Blog

JANUARY 2025

On February 16, 2025, the new Intellectual Property Law in El Salvador will come into full effect. This follows the approval by El Salvador’s Legislative Assembly (AL) on August 8, 2024, as part of its efforts to implement actions aligned with the government’s plan and to protect intellectual property rights and assets involved in business activities. The new Intellectual Property Law will establish the legal framework for the enforcement and protection of intellectual property, innovation, and creativity in El Salvador.

In light of this, at CENTRAL LAW, we remain committed to our mission of providing comprehensive legal advice to our clients and the general public across all areas of law, particularly in the field of Intellectual Property. Through this article, we share a brief analysis of the key aspects of El Salvador’s new Intellectual Property Law.

Overview – New Intellectual Property Law

It is important to remember that intellectual property assets serve as the main instruments for promoting education, culture, science, art, and sports in our country. They are also key economic tools for fostering local development through the management of generated intellectual property assets, such as patents, utility models, trademarks, trade names, emblems, industrial designs, and copyrights, in addition to actions aimed at the commercialization and exploitation of these assets.

Among the most notable aspects of the new Intellectual Property Law, we observe changes in the stages of the registration process for intellectual property assets that require registration with the Institute, as well as the adoption of new forms of protection.

Below, we outline the most relevant points of the new Intellectual Property Law:

1. Unification of Intellectual Property Regulations: The new law consolidates, within a single regulatory framework of 340 articles, the provisions governing Intellectual Property in El Salvador, replacing the Law on Trademarks and Other Distinctive Signs (LMOSD) as well as the previous Intellectual Property Law.

2. Creation of the Salvadoran Institute of Intellectual Property (ISPI): This entity, with legal and technical authority, replaces the Intellectual Property Registry while remaining a dependency of the National Registry Center. (Articles 6 and 338 of the Law).

3. Establishment of the Intellectual Property Bulletin: This bulletin replaces the Official Gazette and the National Circulation Newspaper as the medium for publicizing registration processes and applications related to Intellectual Property in El Salvador. (Article 3, point 2 of the Law).

4. Explicit Protection of Video Games through Copyright: Under this provision, creators of such works gain protection for their interactive applications designed for entertainment purposes. (Article 16, subsection b of the Law). The current Intellectual Property Law does not explicitly address this matter, requiring interpretation and/or analogy to grant protection.

5. Special Limitation and Exception to Copyright for the Benefit of Persons with Disabilities: This provision aims to benefit individuals with visual, auditory, or other disabilities that impede normal access to works, allowing acts of adaptation, reproduction, communication, or public distribution of a lawfully published work for their benefit. (Article 44 of the Law). This expands the limitation and exception established in subsection d) of Article 44 of the current Intellectual Property Law.

6. General Period for Remedying Deficiencies in Deposit Applications for Works: The ISPI will review deposit applications for works to ensure compliance with the requirements outlined in Article 93 of the Law. If any requirement is not met, applicants will have 10 business days to remedy the deficiency. Failure to address the issue within the specified period will result in the application being considered expired (Article 94 of the Law). The current Intellectual Property Law aligns this period with the general term established in Article 88 of the Law on Administrative Procedures.

7. Two-Month Period to Oppose the Fees of Collective Management Entities (CMEs): From the date the fee is published in the Bulletin, any person with a legitimate, certain, positive, verifiable, and determined interest may file an objection to the fees of Collective Management Entities (Article 103 of the Law). The current Intellectual Property Law provides a period of 15 business days following the publication date (second paragraph of Article 100-F).

8. New Registration Fees for Copyright Procedures: The ISPI will be responsible for receiving payment of fees related to Copyright (Article 325):

A. Deposit of work – $10.00
B. Modification of the work – $10.00
C. Registration of contracts – $30.00
D. Registration of collective management entities – $100.00
E. Publication of registration, agreements, or fees – $50.00
F. Registration of fees for collective management entities – $100.00
G. Modification of the articles of incorporation of a collective management entity – $100.00
H. Modification of fees for collective management entities – $100.00
I. Credential for the Board of Directors of a collective management entity – $100.00
J. Credential for the General Director of a collective management entity – $50.00
K. Registration of dissolution of a collective management entity – $100.00
L. Opposition to fees of collective management entities – $75.00
M. Copyright search by work name – $10.00
N. Mediation request – $200.00
O. Copyright certificates – $10.00
P. Literal certifications of copyright – $15.00
Q. Simple copy of a copyright document – $5.00

9. Express Inclusion of 3D Image Protection as Trademarks: The list of signs that can be considered distinctive signs, specifically trademarks, is explicitly expanded to include the protection of 3D designs (Article 107 of the Law). The current Law on Trademarks and Other Distinctive Signs relies on analogy and interpretation of Article 4 to protect 3D designs.

10. National or Foreign Geographic Names May Be Protected as Trademarks: This provision applies as long as the geographic name does not affect a Geographical Indication, must be sufficiently arbitrary in relation to the products or services it distinguishes, and its use is not likely to create confusion regarding the origin, provenance, qualities, or characteristics of the products or services to which it applies (Article 107, paragraph 3 of the Law). The current Law on Trademarks and Other Distinctive Signs does not include this form of protection.

11. Payment of the Filing Fee: Proof of payment of the filing fee is established as a mandatory requirement to initiate the registration process before the ISPI (Article 113, letter h of the Law). The current Law on Trademarks and Other Distinctive Signs does not include this fee.

12. Limitation of Products and Services at Any Stage of the Process: This provision allows for the limitation of products and services at any point during the registration process, provided the respective fee is paid (Article 116 of the Law). The current Law on Trademarks and Other Distinctive Signs, under Article 12, allows the limitation of the list without the payment of any fee.

13. Modification of the Registration Application Before Publication of Notices: The regulation includes two scenarios (Article 117 of the Law):

A. The list of products and/or services may be expanded before the publication of notices in the BOPI, upon payment of the respective fee.

B. The representation of the distinctive sign may be modified before the publication of notices in the BOPI, provided the change is not essential, upon payment of the respective fee. The current Law on Trademarks and Other Distinctive Signs does not allow for the expansion of the list of products and/or services.

14. Accreditation of Coexistence Between Similar Trademarks or Signs Through Authorization: The regulation grants the owner of a previously registered trademark or distinctive sign the ability to issue a private document authorizing the coexistence of their registered trademark with another similar trademark in the registration process (Article 120, paragraph 5 of the Law). The current Law on Trademarks and Other Distinctive Signs only allows for the demonstration of coexistence between trademarks through an agreement signed by the parties (paragraph 4 of Article 14).

15. Publication of Trademark Applications or Other Distinctive Signs in Process via Electronic Notice: This will be carried out in the ISPI Bulletin within four months following notification of the resolution admitting the registration application, upon payment of the corresponding fee (Article 121, paragraph 4 of the Law). The current Law on Trademarks and Other Distinctive Signs mandates publication through announcements in the Official Gazette and a Major Circulation Newspaper, three times in each, within a 15-day period between the first and last publication. These publications must be submitted within a maximum of six months (paragraph 1 of Article 15).

16. Cancellation of a Registration Due to Trademark Generalization: If the name of a trademark becomes the generic name for one or more products or services for which it is registered, any interested party may petition the ISPI to cancel the trademark (Article 145 of the Law). This rule grants jurisdiction to the ISPI. The current Law on Trademarks and Other Distinctive Signs does not include this power, leaving cancellation of trademark registrations solely under the jurisdiction of Judicial Courts.

17. Registration of a Commercial Advertising Expression or Signal with a 10-Year Validity: This distinctive sign can be renewed indefinitely for successive ten-year periods, upon payment of the corresponding fee, provided that the trademark or trade name it refers to remains valid (Article 166 of the Law). The current Law on Trademarks and Other Distinctive Signs grants indefinite validity to Expressions without requiring renewal every 10 years (paragraph 3 of Article 54).

18. Optional Registration of a Trade Name with a 10-Year Validity from the Date of Registration: It must be renewed for equal periods. To renew, payment of the fee and proof of its use during the validity of the expired or soon-to-expire registration must be submitted (Article 171 of the Law). The current Law on Trademarks and Other Distinctive Signs grants indefinite validity to Trade Names without requiring renewal every 10 years (paragraph 2 of Article 60).

19. New Fees for Distinctive Signs Procedures: The ISPI will be responsible for collecting the fees related to Distinctive Signs (Article 325 of the Law):

A. Application for trademark registration per class – $20.00
B. Application for trade name, emblem, commercial advertising expression or signal, geographical indication, or designation of origin – $20.00
C. Limitation, modification, or division of the application – $25.00
D. Publication of the application – $50.00; each additional class – $5.00
E. Opposition filing – $50.00
F. Trademark registration fees per class – $80.00
G. Registration fees for trade name, emblem, commercial advertising expression or signal, geographical indication, or designation of origin – $55.00
H. Renewal of a trademark registration per class – $100.00
I. Renewal of a commercial advertising expression or signal, trade name, and emblem – $75.00
J. Late renewal fee during the grace period for distinctive signs – $100.00
K. Application for registration of limitation, division, transfer, license of use, name change, address change, voluntary cancellation, preventive annotation, or attachment of a registered sign – $30.00
L. Modification or cancellation of a license of use – $30.00
M. Application for annulment of registration due to intrinsic reasons – $500.00
N. Cancellation due to trademark generalization – $500.00
O. Changes to the regulations of a collective trademark, certification mark, geographical indication, or designation of origin – $30.00
P. Modification to the registration of a geographical indication or designation of origin – $30.00

20. Explicit Prohibition Against Patenting Previously Patented Products or Processes: The regulation expands the scope of excluded subject matter to prevent extending the rights of already granted patents merely by attributing a different use to the original patent (Article 197, paragraph g of the Law). The current Intellectual Property Law, in its Article 107, does not explicitly include such a prohibition.

21. Explicit Definition of the Bolar Exception: The regulation introduces a specific article for this purpose (Article 209 of the Law).

22. Industrial Design Patent Valid for 15 Years: Validity begins from the filing date of the application in El Salvador (Article 249 of the Law). The current Intellectual Property Law establishes a validity of 10 years (Article 139).

23. Maintenance of Industrial Design Patent Validity or a Pending Application: To maintain the validity of an industrial design patent or a pending application, quinquennial fees must be paid. These payments must be made before the start of the corresponding five-year period. The first quinquennial fee is due before the start of the sixth year (Article 250 of the Law). The current Intellectual Property Law does not require fees to maintain the validity of industrial designs.

24. New Fees for Industrial Property Procedures: The ISPI will handle the collection of fees related to Industrial Property (Article 325):

A. Application for registration of an invention patent, utility model, or industrial design – $50.00
B. Application publication – $50.00
C. Request for substantive examination of an invention patent, up to a maximum of 10 claims – $300.00
D. Additional claims in substantive examination of invention patents – $20.00
E. Request for substantive examination of a utility model, up to a maximum of 10 claims – $100.00
F. Additional claims in substantive examination of utility models – $10.00
G. Annual fees for maintaining invention patents – 1st year $30.00 to 18th year $390.00
H. Annual fees for maintaining utility models – 1st year $10.00 to 8th year $80.00
I. Surcharge for payment within the grace period for maintenance fees of invention patents and utility models – 50% of the annual fee
J. Quinquennial fees for maintaining industrial design – each five-year period – $50.00
K. Surcharge for payment within the grace period for maintenance fees of industrial designs – 50% of the quinquennial fee
L. Application for registration of limitation, division, transfer, license of use, name change, address change, voluntary cancellation, preventive annotation, and attachment of a patent, utility model, or industrial design – $50.00
M. Reinstatement of an invention patent or utility model – $500.00
N. Reinstatement of an industrial design – $200.00

25. Protection of Integrated Circuits and Layout Design (Topology): The regulation provides a definition to seek the best form of protection (Article 3, paragraphs 65 and 66).

26. Intellectual Property in Digital Environments

A. When a top-level domain name, whether generic or country-code, created and managed by the international body responsible for assigning names and numbers on the Internet, is included as part of a distinctive sign, the applicant must submit, along with the registration or renewal application for the distinctive sign, documentation justifying the use of these top-level domain names (Article 316 of the Law).

B. In the event of a conflict between distinctive signs and domain names, interested parties may resort to the national entity managing the country-code top-level domain, which must resolve the dispute in accordance with dispute resolution procedures based on the principles set out in the Uniform Domain Name Dispute Resolution Policy (Article 318 of the Law).

C. The title of a work protected under the terms of this Law may not be used or registered as a domain name by a third party if there is a risk of confusion among the public or an unfair advantage taken from the artistic, literary, or commercial success of the work. Titles of works that are of a generic or descriptive nature in relation to the content of the works and are deemed necessary designations are exempted (Article 322 of the Law).

27. Special Exceptions

A. Institutions at all levels of formal education regulated by the General Education Law shall be exempt from fees related to the submission of applications, publication, and registration rights for distinctive signs, patents, and copyright. In the case of invention patents and utility models, this exemption will apply to the request for substantive examinations. Additionally, duly accredited members from Higher Education Institutions shall enjoy a 50% exemption from fees related to the submission, publication, and registration rights of distinctive signs, patents, and copyright.

B. Individuals registered in the National Register of Workers in Culture and Art, according to the specialty of the artist, creator, or professional, will be granted a 50% exemption from fees related to the submission, publication, and registration rights of distinctive signs, patents, and copyright.

Given that the New Intellectual Property Law is a comprehensive body of regulations comprising 340 articles, we will focus our commentary on Chapter I titled: “Of Marks in General” in a future discussion, which is part of Book III: “Industrial Property” of the aforementioned legal framework.

Should you have any doubts, queries, or comments about this analysis, our team of Intellectual Property experts at Central Law will be available to provide the necessary follow-up, with the aim of becoming your strategic ally for the protection and management of Intellectual Property in El Salvador.

 For more information, contact us: info@central-law.com

Elena Isabella De Sabata
Asociada
El Salvador