On February 12, 2020, Initiative No. 20209589, Law Reform to Law No. 380 on Trademarks and Other Distinctive Signs (the Reform), was presented to the National Assembly. It was approved by the National Assembly on March 24, 2020, and published in Official Gazette No. 65 of April 3, 2020, entering into effect immediately.
The objective of the Reform is updating the provisions regulating the protection of trademarks and other distinctive signs, incorporating new provisions, and rectifying gaps. The goal is to simplify and facilitate registration processes, considering that the current law dates from 2001 and was last updated in 2006.
Highlights of the Reform include:
- All applications (registration, renewal, transfer, modification and opposition) must be accompanied by payment of the corresponding fee.
- Opposition period is one month after publication in the Gazette.
- The period to answer an opposition is one month after notification, with the possibility of a 15-day extension on request.
- Posting Bond (for late filing of a Power of Attorney (PoA), one month.
- Deadline to answer objections or rejections issued by the Registry is 15 days.
- Possible to request extension of 15 days to answer objections or rejections and file a PoA, subject to payment.
- Notices issued by the Trademark Office to answer objections or rejections will be valid for 15 days.
- Proof of publication of trademarks must be submitted by the applicant to the Registry within 15 business days after date of publication (otherwise application will be abandoned).
- It is no longer necessary to submit the original registration certificate with applications for renewals, modifications, assignments, and oppositions.
- Registry will facilitate the registration of PoA (valid for 5 years) upon payment of fee. It is not mandatory.
- In the case of the assignment of multiple marks, the Registry will issue a single assignment certificate including all marks, but applicant must pay the assignment fee for each.
- Registrar is granted powers to mediate at the request of an interested party, on matters submitted to its knowledge.
- The Trademark Office will appoint auxiliary registrars (number to be set) who will act in conjunction with the registrar, facilitating the signature of documents. (Certificates, Resolutions, Objections, Rejections).
- Considerable tariff increases and new fees imposed
- All form (Applications for new registrations, renewals or any administrative procedure) will be sold by the Trademark Office.
- Local attorneys can now indicate in the Application forms to be notified by electronic means of any notification (Rejections, objections, resolutions, certificates).
- Rates will be reduced by 75% if applicant is a natural person whose annual income the year prior to the submission of the application has been less than US$ 4,000.00.
- With regards to patents, the only change is tariff fees.
Yolianna Arosemena Benedetti
Gabriela Sayra Fornos