By enacting Act 169 of December 16 2009, the government has adopted a more organized and comprehensive trademark regime in response to recent trends in trademark practice. The act incorporates elements of the previous local trademark statute, as well as the US Lanham Act and the Model State Trademark Act. It provides for a more flexible registration process, establishes clear provisions on the protection of marks and provides more benefits for trademark owners.

The act has established new elements that may be registered as trademarks, including:

  • product designs;
  • interior designs;
  • sounds;
  • smells; and
  • identification methods for products or services.

It also provides protection for labels and packages and famous marks.

The act provides greater protection to registered intent-to-use trademarks and requires that a statement of use be filed in the fifth year following registration. In addition, within the same year, the owner can request a one-year extension to prove use of the trademark. A trademark is now considered to have been abandoned after three years of non-use.

The act provides that secondary meaning can be obtained by proving use of the trademark in commerce for the last five years. If a party wishes to oppose the registration of a trademark, it has 30 days to do so.

The act permits an opposing party to request a 20-day extension to file an opposition. A declaration of use must be filed in the fifth or sixth year following the registration date. During the ninth or tenth year, a declaration of use must be filed, accompanied by a request to renew the trademark. The trademark registration must be renewed 10 years after the date of registration. The renewal application can be filed within six months of the expiry of the 10-year period.

The act provides that in a trademark infringement case, the plaintiff can collect up to three times the amount of damages suffered. Alternatively, the plaintiff can request statutory damages, which range from $750 to $30,000 for an infringement. If the court determines that the infringement was wilful, it can impose statutory damages of up to $150,000. If the court determines that the infringement was innocent, the statutory damages may be as little as $500. This remedy is available only to registered trademark owners.

The act expressly provides that a party which creates a false designation of origin is liable.

The act recognizes the tarnishing and blurring of famous trademarks as violations and provides for damages in such cases.

The act provides that trademark infringement exists when a party registers a domain name that is identical or confusingly similar to a trademark which has been registered by another party.

For further information on this topic please contact Eugenio J Torres-Oyola at Ferraiuoli Torres Marchand & Rovira by telephone (+78 7766 7000), fax (+78 7766 7001) or email ([email protected]).