Trademark

Brand concept

It is any sign, figure, drawing, word or combination of words, legend and any other sign that is new, used by a natural or legal person to distinguish the products or services with which it trades. Their social purpose is to facilitate people’s access to the goods and services of their choice.

What cannot be registered as a Trademark?

In accordance with the provisions of article 33 of the Industrial Property Law:

  • Words, phrases, figures or signs that suggest immoral ideas or that go against morality and good customs.
  • The national symbols, emblems of the states or municipalities.
  • The signs of the Red Cross.
  • The symbols or emblems of other countries
  • The geographical names, as an indication of the place of origin.
  • The colors by themselves.
  • Geometric figures that are not new.
  • Caricatures, portraits, drawings or expressions that ridicule persons or objects worthy of respect and consideration.
  • Words or terms that have come into general use (vulgarized)
  • The words commonly used to indicate the genus, species, nature, origin, quality or shape of the products.
  • Trademarks that graphically and/or phonetically resemble another already registered.
  • Misleading Trademarks, whether by geographical origin, by praise or by business origin.

What signs can constitute a Trademark or Distinctive Sing?

  • Words or combination of words.
  • Signs and figures.
  • Drawings.
  • Legend.
  • Numbers in combination.
  • The Colors in Combination contained in a sign.
  • The shapes of objects

The principles applicable to Trademarks are:

Territoriality: The rights conferred by the Venezuelan Industrial Property Registry Office are valid only within Venezuelan territory.

Specialty: Trademarks must be applied for and are protected in accordance with the nature of the products or services they are intended to identify.

Registrability: The exclusive right over the distinctive signs is obtained from its registration before the competent authority and that is when it will take effect against third parties.

The rights obtained by the holder of the registered Trademark are:

  • 1.- Protection against usurpations or imitations that affect the holder’s right without express authorization.
  • 2.- To Allow the holder to act against any third party that without its consent uses or applies the protected Trademark to other products.
  • 3.- In the same way, it allows the holder to prevent any third party from selling or introducing into the market products with the protected Trademark without express authorization.

Types of Trademarks

According to the purposes of the Industrial Property Law published in Official Gazette No. 24873 of October 14, 1955, the following is understood as a trademark: Trademark (Art. 27): «Any sign, figure, drawing, word or combination of words, legend and any other sign of innovation, used by a natural or juridical person to distinguish the articles it produces, those with which it trades or its own company».   The classification of trademarks according to the object; product trademarks or service trademarks and according to the elements that make up the sign may be word, graphic or mixed trademarks.

Trade Name (Art. 27): «It is the Trademark whose purpose is to distinguish a company, business, exploitation or mercantile, industrial, agricultural or mining establishment».

Commercial Slogan (Art. 27): «It is the Trademark that consists of a word, phrase or legend used by an industrialist, merchant or farmer, as a complement of a trademark or commercial denomination». It is important to bear in mind that this type of distinctive sign is accessory to the Trademark, that is, it is necessary that the Trademark that identifies the product or service is registered. Likewise, it must not contravene the applicable national regulations.

how register

STEP 1

Background Search:

The search is graphic and phonetic and is a fully automated process by the Webpi system.

Once the sign or Trademark to be protected is selected, the user must carry out a search in which a report is generated on the background that exists on the requested sign or Trademark.

The interested party must present a copy of the bank deposit (made in any of the SAPI accounts) at the Finance Box Office to be validated and, finally, the user will deliver the request to the Information Area for processing.

Graphic:

 It is a search that is carried out in order to know the background of a graphic brand or logo. When requesting it, you must present the logo or design in a size of 5 x 5 cm.

STEP 2

Acquisition of forms: The applicant must acquire Form FM-02, the folder (product and/or service or commercial motto or commercial name) at the SAPI offices and finally, must pay the fee for the trademark application for a value of 0.1 U.T.

Elements that make up a trademark registration application: 

  • Fiscal Stamps of the Government of the Capital District for a value of 0.4 UT.
  • Proof of fee for trademark application for a value of 0.1 UT.
  • Product and/or service folder or slogan or trade name.
  • Form FM-02 duly filled with its respective class.
  • In the case of a graphic or mixed Trademark application, you must submit one (1) 5×5 facsimile, accompanied by a detailed description of the label that includes all the elements that comprise it, including its colors and the arrangement of the elements on the label. space.
  • Power of attorney (in case of proxy), in original and copy. When it is international, it must be legalized and translated by a public, sworn and duly notarized interpreter.
  • Searches for denominative and graphic antecedents, the latter when the mark is figurative or mixed.

STEP 3

Presentation of the application:

You can submit the application for trademark registration both via email and in physical form before the integral box office. The presentation requirements are broken down below according to:

Natural people:

  • Photocopy of the current identity card or passport.
  • Simple Sworn Statement, in the event that the person has been using the brand for some time.
  • RIF of the natural person requesting.

Legal people:

  • Simple copy of the Minutes of the Constitutive Assembly of the commercial company or publication in the newspaper. (You must bring Original ad effectum videndi, so that it can be seen).
  • In the event that the company has been established for more than 5 years, the interested party must present: a certified simple copy of the same (Original must be brought ad effectum videndi, so that it can be seen). In the event that the company at any time has changed partners or legal representative, the interested party must present a certified simple copy of the same (Original ad effectum videndi must be brought, so that it can be seen)
  • Copy of the RIF of the commercial company.
  • Photocopy of the identity card or passport of the director or president of the company and of the applicant at the box office and their respective RIF.

Civil associations:

  • They must attach a simple copy of the Constitutive statutes and bring the original of the same ad effectum videndi.
  • In the same way, you must present a photocopy of the identity card or passport of the director or president of the Civil Association and of the applicant at the box office and their respective RIF.

Entrepreneurs 

  • Register RIF as an entrepreneur.
  • staff RIF.
  • Entrepreneur certificate issued by the Vice Ministry of Productive Economy (original and copy).
  • identity card.

Cooperatives:

  • They must attach a simple certified copy of the Constitutive Statutes and bring the original of the same ad effectum videndi.
  • Copy of the RIF of the Cooperative.
  • Photocopy of the identity card or passport of the director or president of the company and of the applicant at the box office and their respective RIF.

Representatives or Agents of Industrial Property: 

  • They must present a comprehensive and sufficient power of attorney, authenticated, translated by a sworn public interpreter and international visa or apostilled, if applicable.
  • The numbered original remains in the Powers of Attorney and the numbered copy is delivered to the requesting proxy.

The applicant must present all the requirements described above at the INTEGRAL TICKET OFFICE, where a copy of their application will be delivered, time-stamped in order to record its priority.

Once the collections have been consigned, the Industrial Property Registry:

  • The request is processed and must be evaluated
  • If the request meets the requirements of article 71 of the Industrial Property Law, its publication in the digital press of the SAPI will be ordered. If it does not comply with all the pertinent legal requirements, the process will be returned by means of an official letter with the grounds for return to that within 30 days the interested party answers within the limits required by the examiner.
  • After the application has been published in the SAPI Digital Newspaper, it will be published as Requested for Opposition Effects in the Official Gazette of Industrial Property, in this sense any third party will have the opportunity to oppose the application within a period of 30 business days from the publication, if you consider that the requested trademark violates a registration right or a better right due to previous use in the market.
  • If the application does not present any opposition, the Registry Office will proceed to carry out the Registrability (substantive) examination.
  • If the trademark is granted, it will be published in the Intellectual Property Bulletin so that, within a period of 30 business days from the validity of the Bulletin, the interested party pays the registration fees under penalty of Expiration due to non-payment. Once the Registration Fees have been paid, the corresponding Registration Certificate will be issued. If the trademark is denied, it will also be published and the corresponding Appeal for Reconsideration will be announced.

Brand Renewal

How to renew a Trademark?

The renewal of a Trademark can only be done, at the request of the interested party, six (6) months before the expiration of the same. Its duration is for 15 years, renewable indefinitely.

Requirements for renewals:

  •  Fill out and download the Trademark Renewal Form (FM-04).
  •  Copy of the Certificate of Registration.
  •  Copy of the Articles of Incorporation of the Trading Company.
  •  Copy of the Minutes of the last Assembly if the company has been constituted for more than 5 years.
  •  Authenticated Power of Attorney, if it is not the holder, if it comes from abroad the document must be translated by a sworn public interpreter, visaed, apostilled, and duly listed by the Industrial Property Registry.
  •  Copy of the C.I and RIF. (Legal if applicable and personal).
  •  A tax stamp of 0.02 UT, or Seniat form 00016 for 0.02 UT.
  • To cancel the fee for the Renewal of the Trademark.

Assignment of a Trademark

How to carry out the Assignment of a Trademark?

The Assignment of the Trademark is a formal contract, through which the owner of the trademark assigns all his rights over the registered trademark, in accordance with the provisions of articles 4, 89 and 90 of the Industrial Property Law.

These contracts must be presented before the Industrial Property Registry, so that it can take effect before third parties.

Requirements for the Assignment:

 

 Fill out and download the Trademark Assignment Form (FM-05).

  •  A tax stamp of 0.02 U T or SENIAT form for 0.02 U T.
  •  Authenticated original document of the Assignment, or certified copy with the signatures of both parties or the proxy (as an exception, a notarized document of assignment will not be necessary when a natural person assigns the Trademark to a company where he/she is a partner or sole owner, a simple document of assignment where the transfer of the trademark is evidenced will suffice), if coming from abroad, the document must be translated by a sworn public interpreter, endorsed and apostilled.
  •   Copy of the minutes of the last Assembly (if it has been constituted for more than 5 years) with a view to the original.
  •   Authenticated Power of Attorney if it is not the holder with its respective copy to list, if it comes from abroad the document must be translated by a sworn public interpreter, visaed, apostilled, and duly listed by the Industrial Property Registry.
  •  Copy of the C.I and RIF.
  •  The assignment request folder and respective form may be signed by the assignor and/or the assignee, both or by the attorney-in-fact.
  •  Cancel the Trademark Assignment fee.

Change of name or address

Change of name or address

How to change the name or address of a trademark holder?

For the Change of Name or Address of the Holder of a Trademark, the interested party, after the granting of the Trademark can make the pertinent change.

Requirements for Change of Name or Address of Trademark Holder:

  • Fill out and download the Change of Name Form (FM-08) or Change of Address of Trademark Holder Form (FM-06).
  • Copy of the minutes of the last meeting (if it has been constituted for more than 5 years), with a view to the original.
  • Authenticated Power of Attorney if it is not the holder with its respective copy to list if it comes from abroad the document must be translated by a sworn public interpreter, visaed, apostilled, and duly listed by the Industrial Property Registry.
  • A tax stamp of 0.02 U T, or SENIAT Form 00016 for 0.02 U T.
  • Original document of the Change of Name or Address or certified copy, if it comes from abroad, it must be translated by a sworn public interpreter, visaed and apostilled.
  • Cancel the fee for the change of name or address of the trademark holder.

Merger or license to use

Merger and/or licenceses of use:

How to carry out the merger and/or license to use a Brand?

The use license: It is granted by the Holder of a Registered Trademark, in favor of a third party so that the latter, with his permission and authorization, can use the Trademark.

The Merger: It is carried out when two or more pre-existing companies come together and constitute a new one, they absorb each other creating a new commercial company.

Requirements for the merger and/or licenses of use:

  • Fill out and download the corresponding Form (for License of Use Form FM-07 and for Merger Form FM-05).
  • Original document of the Merger authenticated or certified copy, if it comes from abroad, it must be translated by a sworn public interpreter, visaed and apostilled.
  • Copy of the minutes of the last meeting (if it has been constituted for more than 5 years), with a view to the original.
  • Authenticated power of attorney if it is not the holder with its respective copy to list if it comes from abroad the document must be translated by a sworn public interpreter, visaed, apostilled, and duly listed by the Industrial Property Registry.
  • Copy of the C.I and RIF.
  • Cancel the trademark merger fee.
  • Cancel trademark use license fee.

Frequently Asked Questions

1. I have registered, in the Commercial Registry, the name of my company, is it also necessary to register in the SAPI?

Yes, because the SAPI registration has no relation with the Commercial Registry, the laws that apply are different, each registry depends on different institutions, and the goal of protection is also different, the databases of both registries are independent.

2. With the simple application, am I guaranteed the right to the Trademark?

No, the Trademark application only represents an expectation of the rights for the applicant, the right over the trademark is created when it is granted and published in the Industrial Property Bulletin and the applicant cancels the rights.

3. What is the first step to register a Trademark?

The first thing you have to do is a background searching of the name to apply for, if the trademark has a design or logo, you must perform two searches, one phonetic and one graphic, for this you must previously pay in our bank accounts the cost of each search.

4. When will I receive the result of the search?

The result will be delivered after three days, however, to submit the application, you only need to send the search receipt and a copy of the form.

5.   In my business I sell food, clothes, household appliances, cell phones and livestock, can I apply for a single Trademark to commercialize all these branches?

No, the trademark registration is governed by the principle of specialty, i.e. you must apply for the trademark for each line of business, according to the classification established in the Niza Agreement.

6. How long does it take to register a trademark?

Approximately, It takes from 8 months to one year, if there is no incidence that delays the process, this is due to the fact that within the procedure, there are time limits established in the Law that must be respected.

7.  How long does the right to a Trademark last?

A Trademark is valid for 15 years, according to the Industrial Property Law, if after this time you want to maintain the right, you must request the renewal of the same 6 months before the expiration date.

8. My trademark has already been granted; now how do I obtain the Certificate of Registration? 

In our web page, you will find a space identified as «Electronic Certificate», enter and enter your registration number, print the certificate if you require the certified signature of the same by the Registrar of Industrial Property, consign the original certificate, with two copies in our offices.

9.  I have my registered Trademark and other people are using it without my authorization, can SAPI do anything to prevent it?

No, Intellectual Property rights are of a private nature, only the holder of the right has the right to go to the competent bodies to defend his rights.