On May 7 1995 El Salvador joined the World Trade Organization (WTO) and thereby undertook to respect the protection standards established by the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement, the main purpose of which is to create an effective international system for the protection of IP rights.

The TRIPS agreement requires every WTO member to abide by the Paris and Berne Conventions, and sets minimum standards for the protection of IP rights.

In order to comply with this agreement it was necessary to amend the former trademark law, the Central American Convention for the Protection of Industrial Property. The signatories to this convention were El Salvador, Guatemala, Costa Rica and Nicaragua.

These countries duly gave formal notice of the termination of the convention and enacted new national laws in accordance with the TRIPS agreement.

In El Salvador, the new Trademark Law was approved by Congress on June 7 2002, and took effect on July 17 2002.

The most important changes in the law are as follows:

  • The terms 'famous trademark' and 'notorious trademark' are included for the first time.

  • The former law allowed oppositions only against trademark applications in the same class. Now, oppositions may be filed against similar or identical trademarks for similar goods in different international classes.

  • Trademark applications for protected plant varieties are prohibited if the trademark will be used for products or services related to that plant variety.

  • The coexistence of similar trademarks in the same class is allowed if the trademark owners have entered into a written agreement to this effect. However, such an agreement will not be accepted if the registrar considers that such coexistence may cause confusion among consumers.

  • The procedures for trademark renewals, assignments and changes of name and address have been shortened, as there is no longer a requirement that the application be published in the Official Gazette. For renewals of trademarks registered under the former law, this new regulation will apply until the trademark is renewed under the new law.

  • The registration of assignments of pending applications is allowed. Previously, only assignments of registered trademarks could be registered.

  • The property rights to a trademark are acquired through registration, and not through use.

  • The property rights to a trade name are acquired through its first commercial use, and only in relation to the commercial activity or nature of the company. However, registration of the trade name is always recommended, as it establishes proof of these rights in the case of a judicial action.

  • An official fee of $30 must be paid to file a trademark opposition.

  • An exclusive licensee is entitled to prevent third parties from importing for commercial purposes legitimate products bearing the licensed trademark.

  • The owner of a registered trademark may stop the unauthorized sale of products bearing that mark which are intended for export.

  • Customs officials will protect the rights of registered trademark owners by preventing the import or export of products that infringe these rights.

  • All official fees have been increased by between 50% and 100%.

  • The registration of collective marks is now allowed.

  • A six-month grace period is allowed for the renewal of trademark registrations, beginning from the date of expiry. Previously this right was claimed under the Paris Convention.

For further information on this topic please contact Morena Zavaleta at FA Arias & Muñoz by telephone (+503 257 0900) or by fax (+503 257 0901) or by email ([email protected]).