Recent IP developments in Venezuela

Since Venezuela withdrew from the Andean Community in 2006, the applicable law has been the Industrial Property Law 1955, which is outdated. Nevertheless, Venezuela is a signatory to various international agreements, such as the Paris Convention for the Protection of Industrial Property, the Hague Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Convention Establishing the World Intellectual Property Organisation.

The Venezuelan Association of Industrial Property Agents has requested the new National Assembly to review and pass a new industrial property law, in accordance with international legal standards. The association’s request was duly received by the National Assembly, and the new law is expected to strengthen the Venezuelan IP system while establishing clear rules for the promotion and protection of industrial property rights.

Increase in tributary unit

As recently published in the Official Gazette, the government has increased the official tributary unit by 18%. The new tributary unit was issued as a result of increases in the official fees for:

• trademark and patent applications;
• trademark and patent grants;
• trademark renewals;
• changes of ownership; and
• licences.

New exchange rate

In 2015 the Venezuelan patent and trademark office (SAPI) issued an official notice announcing an increase in tax rates for IP rights in accordance with the Stamp Tax Law. The official notice included a requirement for all foreign applicants to pay these taxes in US dollars by way of bank transfer from a foreign bank account.

The government has now established a new official currency exchange rate, as published in Official Gazette 40.865 (March 9 2016). As a result of the new exchange rate, the official fees for the following were initially reduced:

• trademark and patent grants;
• trademark renewals;
• changes of ownership;
• licences; and
• patent first annuity payments.

In accordance with Currency Control Exchange Agreement 35, the official exchange rate applicable until March 14 2016 was Bs6.30 per US dollar. As of March 14 2016, the official exchange rate is Bs10 per US dollar.

However, as mentioned above, the fees to be paid by Venezuelan citizens have since increased by 18%.

Nonetheless, the president stated in a recent news conference that he may review and modify the official exchange rate at any time. Therefore, it is recommended to keep in touch with professionals in this area.

Legal actions against Stamp Tax Law

The Venezuelan Association of Industrial Property Agents has filed a nullity petition against the Stamp Tax Law before the Constitutional Chamber of the Supreme Court of Justice, based on constitutional grounds and breach of numerous international treaties. The chamber has admitted the petition and notifications to other parties are pending; therefore, the course of the action will remain on hold until the attorney general has been notified.

The association has also filed a request for clarification to the offices of the president, vice president and minister of commerce, as well as SAPI, in order to ascertain the legal basis and parameters used to establish such taxes. None of these government offices has replied to the request as yet.

Patent prosecution

In the most recent IP Gazette (563, June 7 2016) SAPI finally granted 32 design patents, including applications that had been pending for more than 15 years. Applicants and practitioners have welcomed the move as a step forward in reducing the backlog that it has faced for the past decade.

Although only 32 design patents were granted, practitioners expect further resolutions granting design patents to be published in future editions of the IP Gazette.

The Industrial Property Act establishes two types of protection for design patents:

• industrial drawings relating to dispositions or combinations of lines and colours intended to give an industrial object a distinctive appearance; and
• industrial models relating to reproducible plastic forms (with or without colours), objects or industrial, commercial or domestic utensils that have a distinctive shape or configuration. Containers are included among the goods that can be protected by industrial models.

Applicants are advised to consider the following prosecution best practices:

• establishing an integrated IP protection strategy that takes into account the particular aspects of the Industrial Property Act and its interpretation by SAPI;
• seeking dual trademark and design patent protection for three-dimensional signs, where possible; and
• fully relying on the benefits provided by the Industrial Property Act to obtain maximum IP protection in Venezuela.

Improvements at SAPI

The first phase of procedural improvements at SAPI included the introduction of online trademark applications through the SAPI website.

The registrar has also announced the following developments:

• Newspaper publication can now be effected through SAPI’s e-newspaper. However, in accordance with an official notice, publication may continue to be effected in the two newspapers already approved by SAPI. Most agents are now evaluating the online publication service in order to determine its efficiency in relation to costs. Notably, SAPI officials have held meetings with agents to solicit their observations in order to avoid publication errors. Only one publication is required for trademarks, whereas three are required for patents (with a 10-day interval).
• Electronic registration certificates bearing the registrar’s electronic signature will be issued. The electronic signature has already been filed and is pending approval by the competent authorities.
• SAPI intends to move to a new, modern office in another municipality.
• The president of the Venezuelan Industrial Property Agents Association met with SAPI and offered support in updating the status of pending files and refused applications that are pending reconsideration. This is an important development, demonstrating that after many years, cooperation between both entities is beginning to flourish.

These changes will put SAPI on a new technological footing and improve the efficiency of its procedures.

Hoet Pelaez Castillo & Duque

Torre IASA, Piso 3

Av Eugenio Mendoza, Plaza La Castellana

Caracas 1060

Venezuela

Tel +58 212 201 8572

Fax +58 212 263 7744

Web www.hpcd.com

Hugo Bazzani-Aronne
Partner
[email protected]

Hugo Bazzani-Aronne joined Hoet Pelaez Castillo & Duque in 2001. He is partner and general manager, focusing on patents and responsible for International Organisation for Standardisation quality certification.

Mr Bazzani-Aronne has a degree in industrial engineering from the Universidad Católica Andrés Bello and a master’s in marketing from the Universidad Metropolitana, both in Caracas. He additionally studied simulation systems at Harvard University and undertook studies at the Franklin Pierce Centre for Intellectual Property.

He has represented the firm at several conferences and been recognised as an IP Star in Managing IP’s World IP Handbook 2014, 2015 and 2016, and as a Rising Star in Legal Media Group’s Expert Guides 2015 and 2016. He also collaborates with the editorial board of The Patent Lawyer.