The protection given to trade marks is based on the provisions of the Venezuelan Constitution, the 1955 Industrial Property Law, the provisions of the TRIPS Agreement, which applied directly over existing local law (Office Notice dated 1 October 2020) and the Paris Convention.

Venezuela’s current legislation allows trade mark rights over word marks, device marks, drawings, word combinations, advertising slogans (provided that applicant states to which trade mark, the slogan is to be used in connection to), when the object of the application does not fall into absolute and relative grounds for refusal.

Article 27 of the Industrial Property Law does establish that “any sign that is novel” can be subject to registration, which, initially, provides basis for the recognition of non traditional trade marks. However, absolute grounds for refusal include colour marks, shape marks for example.

Recent decision regarding the direct applicability of the TRIPS agreement suggest that non traditional trade marks shall be allowed from now on.

The Industrial Property Law establishes the prohibition for registering trade marks or any sign owned by international organisations such as the Red Cross, the International Olympic Committee, FIFA or other similar entities, by any third party not related or authorised by such organisations.

As part of the Paris Convention and the TRIPS Agreement, Venezuela recognises well-known foreign marks which are not recognised in the 1955 IP Law. In addition, the Law establishes the “Better Right” figure, which applies for opposition and nullity actions.

The term of protection for trade marks is 15 years from granting or renewal date. Renewal shall be submitted within six months and while a grace period is not established in the 1955 IP Law, it is admissible through the Paris Convention.

Legislation in Venezuela does not include provisions that establish and regulate the exhaustion of rights.

The trade mark owner can use a symbol that denotes registration such as ®, MR or Marca Registrada, among others. The statutory provision does establish a monetary fine when the owner uses the registered symbol and the trade mark is not registered, however, the value of the fine is meaningless. An unfair competition action can be initiated against the trade mark owner who raises claims against third parties on the basis of non-existent rights; this can include criminal prosecution.

The Venezuelan Patent and Trademark Office (VPTO) should examine and publish the recordal of a transfer in the official Bulletin in order for the change of ownership be considered as complete. Venezuela has a long-standing backlog in processing transfer recordals which exceed eight years from the filing date.

The transfer includes all similar or identical trade marks owned by the assignor unless the deed of assignment has an express provision that exclude those rights.

A trade mark may be subject to a licence only after it has been registered, according to reiterative practice before the VPTO. The deed has to be celebrated in writing before a notary public and receive an apostille or consular legalisation. The licence must establish a value exchange of consideration between the licensor and licensee.

The VPTO should examine and grant the recordal of the licence. Venezuela has a long-standing backlog in processing transfer recordals which exceed eight years from the filing date.

Exclusive, non-exclusive and sole licences are acceptable contracts.

An assignment has to be recorded before the VPTO in order to be validly opposable by third parties, however, in practice the existing backlog and the long gap between the filing of the application and the actual recordal has led some to interpret that the transfer of ownership has been accepted once formally filed for recordal, because the lack of diligence from the VPTO cannot be placed as a burden against the interested parties. However, Article 4 of the Industrial Property Law is quite clear when stating that the change is only in effect after the recordal is granted.

A sworn translation by a locally appointed translator is mandatory if documents are in foreign language.

If assignor wants to transfer part of a group of identical or very similar trade marks but is to retrieve ownership of another part of the group, then there must be an express and unequivocal provision in the agreement, otherwise, the assignee can request the VPTO to have the remaining group of identical or very similar trade marks be transferred in its name by means of an implied assignment.

In Venezuela, it is possible to assign an application for a trade mark. The formalities are the same as those for registered trade marks. Licences are not granted for trade mark applications.

A trade mark registration may be subject to rights in rem or assigned as a security, provided that the valid documentation that constitutes the guarantee be notarised and certified by apostille or consular legalisation, as the case may be, has been filed for recordal before the VPTO. The examiners shall review and grant the recordal.

A trade mark registration that has been subject to rights in rem cannot be assigned to a third party without the proper and formal consent of the beneficiary of the guarantee while it persists.

Trade mark rights are acquired by means of registration. The “Better Right” figure established in Venezuela Law allows senior users of a “mark” to oppose a third party’s identical application for the same goods/products but use in itself does not generate trade mark rights.

Commercial slogans are those applied to a particular product or service trade mark or commercial establishment.

Trade marks composed of personal and/or surnames should be applied with an adequate authorisation extended by a person with civil right to use that name or by an entity that has received prior authorisation by an individual.

The Trade Mark Register is an organisational unit of Venezuela’s Servicio Autónomo de la Propiedad Intelectual (SAPI) which also incorporates the Copyrights Office and the Patents and Designs department. There is a unitary trade marks register which also organises registered trade names but excludes company names from the commercial registries, considered separate entities that keep their very own records.

The trade mark prosecution process requires applicants to show evidence that official search reports have been arranged for the trade mark that will be the subject of a registration, otherwise the application will not be received nor given an official filing date. This means that it is mandatory to order a search report to initiate prosecution.

For the purpose of determining freedom to use and availability for registration, applicants can perform searches in the Register at any given time. A clearance investigation might be incomplete if it does not include insight over registered trade names, company names registry and an in-use verification.

In Venezuela, senior users can oppose a published application claiming and evidencing a better right over the trade mark on the basis of prior and continuous local use. A Civil Court can rule against the applicant and in favour of the senior user.

According to the Venezuela law, the term of registration is of 15 years, counting from the registration date. Renewal must be filed in the six months prior to the end of the term of registration and no grace period is established. However, a trade mark owner can renew the registration after the term has lapsed according to Paris Convention provisions.

Trade marks can be updated or refreshed at any time. It depends on the needs of the trade mark owner. In such case, a new trade mark application must be submitted for registration. Trade mark owners can have as many versions of its trade mark as long as does not infringe any right, for both to use and to defence purposes.

Registration Requirements

When registering a trade mark, it is necessary that the power of attorney is executed by the applicant(s) before a notary public and with an apostille or consular legalisation. At the time of filing, official search reports must be provided, the type of report influenced by the mark in question, eg, for a word and device mark should be covered by two official search reports, one for the nominative aspect and an additional one for the graphical features.

Drawings and specimens of the mark have to be submitted as well and have to match those used as specimens in the corresponding compulsive search reports. A graphical features claim chapter has to be drafted and included in the application, where colours should be duly claimed.

For personal and/or surname trade marks being prosecuted by a company, applicant has to submit a notarised and apostilled authorisation from the individual who has the civil right to use the personal and/or surname.

Substantive Requirements

Substantive requirements include:

• novelty where the sign cannot be identical or similar to previously registered trade marks;
• distinctive character provided it can distinguish products and services as source indicators; and
• should not be contrary to public order, morality and without resulting in misleading consumers about the geographical origin and quality of the products and services intended to be distinguished.

Applicants

Applicants can be individuals as sole owners and in co-ownership. Legal entities and trade bodies can be applicants and further on registrants. Sworn translation by a locally appointed translator is mandatory if documents are in expressed in foreign language.

Multi-class Applications

Venezuela does not allows multi-class applications.

The Venezuela legal system does not require that an applicant must use a mark in commerce before the registration is issued; however, regulatory agencies require proof that the mark has at least been filed for registration.

Legislation does not accept series trade marks. Only one trade mark can be the object of an application.

Each variation of a trade mark has to be registered via a separate and independent application. When assessing whether a set of separate series trade marks subject to registration has complied with use requirements, it is usually acceptable that minor differences in use will cover the requirement of other very similar registrations unless differences are notable, such as colours.

The VPTO consider the existence of prior rights in its examination of an application for registration specifically, senior trade mark applications and/or registrations. Letters of consent are not binding and instead only persuasive for examiners, whilst participating in an assignment/assignment-back procedure to permit registration of another trade mark owner’s subsequent registration is a risky procedure and the deed of assignment must be carefully written and reviewed.

Third parties have the right to participate during a registration procedure by filing opposition proceedings within 30 days from the publication of the application in the Official Bulletin. 

Applicants may, at any time during the process, change, amend or correct the application in order to reduce the scope of the list of goods or to clarify any aspect of the application, or it can be withdrawn. The sign itself cannot be altered.

In general, it is not possible to dive a trade mark; this was only be achieved as a consequence of the reclassification process ordered by the VPTO when re-instated the local classification. Now, however, the VPTO has reinstated the Nice Classification, thus reclassification shall not be applied.

This is not relevant in Venezuela.

The most common absolute grounds raised by the VPTO to refuse an application are genericness, descriptiveness, lack of distinctive character, failure to include an adequate translation of the terms that conform the trade mark, shapes of products that otherwise could include functional elements, misleading character which can include bad faith which has not been formally recognised in our legislation as of now.

Unfortunately, secondary meaning and acquired distinctiveness are not acceptable means for defence because these are not included in the law nor in case law.

Non-traditional trade marks are not contemplated by the law and, therefore, examiners tend to raise the inability of the object to be graphically represented or defined as a common basis for refusal. There is no graphical representation guideline in place to claim non-traditional trade marks for the purpose of prosecution.

It is only recently that applicants have shifted their preference from appeals before the courts to challenging absolute grounds for refusals, resulting in a more favourable and timely outcome.

An appeal can be lodged and initiated provided it has been filed in due time and if the appellant has complied with formal requirements. Currently, the appeal options will depend on the court or organisation that will decide the incidence.

The parties can either file an administrative appeal before the VPTO, within 15 days, to request a reconsideration, by the same authority, of the decision issued. The appellant can choose to continue the appeal process through the administrative agency track, and then a final instance before the Supreme Tribunal of Justice. Conversely, the appellant can choose to change the appeal track towards the courts, provided that the appeal is announced and formalised in due time.

The second choice would be to file the appeal, within 180 days, against the first and originating VPTO decision, directly before a National Administrative Matters court. This judicial appeal will be decided by a court consisting of three justices. A second-degree appeal is available, this time before the Supreme Tribunal of Justice in the corresponding chamber.

Local qualified counsel should be able to define strategies. Currently, the judicial appeal track results in a more efficient course of action.

Venezuela is not a signatory of the Madrid system, therefore, applications must be submitted directly to the VPTO trough a local industrial property agent.

The opponent must file opposition within 30 days from publication of the conflicting application in the Official Bulletin. Although no extension is available, the opponent can announce their opposition and submit complementary briefs in order to amplify the arguments and submit evidence. In theory, the opponent would have a 30-day period in which to submit such complementary brief but since the VPTO has an extensive backlog of oppositions, parties are entitled to submit a brief any time before the decision is rendered.

The legal grounds for filing an opposition to a trade mark application would be that the trade mark application falls within the prohibitions detailed by law.

Any legitimate party interest in opposing. If the opposition is based on a prior right, the opponent must be the owner or authorised party. If the opposition is based on absolute ground, then any interested party may oppose. The opponent can act in its own name or be assisted/represented by an industrial property agent. Further, the statutory regulation establishes that representation before the VPTO should be made by a qualified agent.

Foreign opponents must be represented by an authorised agent who has to submit a power of attorney in hard copy (notarised and apostilled, or with consular legalisation).

The procedure starts when the conflicting trade mark application is published in the Official Bulletin, following which the interested party has a 30 day period to file the opposition. Once the opposition is lodged the VPTO will notify the applicant of the existing opposition by means of a notice published in the Official Gazette. The applicant will then need to file a response to the opposition during the 30 days that follow the notification; failure to do so in a timely manner will be considered as an implied abandonment of the application.

Depending on the kind of opposition (before the VPTO or before a court in the case of a better rights trial), the VPTO will keep the file or send the records to a Civil Court to continue to evidence stage.

When an opposition is substantiated before the VPTO as a governmental agency the parties can include evidence including as late filings, because the statutory regulation does not place a limit except after a decision has been rendered. Typical evidence is of documentary nature and has to be filed, with a sworn translation by a local appointed translator if expressed in foreign language.

There is no organised discovery stage. Parties should file their evidence and have the right and opportunity to challenge and argument against others. Further, current legislation does not include oral hearings on opposition procedures.

Against a VPTO decision, interested party may follow the administrative track by filing a reconsideration petition before the same authority or file an appeal before the National Administrative Court, which may render a faster decision than the VPTO.

The nullity of a registration may be requested before the competent courts, within two years from the granting date. No deadline will be set to claim the cancellation or prohibition of use of registered trade marks or those used in bad faith.

Cancellation of a trade mark can be requested after an uninterrupted period of non-use of two years.

The legal grounds for the nullity/revocation of a trade mark are where it was granted in prejudice to the rights of a third party, or in contravention of any absolute prohibition to registration.

The grounds for cancellation, would be the non-use by its owner for three consecutive years.

The request for revocation/nullity may be filed by the owner of a prior trade mark or, in case of absolute prohibition grounds, by any third parties. The trade mark office is also entitle to revoke its own decision, thus may be entitled to annul a trade mark registration granted by mistake.

Cancellation actions may be filed by a third party that has been subject to opposition.

Revocation actions can be brought before the trade mark office and/or before the civil courts. Cancellation action are to be brought before the trade mark office.

Venezuela’s current legislation does not establish the possibility for partial invalidations or cancellations.

Amendments can be made any time before the challenged party is notified or validly receives summons. After notification, the amendment can only be proposed once, before the other party has filed the corresponding contradictory argumentation.

Invalidation and cancellation actions cannot be proposed into a single action to be heard jointly, however, the courts may accumulate the actions. Cancellation actions tend to be decided prior to revocation petitions.

No information is available in this jurisdiction.

There is no specific provision as to when to file an infringement lawsuit; however, according to the Venezuelan Civil Code, the timeframe is 20 years.

Infringement actions can only claim rights associated to registered trade marks. Civil and criminal actions can be brought against infringers and other related individuals or entities. Criminal actions are initiated by filing a formal complaint before the public prosecutor’s office. Trade mark owners can bring claims for dilution.

Licensees and distributors as third parties that differ from the trade mark owner are entitled to initiate infringement proceedings against an alleged infringer, provided that the capacity is set contractually and that the agreements have been duly recorded before the VPTO. Current legislation does not mention any particular regulation.

Currently, there is no possibility to initiate infringement actions before the trade mark has been registered. There is no preliminary protection for the applicant still under prosecution, seeking to notify the alleged infringer and fixing damages generated during the time the application was still under review.

Venezuela legislation does not permit collective actions associated to trade mark proceedings.

There are no prerequisites to filing an infringement lawsuit, however, in some cases, a formal demand letter including a preliminary notification or warning through a lower court can be helpful when the nature of the infringement allows for time and an opportunity to the infringer to willingly agree to cease the activity.

An initial pleading includes:

• the complete identification of the trade mark owner;
• the rights that are being infringed, which should also include at least a simple copy of the certificate of registration in force;
• a description of the alleged infringer included presumed domicile or place of business;
• a precise description of the factual infringement has to be included; and
• the inclusion of essential supporting evidence including power of attorney or the announcement of evidence that will be included on the record in the appropriate stage.

Parties can include non-promoted evidence before the final pleadings provided they were only made available after the closing of evidentiary stage. The defendant can file a counterclaim.

The courts with jurisdiction to hear trade mark matters are as follows:

• at first instance, Civil and Commercial or Criminal courts;
• at second instance, Superior Civil and Commercial or Criminal Courts; and
• the Supreme Tribunal of Justice will issue in certiorari in cassation in the corresponding civil or criminal chambers.

Currently the VPTO will not render decisions over infringement actions but will provide the court that has the proceedings with reports and information details that may be required for the fact gathering evidence to support the action.

A potential defendant usually files for the requirement of a bond to be posted, the revocation of injunctive relief, and can file a counterclaim in the same action. Furthermore, it can initiate invalidation or cancellation challenges against the trade mark owner before the VPTO, however, this will not suspend the infringement action.

Counterfeiting is a crime according to the Venezuela Penal Code. Criminal actions are initiated by filing a formal complaint before the public prosecutor’s office. An investigation shall be initiated jointly with a specialised police unit and in collaboration with the trade mark owner. Counterfeiting is punishable by imprisonment from one to 12 months, in addition to the destruction of the goods, if the removal of the sign is not feasible. Reparatory agreements may be reach with the infringer.

Venezuela legal framework does not establish special procedural provisions for trade mark proceedings.

It is not mandatory to elaborate or to establish argumentation on regards to the extent or nature of the infringer’s use, however, it is strongly recommended to argue and prove that the accused illegal use is in fact in the nature of a trade mark and with commercial use.

Among various factors that arise in trade mark infringement litigation, the most important should be likelihood of confusion generated by the alleged infringers use, damaging the scope of protection given to the trade mark owner through its valid and standing trade mark rights.

Other factors include the degree of distinctiveness of the trade mark in contrast to alleged infringers actual use. A strong and very distinctive trade mark will likely be considered as infringed provided other factors are present, such as the nature and similarity of goods or services, the actual marketplace on which the products or services are offered and the nature of the consumer. A relationship with the trade mark and the elements that drive repeat acquisitions and interchangeability can be fundamental in declaration of infringement.        

This is not applicable in Venezuela.

Having a trade mark registration is the key factor in the litigation, since it is not possible to initiate an infringement action if no exclusive rights have been granted.

Defences such as fair use, allegations of invalidity including initiation of invalidation proceedings and cancellation actions are very common, however, the announcement that the invalidation or cancellation actions will normally not suspend the main proceedings.

It is also standard to contest the actual scope of the rights cited as been infringed in contrast to the accused rights. Bad faith or rights abuse are available allegations including those to challenge the interim injunctive relief requested by the party initiating the action.

Venezuelan legislation does not provide for defences or exceptions such as equitable estoppel and parody.

Any party can request the exhibition or disclosure of documentation to the counterpart or a third party for the purposes to be included on the record provided there is no other means available for the promoting party to gain access to that specific piece of evidence.

Any party can promote experts and surveys as evidence in the trial. Experts will prepare upon request of the promoting party, a report and declare over matters of fact and law associated to their specific expertise and degree of knowledge. Surveys can be promoted and organised in support to fix the extent of arguments and facts. This kind of evidence is usually promoted to support arguments such as vulgarisation or loss of distinctive character, likelihood of confusion among others aspects of interest.

The judge has the faculty to summon experts and promote the organisation of surveys provided that substantial arguments are dictated as part of the basis to include this evidence in support to help the court understand and reach clarification of the case.

The level of evidentiary value that is normally given to experts and surveys is of medium persuasive impact towards the decision.

In Venezuela, a trade mark infringement does not constitute an administrative offence.

In turn enforcement by means of criminal actions is in place and is a very usual course of action that is initiated with a formal accusation before the public prosecutor who will initiate investigations jointly with a specialised police unit and in collaboration with the trade mark owner.

Costs associated to an infringement action including those in connection to interim injunctions range from USD5,000 up to USD28,000. This greatly varies depending on the nature and intricacies of each case.

Current industrial property law does not provide for adequate preliminary injunctions. As a resource, some litigants have obtained preliminary injunction through an interpretation of the provisions in our current Copyrights Law which does place an adequate system. However, and unfortunately, courts have started changing their interpretation and ceased to proceed in this manner to issue injunctive relief on the basis of the copyrights legal framework.

Interim injunctions can be requested during the infringement proceedings if likelihood of success and the threat of irreparable damages is duly proven.

Trade mark owners may be entitled to remedies such as a monetary award over damages and loss of profits with inflation indexation, recovery of attorneys’ fees and expenses when the trial has been entirely declared in its favour, interim injunctions including the destruction of infringing products and resources used in the manufacturing. 

The destruction of infringing products is permitted.

In principle, each party is responsible for its own costs; however, at the end of the procedure, the losing party required to reimburse the prevailing party for attorneys’ fees.

A trade mark owner may seek relief without prior notice to the defendant through the interpretation of the provisions in current copyright law, which does provide an adequate system.

The defendant can be entitled to attorney fees and court costs, damages and profit loss resulting from the plaintiff’s action with inflation indexation, reinstatement of goods under injunctive relief, among others.

Venezuela's legal system does not provide customs seizures of parallel imports and the action that involves potential seizures of counterfeits is currently regulated by the anti-smuggling law and the scope of action of these border measures is limited.

There is no formal trade mark registration system before customs but authorities do collaborate with trade mark owners on the basis of educational efforts directed to the authorities.

Remedies do not differ for different kinds of trade marks.

The parties can settle the case at any time, provided that negotiable rights that do not violate public order and interest are involved in the settlement and that a judicial final decision has not issued. After the parties draft the scope of the settlement, the court will review, homologate and close the proceedings.

Currently, alternative dispute resolution is not a common way to settle trade mark cases. Parties may reach agreements in order to settle conflicts; however, in some cases, such agreements must be ratified by the VPTO.

Parallel court proceedings, for example, an invalidation action, can be of influence in the resulting decision corresponding to the infringement proceeding. Normally, judges will not suspend the main proceedings until the parallel actions is decided unless the parallel action was tried and notified first.

Judicial appeals can take approximately 24 to 36 months for a decision. Administrative appeals before the VPTO can take as long as eight to ten years to be decided.

There are no special provisions for appellate procedures involving trade mark cases.

Each appeal instance can fully review the legal aspects and facts of the case but the scope of the appeal will normally be limited to the appellant’s argumentation. During an appeal, the court may order a complete or partial reposition.

A device mark can be protected under copyright laws as a graphic work of art.

A trade mark can be protected by industrial design or in the form of an industrial design, provided it is applied as an ornament to be fixed over a product, for example, an ornamental design applied over a bi-dimensional fabric.

The Venezuelan IP Law provides that will not be accepted as trade mark the cartoons, portraits, drawings or expressions that tend to ridicule ideas, people or objects worthy of respect and consideration.

Unfair practices are forbidden in Venezuela, including misleading advertising, product simulation or imitation, commercial bribery and violation of norms, in general.

The express, preferable and direct applicability of the TRIPS Agreement is an emerging issue in IP practice in Venezuela, even though the country has been part of the treaty since 1994. This recognition brings opportunity to the allowance of non-traditional trademarks, the direct application of Paris Convention and the obligation to adopt further anti-counterfeit measures.

Internet providers are obligated to review any infringement complaint and, if necessary, shut down web pages infringing IP rights.

Although Venezuela's IP Law does not obligate a company to have its manufactured products product identified with a registered trade marks, the jurisdiction has special rules and norms that establish a copy of the registration certificate in order to be allow in commerce.