALEVEN ALIMENTACIÓN.

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20 Feb 2012

Tobacco company stops unauthorised use of trademark on Facebook

Tobacco company CA Cigarrera Bigott Sucs, the owner of the well-known mark BELMONT, has successfully obtained the removal of a profile using its trademark as an identifier on the social network Facebook. The unauthorised use of the BELMONT mark on the social network could have exposed Bigott to the possibility of being investigated for failure to comply with the relevant regulations on tobacco advertising.

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Government/Policy

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24 Jul 2018

New IP officials appointed against backdrop of great uncertainty

New IP officials, including a new director of trademarks, have recently been appointed in Venezuela. These appointments come in a climate of great uncertainty, mainly due to the suspension of the payment of official fees by foreign IP owners earlier this year.

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5 Feb 2014

Stricter regulation of tobacco packaging introduced

Resolution No 004 of the Ministry of the Popular Powers for Health has introduced stricter requirements regarding the health warnings to be featured on cigarette packs. The main change is the obligation to include a warning text covering 30% of the front or back of the package. Together with the other mandatory images and texts, this leaves only 9% of the total package surface available to include information on the brand.

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21 Oct 2011

New Sports Law will have negative impact on commercial sponsorships

The new Venezuelan Sports Law, which is intended to regulate sponsorship within the Venezuelan sports industry, is expected to have a negative impact on that industry. Problematically, until the implementing regulation is passed, there is a legal void as to what local or foreign companies willing to sponsor athletes should do.

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25 Jun 2010

Commercial advertising prohibited in cultural locations

A resolution of the Ministry of Culture prohibiting all advertising and commercial propaganda, or any form of communication that might be perceived as such, at institutions or entities affiliated to the ministry, has been published in the <i>Official Gazette</i>. Lack of compliance with the resolution will result, when necessary, in administrative and/or disciplinary penalties.

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IP Offices

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6 Dec 2016

TMO requires ratification of oppositions

The Venezuelan Trademark Office has issued an official communication requesting that trademark owners or applicants which have filed oppositions against third-party applications reaffirm their interest in continuing such proceedings.

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8 Sep 2015

Disproportionate increase in official fees comes into force

The Venezuelan Trademark Office has published an official communication relating to the implementation of the official fees set forth in Article 6 of the new Tax Act in connection with industrial property procedures. The act establishes disproportionately high fees and, compared with other countries in the region, it appears that Venezuela has become the most expensive jurisdiction for trademarks matters.

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Online

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29 Oct 2019

Venezuela’s National Telecommunications Commission publishes first official domain name regulation

The National Telecommunications Commission has issued the Administrative Regulation for the National Plan for ‘.ve’ Domain Names, the first national regulation on domain names in Venezuela. Read more

Portfolio Management

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27 Mar 2018

Suspension of official fees payable by foreign entities: brand owners should stay alert

Although the payment of official fees to the Venezuelan IP office has been suspended temporarily, foreign brand owners should be prepared and ensure that their representatives are nevertheless sent the relevant fees.

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18 Sep 2015

Venezuela

However, in April 2006 Venezuela left the Andean Community. On September 17 2008 the Venezuelan Patent and Trademark Office (SAPI) decided that the relevant trademark and patent legislation would be the Industrial Property Law 1956.

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24 Apr 2015

Uncertainty regarding applicability of international IP-related treaties

In 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 Paris Convention, TRIPS and the Nice Agreement. However, it has recently been discovered that, according to the definition of 'collective marks' provided on the Trademark Office’s official website, collective marks are not governed by national law, but by the Paris Convention.

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24 Jul 2014

Supreme Court: two types of oppositions were available when country was part of Andean Community

The Supreme Court has considered whether oppositions under the Venezuelan Industrial Property Act were available during the period when Venezuela was a member of the Andean Community (the country withdrew from the community in 2006). The court concluded that there were two different types of oppositions, which were both valid.

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Trademark law

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14 May 2014

SAPI introduces significant changes to trademark prosecution process

The SAPI has issued notifications that will have important consequences for the trademark prosecution process in Venezuela: pending trademark applications can once again be assigned in certain circumstances, and oppositions must now rely on specific grounds. The notifications were issued in <I>Venezuelan IP Gazette</I> No 546, in force since April 9 2014.

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1 Nov 2013

Court grants rare interim injunction in IP dispute

In a significant decision for the IP community, the Second Administrative Court has granted an interim injunction suspending the legal effect of four trademark registrations granted to a Venezuelan entity in violation of the claimant’s IP rights. It is not common - almost unheard of - for the Venezuelan courts to grant interim injunctions in IP disputes.

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14 Oct 2010

Advertising company successfully enforces mark, despite it being descriptive

A court has ordered an advertising company to refrain from using the trademark PUBLICIDAD ALTERNATIVA, which is owned by Publicidad Alternativa 2025 CA, a company offering non-traditional advertising options. The defendant was offering non-traditional advertising services under the mark and had incorporated a company under the name Publicidad Alternativa CA.

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30 Nov 2009

KLINTEX and CLITEX held to be confusingly similar

The Ministry of Commerce has upheld a decision of the Venezuelan Trademark Office in which the latter had refused to register the trademark KLINTEX on the grounds that there was a likelihood of confusion with the trademark CLITEX. The ministry rejected the argument that both marks could coexist on the market because KLINTEX is used for cleaning products, while CLITEX is used for pharmaceuticals and perfumes.

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