眾律國際法律事務所

Introduction:

Language: Spanish

Capital: Asuncion

Area: 406,752 km2

Population: 6,783,272 (2015)

Currency: Guarani (PYG)

Religion: Roman Catholicism (90%), evangelical Protestant( 6%)

Geographical situation: is a landlocked country in central South America, bordered by Argentina to the south and southwest, Brazil to the east and northeast, and Bolivia to the northwest.

International treaty membership:

Paris Convention for the Protection of Industrial Property (May 28, 1994)

Convention Establishing the World Intellectual Property Organization (June 20, 1987)

Legislation:        

Law No. 1.294/1998 on Trademarks

Government Institutions:

National Directorate of Intellectual Property

Type of trademark:

A registrable trademark may consist of one or more words, themes, emblems, monograms, stamps, vignettes, embossments; names, fantasy word, letters and numbers with different forms or combinations; combinations and colour display, labels, containers and wrapping.

Trademarks may also consist of the shape, presentation or conditioning of products or their containers or wrappings, or of the means or places of sale of the products or corresponding services.

The following trademark types are registrable: trade marks for goods and services, collective marks and certification marks.

Ground for refusal :

The following may not be registered as trademarks:

(a) signs or distinguishing devices that are contrary to the law, public order, morality or proper behavior and which may mislead or give rise to confusion as to the origin, method of manufacture, characteristics or suitability and purpose of the products or services to which they refer;

(b) armorial bearings, distinguishing marks, emblems, names, whose use is reserved to the State, other legal persons under public law or international organizations, unless they themselves apply for the mark;

(c) the usual shape of a product or its container, the shape required for the product or service to which they refer or which give the product or service a functional or technical advantage;

(d) a single color;

(e) marks which consist solely of a sign that is the generic name or designation of the product or service to which they refer or which may be used in trade to identify or describe some characteristic of the product or service;

(f) signs identical or similar to a registered mark or a mark already applied for by a third party for the same products or services, or for other products or services if they might cause confusion or be associated with this mark;

(g) signs which constitute a reproduction, imitation, translation, transliteration or transcription in full or in part of an identical or similar distinctive sign, well known to the public in the corresponding sector and belonging to a third party, irrespective of the products or services to which the sign is applied, if its use and registration are liable to cause confusion or a risk of association with this third party or mean taking advantage of the reputation of the sign or weakening its distinctive character, irrespective of the manner or way in which the sign was made known;

(h) signs which infringe the copyright or industrial property right of a third party;

(i) signs which have been applied for or registered by persons who have no legitimate interest or who knew or should have known that the sign belonged to a third party;

(j) names, nicknames, pseudonyms or photographs that may bear a relation to living persons, without their consent, or deceased persons, without the consent of their heirs down to the fourth degree of consanguinity, or signs which affect a third person's personal rights, unless with his consent;

(k) signs which consist of or contain a geographical indication.

Application content:

For the purposes of registration, applications shall be in writing and shall include the following:

(a) name, domicile and signature of the applicant and of his agent or attorney, where applicable;

(b) name of the mark or its reproduction in the case of figurative, mixed or threedimensional marks; for other signs, a graphic representation thereof;

(c) specification of the products or services that are to be distinguished by the mark, with an indication of their class;

and (d) a power of attorney or a general or special power if the applicant does not appear in person. The applicant or his attorney shall elect domicile in the capital of the Republic of Paraguay. Legal persons shall be represented by an attorney, who shall be an approved industrial property agent.

In the public interest, the Industrial Property Directorate may refuse to register an identical mark or a mark that is very similar to another mark registered for the same product or service, notifying the applicant accordingly, even if the owner of the registered mark gives his consent. Where total rejection is not justified, the registration applied for may be granted for only some of the products or services indicated in the application or may be restricted to certain products or services.

Registration of marks shall only be granted for a single class of the official nomenclature. Registration of marks in several classes shall require a separate application for each class.

Application process:

Applications shall be published immediately after filing and the formal examination. The substantive examination shall be conducted, on the base of ground for refusal, after expiry of the period allowed for opposition. The processing time from first filing to registration or first office action is approx. 8 months.

The opposition period is 60 working days from the next day of the last publication of the trademark application. An opposition can be based on a foreign trademark registration.

Refusal:

The protection of the mark shall be refused upon a founded opposition, or if the mark is subject to legal ground for refusal.

Rights of exploitation and related delay:

Registration of marks pursuant to this Law shall give their owners the right to exclusive use of the mark and the right to take the necessary action and measures before the competent judicial authorities against any person who infringes their rights. It shall also grant the right to oppose the registration or use of any other sign which may directly or indirectly cause confusion or any association between the products or services, irrespective of the class in which they appear, provided that they are related to each other.

Registration of marks shall be valid for 10 years and may be extended indefinitely for further 10-year periods, provided that their renewal is requested within the year preceding their expiry and subject to completion of the same formalities as those required for registration. Renewal may be requested within a grace period of six months after expiry, subject to payment of the surcharge specified, in addition to the corresponding renewal fee.

Transfer and conditions:

Rights in registered marks or marks that are the subject of registration applications may be assigned or transferred in respect of all or some of the products or services for which the application has been filed or the mark registered.

Assignment or transfer shall be null and void if its purpose or effect is to mislead the public, particularly as to the nature, source, method of manufacture, characteristics or suitability for the purpose of the products or services to which the mark applies.

Assignment or transfer of marks shall have legal effect against third parties as of its registration with the Industrial Property Directorate. Applications shall be published in accordance with the Regulations, following which the mark shall be registered subject to payment of the corresponding taxes and fees. Certificates shall be issued at the request of the interested party.

Certification:

The Industrial Property Directorate shall issue a certificate of registration of the mark containing the relevant information, as well as the information required by the regulatory provisions.

Withdrawal and cancellation:

The right to ownership of a mark shall be exhausted in the following cases:

(a) if the owner renounces the right;

(b) upon expiry of the term if registration is not renewed; and

(c) as a result of a legal declaration of nullity or cancellation due to failure to use the registration.

Use of marks shall be compulsory. At the request of the party concerned, registration of a mark may be cancelled in the following cases:

(a) where its use has not commenced within five years immediately following its registration;

(b) where its use has been suspended for more than five consecutive years;

Customs protection:

Owners of registered marks who have substantiated reasons for assuming that the import or export of products infringing their rights is imminent may request the customs authorities to suspend the import or export at the time of shipment. The conditions and guarantees applicable to precautionary measures shall also apply to such requests and orders.

Persons requesting the imposition of measures at the border shall furnish the customs authorities with the information necessary and a sufficiently clear description of the goods to allow them to be recognized.

After the applicable conditions and guarantees have been met, the customs authorities shall order or reject suspension and shall notify the applicant accordingly. The decision by the customs authorities shall not constitute the final judgement.

After suspension has been imposed, the customs authorities shall immediately notify the importer or exporter of the goods and the person requesting the measure accordingly.

If, within 10 working days computed from the date on which he was notified of the suspension, the person requesting the measure has not informed the customs authorities that legal proceedings for infringement have been initiated or that a judge has ordered precautionary measures to extend the suspension, the suspension shall be lifted and the goods released.

Products bearing false marks which have been seized by the customs authorities shall not be re-exported in the same state nor made subject to a different customs procedure.

The measures required to prevent the continuation or repetition of the infringement, including the destruction of the products, materials or devices used for this purpose, and a minimum fine of 500 to 2,000 days’ wages to be paid to the Industrial Property Directorate.

Sources:

Wipo.int: Law No. 1.294/1998 on Trademarks

Vincent Lagier