Trademark Registration
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 15 months, if no objections or oppositions arise.
If I register my trademark in Venezuela, do I have protection in other territories?
The territorial limit of registration is Venezuela.
Do I need to sign a Power of Attorney?
A power of attorney is required.
Are there any benefits from a pre-filing use of the trademark?
There are no benefits from a pre-filing use of the trademark.
Will there be problems in case I don’t use my trademark after registration?
Attack on the ground of non-use is available.
What are the types of trademark that can be registered in Venezuela?
- names
- words
- devices
- colours that are defined by a shape
- certain three-dimensional shapes
- sounds
- slogans
- trade dress/get-up
- well-known marks
- collective marks
- service marks
- certification marks
Note: There are no cases in connection with holograms, smells, motion, taste or touch. Contact Nominus.com for more information.
What are the phases of application after a trademark has been filed in Venezuela?
The order of the application process is as follows:
- Examination in respect to formalities
- Publication of the following particulars:
- mark
- application number
- application date
- name of applicant
- citizenship of applicant
- address of applicant
- state or country of incorporation of applicant
- goods/services
- representation of trademark
- specimen(s) of use
- Registration
What type of trademark is not registrable?
- marks that contradict moral standards or public order
- generic terms
- flags, names, or symbols of nations, states, regions, or of international organizations
- marks that function primarily as surnames
- marks that function primarily as geographic location names
Does Venezuela use the "Nice Classification" system?
Venezuela uses the Nice Classification System.
Does the Community Trademark apply for Venezuela?
Venezuela does not follow the Community Trade Mark registration which is currently known as the European Union Trademark registration.
Is there any possibility to claim priority in Venezuela?
Applicants may claim priority if:
- their home country is a member of the Paris Convention
- their home application was filed six months earlier than the filing date in Venezuela
- their home country is a member of the World Trade Organization
What do I need to do to satisfy the use requirement?
A trademark must be used within two years from the registration date.
The amount of use must be on a commercial scale. It must also reflect the relevant market for the specific product or service.
Use of the trademark must occur in Venezuela.
Once my trademark has been registered, for how many years will be valid?
The initial term of a registration is 15 years which is calculated from the registration date.
What will be the renewal date of my trademark?
The first renewal date of a registration is 15 years from the first registration date.
Is it legal to use my trademark even if it is not yet registered?
It is legal to use an unregistered mark for any goods or services.
Does having a registered trademark in Venezuela give me any right?
Registration is obligatory to obtain rights in a trademark. Venezuela follows the 'first to file' principle.
What is the web address of the trademark national office?
The national office is accessible online at the following URL: http://www.sapi.gob.ve.
Is there any need to use my trademark before I apply for registration?
Neither actual use nor intent to use is required for application.
Can a Trademark Application be opposed?
The following can be grounds for opposition:
- proprietary rights
- breach of copyright
- the mark is descriptive
- trade names
- the mark is not distinctive
- the mark is misleading, deceptive or disparaging
- representation of the proprietor of the mark
- registered design rights
- notorious or well-known mark
- protection of armorial bearings, flags and other State emblems
- rights in a personal name
Who can contest my trademark application?
For oppositions based on absolute grounds (lack of distinctiveness, colour per se, or the name of the currency), anyone may oppose.
For oppositions based on relative grounds, the opponent must prove legal interest.
Is it possible to cancel a registration?
The following can be grounds for cancellation:
- the mark is descriptive
- the mark is generic
- the mark is not distinctive
- the mark is functional
- the mark is misleading, disparaging, or deceptive
- protection of armorial bearings, State emblems, and flags
- the mark is inclusive of a geographical indication
- the mark is contrary to public policy or principles of morality
- the mark is used in a misleading manner
- the mark is prohibited in this jurisdiction
- application in bad faith
- the mark is unused for a continuous two-year period
- See Section VIII.A. Use Requirements
Are there any rights established by having a registered trademark?
- the exclusive right to use the registered trademark
- the right to file an opposition case against later conflicting applications
- the right to file a cancellation action against a later conflicting registration
- the right to sue third parties for infringement or for using a confusingly similar mark
- the right to license interested parties to use the trademark
- the right to apply for counterfeit goods to be seized by customs authorities
- the right to receive compensation for infringement
How long is the opposition period?
The opposition period begins on the publication date in the official bulletin.
The opposition period ends 30 working days after the publication date in the official bulletin.
Is Venezuela a member of the Madrid System?
Venezuela is not a member of either the Madrid Agreement or the Madrid Protocol.
Do I need to present periodic statement of use?
Periodic statements of use are not required.
When should I renew my trademark?
Subsequent renewals last for a period of 15 years from the renewal date.
What will be the renewal date of my trademark?
The first renewal date of a registration is 15 years from the first registration date.
Is there any documentation that should be presented when renewing a trademark?
For renewals that will be filed by the attorney of record, no documentation is required. However, a new power of attorney must be submitted if a new attorney will process the renewal.
If my trademark expires, do I have a grace period?
The grace period is 6 months.
Basic Questions
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the 'Nice International Classification'.
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Trademark Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find professional help. Our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using any online trademark search tool. If not, we recommend hiring a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended for many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.