Thursday, 1 May 2014

Venezuela: new rules assist TM oppositions and transfers of IP applications

From our friends at Bentata comes news of three recently-published Official Notices from the Venezuelan Patent and Trade Mark Office's Bulletin No. 546 of 9 April:
Trade mark oppositions 

Trade mark oppositions may be filed on the basis of (i) non-registrability under Articles 33, 34 and 35 of the current local IP law, (ii) absolute non-registrability on public policy grounds or (iii) third parties rights based on prior applications and registrations.

Opposition writs that do not comply with such legal requirements will be declared inadmissible in the Official Bulletin though third parties that file oppositions may appeal within a set time. If not, the prosecution of the application will continue as provided by law.

Bentata comment that this Notice will help to decrease the number of oppositions that have recently been filed by third parties, acting in bad faith, in an attempt to delay grant.

Spanish sworn translation of documents

Patent and trade mark applicants are reminded that all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be accepted.

Change of owner regarding pending applications

As of 9 April 2014 it is again possible (as it was under the former Andean legislation) to file a change of owner (applicant) for a pending patent or trade mark application. In case of an assignment, it will be specifically required that the assignor assigns the priority filing rights of the pending applications involved in the transfer. In recent times, change of ownership has been prohibited, leading to the delay of innumerable pending applications in view of the discrepancy the PTO had in their records.

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