Venezuela: A long way to go
In Venezuela, the covid-19 pandemic represented an event that triggered the need for the implementation of several unexpected solutions directed to maintain and facilitate access to the Government Administration while keeping all safety and sanitary measures in place to prevent the spread of the virus in the population.
In 2020, the Venezuelan Patent and Trademarks Office (VPTO) designed a procedure to file documents, writs, and applications online without the need to physically attend the premises but allowing to secure filing and priority dates. Parties would have to confirm every submission done online by providing hard copies afterwards. Initially, the platform went through scrutiny and criticism due to the system’s inability to certify authenticity and provide a proper time stamp.
Now in 2022, the filing platform has received awaited add-ons and features to ease most operations done before the Office, which turned out to be especially helpful for patent practitioners dealing with last minute instructions to secure a valid filing date on a very short timeline. The VPTO has made an important effort to improve this filing mechanism, which is a first step towards modernisation, but there is still work to be done and necessary rules to be discussed to become the basis for an appropriate mechanism in line with international standards.
Formalities
Traditionally, the VPTO has only allowed, and recognised proof of representation exercised by local practitioners by showing a hardcopy of a Power of Attorney executed before a Notary Public and with an Apostille or Consular Legalization.
The current position of our local authority to cling to this rather tedious interpretation has presented difficulties to foreign applicants and slowed down interest when evaluating whether to prosecute rights in our jurisdiction.
On November 03, 2022, the Venezuelan Supreme Court of Justice through its Political-Administrative Chamber handed down decision No. 00661 solving the litigation between Complejo Siderurgico del Lago (Cosila), SA V Instituto Nacional de Capacitacion Y Educacion Socialista (Inces), where the court expressed that representation of an interested party before any Administrative Agency-which includes the VPTO-can also be permitted by showing a simple letter of authorisation, this finding support in our National Law for the Simplification of Administrative Procedures of 2008.
The decision represents an excellent development for local practice, but the VPTO has not extended any express declaration on this specific binding position by the court. In my opinion, a change of position will likely be made once a court action is filed and decided in line with this precedent at any opportunity that an examiner rejects a Power of Attorney formality presented as a simple authorisation letter. This recognition does not apply to representation for litigation before the courts.
Trademarks
Our current national legislation does not include an express statutory provision defining notoriety status for trademarks, but historically it has been recognised through judicial precedents in the early 90s (‘Nintendo’) that the courts gave guidance over the possibility of attributing a sui generis well-known status for certain trademarks based on the relative grounds for refusal contained in Article 33, 12.
As has been widely noted, Venezuela ceased to be part of the Andean Community of Nations back in 2006 and two years later, the community regulations over industrial property aspects – Decision 486- was no longer attributed as applicable law by the courts and the VPTO.
Since then, no express nor relevant decision involving well-known status for trademarks had issued, even though case law has previously affirmed various positions on the matter in connection to our current legislative framework.
”It is important to say that appeals before the VPTO will encounter a long backlog until a decision is made.”
Blue Cross Blue Shield Association was successful in an opposition initiated against an application covering services in class 36 for ‘Cruz Azul Premium’, which translates as ‘Blue Cross Premium’ into English.
The VPTO based its decision on article 6 bis of the Paris Convention also declaring that there is no need to show well-known status locally when evidence of use, registration and status originating from any other member country of the Paris Convention is produced by the promoting party.
Guidelines covering the adequate documents and facts to be presented for reaching the evidentiary standard that allows for a judicial or administrative decision finding notoriety status for a trademark should be based on the Andean Community Court of Justice’s numerous preliminary interpretations associated with this topic.
Colour claim practice for the purpose of trademark and industrial design prosecution drastically changed when VPTO started issuing a new position requiring applicants to claim specific colour representation as filed and in line to the sample provided in the original application. This means that applicants can no longer sustain that the scope of trademark rights to be granted can cover “any” colour representation over the graphical features as provided, and in turn the “What you see is what you get” approach will be held as applicable by the office and eventually the courts.
In relation to this, it is the opinion of part of the local practice, that the common interpretation which considers that the scope of rights when using Nice Classification “class headings” as products/services identification in a trademark application or registration will cover all the products/services included in the claimed class, should be ignored, and a “What you claim is what you get” approach be considered applicable instead, facilitating examination over likelihood of confusion and promoting a specific product/service list drafting inline to the applicant’s real interest and use among others advantages. This position was unfortunately not evaluated during 2022 but it seems there is a growing need for change.
The transition from the trademark rights granting term of 10 years as provided by the Andean Community regulation until 2008 and to the term of 15 years according to our National Legislation now fully in force, meant as a consequence that for almost five years (2018 to 2022) the trademark renewal window was closed since there were no due dates falling within that term, but 2022 will be the last year of renewal inactivity.
The VPTO should have issued, during 2022, a statement on how trademark renewal payments would be treated when reclassification was mandatory during the prior renewal payment period (to adapt, then, International Classification into National Classification), and promised divisional registrations should have issued and identified -when applicable. Yet as of today, no official resolution has been made.
Now, VPTO has extended instructions and guidelines where international classification according to the Nice Convention will be the only applicable goods and service classification; at the time of upcoming renewals, when trademark owners need to reclassify yet again one more time, will the VPTO oblige trademark owners to pay renewal fees for each divisional registration resulting from the prior reclassification process or will it allow one single renewal fee payment to unify all divisional promised registrations which never were officially dealt with, back into their original granted registration?
Trademark owners should be prepared to ask that question and receive a timely official answer when evaluating their maintenance timeline in Venezuela.
Patents and Designs
During 2022, the VPTO has been consistent with its 2020 statement which contained an express recognition that the provisions of TRIPS agreement and the Paris Convention are directly applicable and prevail over national legislation. This shows in an improved ratio of patent and design application examinations with positive results.
Patent applications for inventions which claim subject matter that under our national legislation is considered non-patentable (pharmaceutical, chemical and food tech product claims), were granted in line to provisions contained in Article 27 of TRIPS Agreement.
The Patent Division of VPTO continues to grant patent terms for 20 years (Article 33 of TRIPS Agreement) from granting date instead of the traditional count from the filing date. This is because our national legislation sets the patent term from granting date and not from the time of a valid filing date.
Certain refusals over applications based on lack of unity (as an erroneous interpretation of what unity of invention or design means) or claiming, for example, methods of treatment as non-patentable subject matter without having support in an express statutory provision will surely be challenged before the corresponding national courts dealing with administrative contentious matters. It is important to say that appeals before the VPTO will encounter a long backlog until a decision is made.
I believe that the proper venue for appeals and challenging VPTO decisions continues to be at the judicial courts where qualified practitioners can promote and lead, with a more favourable evidence-discovery stage and faster decision-making records.
Enforcement
2022 has also meant a drastic increase in illegal trade and parallel imports that defy local regulations, due to multiple political and economical factors. The denounced activity is likely to increase both inbound, in transit, and outbound during 2023 when our geographical borders formally reopen with Colombia and Brazil.
Watching services both at VPTO and in the market is strongly recommended.
Conclusion
Finally, more favourable developments can be made if IP owners start trusting the jurisdiction by initiating judicial actions that help to shape and modernise the legal framework.
Sebastián González Yanes is a partner at Pi.360. He can be contacted at sgonzalez@pi360.legal.
