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?
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 Concepts
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by 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 trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. 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 services from others 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 alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- 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.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights 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?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use 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 or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered 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 best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible 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. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
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 whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do 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. The other company may object to you using the trademark and legally prohibit you from doing so.
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 seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing 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 trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.