1 June 2014Jurisdiction reportsMaria Nebreda

Business brief 2014: Venezuela

The following should serve as a good guide for those doing business in this jurisdiction.

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

In terms of patentable issues in Venezuela, the subject matter must reach the principle of novelty. Nevertheless, there are some exceptions to this requirement, such as inventions, improvements or industrial models or designs that having been patented abroad, have not been divulged, patented or executed in Venezuela, and are not in the public domain. Another requirement for inventions is the inventive step.

To obtain protection over an invention, our Industrial Property Law provides that an application should be submitted before the Venezuelan Patent and Trademark Office (PTO), within 12 months of the foreign application filing date.

What are the costs of registering a patent, and what are the costs of defending it?

The average cost of registering a patent is approximately $3,000. The costs at trial level depend on whether there are any injunctions; if so, the petitioner can expect regular trial costs of between $25,000 and $30,000, increasing by approximately $12,500 for an injunction proceeding.

Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?

Since 2006, Venezuela is not a member of the Andean Community. The withdrawal has brought several and important changes regarding the IP matters.

The petition of interpretation filed before the Constitutional Chamber of the Supreme Court aimed at clarifying which law should be applied in terms of IP matters was finally resolved: Decision 486 of the Andean Community (with a common IP regime) is no longer valid in Venezuela.  The only applicable law that regulates IP matters in the country is the Industrial Property Law of 1955, which was the applicable law prior to Decision 486 of the Andean Community.

This law implemented several changes:

  1. Patent protection has a time range of 10 years, as from the registration date;
  2. It excludes some matters subject to patentability;
  3. There is no patentability review by the examiner, although in practice the patent examiners are continuing doing substantive examinations and have adapted the procedures to the 1955 Law. Instead of issuing office actions they are proceeding to deny the patents, giving the patent holder the right to appeal the denial before the PTO;
  4. The applicant has the burden to publish in a local newspaper three times with 10 days’ difference between each publication;
  5. Compulsory licences are not stipulated; and
  6. Absolute novelty is required.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

The uncertainty regarding the application of the Venezuelan Industrial Property Law 1955 is one of the most important threats to patent owners.

To guarantee its rights, the patent owner has a wide array of injunctions during the course of a judicial proceeding. The judge (at his own discretion) and provided that the plaintiff can support its right and show irreparable harm, may order injunctions.

Trademarks

How do you register or secure trademark rights and what protection does it grant?

“The uncertainty regarding the application of the Venezuelan Industrial Property Law 1955 is one of the most important threats to patent owners.”

In order to obtain protection in Venezuela on a trademark an application must be submitted before the Venezuelan PTO. Said protection is granted on a first-to-file basis. The granting gives the owner exclusive rights over the trademarks for a period of 15 years, due to the reinstatement of 1955 IP Law.

What are the costs of registering a trademark, and what are the costs of defending it?

The normal cost of obtaining a trademark can range from $1,400 to $2,000. The costs at trial level depend on whether there are any injunctions; if so, the petitioner may expect regular trial costs of between $25,000 and $30,000, increasing by approximately $12,500 for an injunction proceeding.

What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?

The main threat to trademark owners is the infringement of trademarks and trade dress.

Keeping a close eye on the market through the distribution channels, and by employing a local investigator to monitor would be the best strategy to deal with infringements.

Working with public authorities and enforcement agencies is important and more efficient when an infringement is committed.

What are the most common mistakes that trademark owners make?

It is fundamental to establish a trademark plan coordinated with the company’s business, marketing and growth plans. These plans must be studied and analysed with the legal, marketing and advertising departments of the company in order to avoid confusion and to pursue the procedure in a less expensive way. The emphasis should be on effective and preventive planning.

Have there been any changes to the trademark law(s) in the last 12 months?

There have not been any changes to the trademark law(s) in the last 12 months.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Just as in other Latin American countries, Venezuela is currently experiencing copyright infringements especially in the areas of music and the film industry. These cases of infringement should be handled through international organisations that represent musicians and film makers.

How should people ensure they are protected against copyright infringement?

Even when works are protected by the mere fact of their creation, it is advisable that copyright holders register their creations at the PTO.

What is the best way to deal with infringement, and what are the costs associated with it?

Keeping a close eye on the market by employing a local investigator to monitor it would constitute the most suitable strategy to deal with copyright infringements.

Have there been any changes to the copyright law(s) in the last 12 months?

No, there have not been any changes to the copyright law in the last 12 months.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Counterfeiting is definitely one of the biggest problems relating to IP rights. In Venezuela, online piracy and counterfeiting are both equally substantial problems.

Unfortunately, the sale of counterfeited DVDs and CDs is a normal and common practice in the Venezuelan market.

What industries are particularly at threat?

The music, film and fashion industries are the most threatened.

What are the best strategies for dealing with the problem?

Having a local counsel that provides information and legal advice regarding the preventive measures that should be taken is the most effective and accurate strategy to defend IP rights.

General

Are there any legislative changes to the IP regime that would make life easier for businesses?

Venezuela’s legislative body has announced a plan to devise a new IP law. This creation will help to erase the uncertainty existing today and to fill the legal gaps that should be urgently covered. It is expected that the new law will follow the principles of international treaties, aimed at the betterment of the IP legal situation in the country. Taking into account the legal precedent as played out in the Supreme Court of Justice, it is imperative that a major overhaul of the current IP Act is carried out, which should be easily adapted to the current legislation defined in Mercosur (a prominent Latin-American trade block that Venezuela has recently joined).

Maria Nebreda is a partner at Hoet Peláez Castillo & Duque. She can be contacted at:  marianebreda@hpcd.com

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