DEVELOPMENTS IN VENEZUELA IN IP MATTERSPosted on 21/01/2021 by balder
In 2020, several official notices were issued by the VE PTO, as duly informed on February 07th, 2020 the Venezuelan PTO published an official notice notifying among other changes that the latest version of the Nice Classification was to be fully in force as of February 10th, 2020.
Moreover, on November 9th, 2020, an Official Notice was published by the VE PTO, announcing the direct application in Venezuela of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), contained in Annex 1 of the Agreement establishing the World Organization for Commerce (WTO), as well as other international agreements on the matter to which the TRIPS refer. This announcement is of great importance since it is a form of recognition of the inappropriate interpretation and application in which the Trademark and Patent Office incurred since its withdrawal from the Andean Community which materialized in 2008, especially for the benefit of trademark applicants, inventors, and authors, attempting to correct the deficiencies that Venezuela has had in terms of enforcement over recent years.
Among the most relevant aspects resulting from this resolution, we may mention that patentability of inventions whose claims refer to pharmaceutical species, food and beverages are once again possible, grace period for trademark renewals is in effect again and ratification of the protection of geographical indications, within the scope of what is developed by TRIPS is recognized.
On December 18th, 2020 a new Official Notice was published by the VE PTO setting forth the requirements and costs to prosecute the geographical indications petitions. The main requirements to request protection of a geographical indication are a) name and domicile of the public or private entity who files the petition; b) the geographical indication which will be subject to recognition; c) description of the product to be identified by the geographical indication; d) description of the quality, reputation or another specific characteristic of the product to be identified by the geographical indication; e) description of the process or method of production indicating the place where all the stages are executed to obtain the final product; f) Draft of regulations of use of the geographical indication and g) Proposal of a regulatory Council to verify and certify that products identified with the geographical indication comply with the quality standards, reputation or characteristics linked to the same. According to the official notice, the VE TMO will analyze the petitions applying analogously the trademark procedures taking into account that TRIPS does not set forth a specific procedure for recognition of geographical indications.
Through these decisions, the mentioned office seems to expressly clarify that all substantive matters, including IP enforcement, may be based directly on any standard contained in the international treaties related to intellectual property rights validly ratified by Venezuela, including TRIPS and the Paris Convention, which assure all WTO member states a minimum level of protection of intellectual property rights in compliance with international standards.
We are monitoring the further implementation of these legal changes very closely and will keep you duly posted as further events arise.