Monday, 28 July 2014

Case pending appeal could mark U-turn regarding representation Bolivia

A recent decision of the Bolivian Patent and Trade Mark Office (Decision 165951), in first-instance opposition proceedings between the marks SMART FIT and SMART FIT, has caused something of a stir. In short, an application to register the word mark SMART FIT was opposed by the owner of an earlier SMART FIT registration. This opposition was rejected since the power of attorney given to the opponent's local agent had been issued after the opposition was filed: accordingly, the opponent had acted without representation.

The basis for this decision, characterised as a "failure to understand the spirit of the law, as well as the doctrine of representation, the nature of IP activities and past precedents" may be found in Article 67 of Bylaw 27113:
“Any person being represented that makes a request to the government ought to file the power of attorney with the request”.  
This clearly signifies that representation needs to be shown before the process is concluded, as Article 13 of Law 2341 states that “… in order for all acts carried out by the representative to be good and valid, the appointee must show a power of attorney before a resolution is passed”. However, the law does not require that acts carried out without the existence of a power of attorney cannot be subsequently held valid.

This decision is currently under appeal a the second opposition, in which the same issue is at stake, is awaiting resolution.

Source: "Case pending appeal could mark U-turn regarding representation Bolivia" written by Juan Ignacio Zapata (Bolet & Terrero, La Paz) for World Trademark Review, 20 June 2014, from which further information and commentary can be found. 

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