Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

As part of the Central America-Dominican Republic Free Trade Agreement (CAFTA-DR) agreements, the Honduran customs office may block the importation of products bearing infringing trademarks into the country. However, in practice, the IP special unit of the Honduran customs office will ask the TM office to notify the attorneys of the registered owners of a possible infringement and this will give the said owners a window of 48 to 72 hours to initiate an action before the IP unit of the attorney general’s office to work with the said office and obtain the seizure of the goods bearing the infringing marks before they are released in the Honduran market.

The customs office also allows for some firms that handle a large number of cases to provide them with lists of relevant registered trademarks, in order to receive forewarning when an importation petition is filed or when the merchandise arrives at the port of entry. This, however, is not mandatory and does not have a clear-cut procedure.

With regard to dilutive use of a mark, the owner of a registration may request from the authorities a prevention of the use of a registered trademark in a way that may dilute its distinctiveness. The authorities will substantiate this action as an ordinary declarative action, request from the affected party proof of its allegations and claims and issue an administrative order prohibiting the dilutive use of a mark when appropriate.

Procedural format and timing

What is the format of the infringement proceeding?

Several administrative sanctions can be imposed on a party found to have infringed a trademark. These range from fines to criminal sanctions in the event of recidivism. The affected party may also bring an additional claim for damages and lost profit, in a civil law action. Damages and lost profit start accruing from the date on which the existence of an infringement can be proven. Honduran law tends to provide fair compensation to the affected party.

The right to file a civil suit for infringement of trademark rights will expire after two years counted from the moment in which the trademark owner had knowledge of the infringement or five years counted from the last time the infringement took place, applying the term that expires first.

Infringement actions may also be filed before the TM office and the infringers, without prejudice to civil and criminal sanctions, may face fines of up to 20 times the minimum wage (around US$10,000) when they engage in any of the following acts:

  • use of a servile copy or fraudulent imitation of a registered mark to identify products or services covered by the same;
  • perform acts prohibited by the Honduran Commercial Code in respect of trade names, slogans or emblems. These acts are servile copies or imitations of the said signs;
  • use of a false geographical indication susceptible of deceiving the public about the source of any product or service or about the identity of the producer, manufacturer or trader of the product or service; or
  • use of a false or deceiving appellation of origin or an imitation of a appellation of origin, even when the true origin of the product is indicated, an incorrect translation of the appellation of origin is used or the appellation of origin is used together with expressions such as ‘type’, ‘gender’, ‘way’, ‘imitation’ or other analogous qualifications.

The Honduran attorney general’s office has created an IP special unit and the registered owner of a trademark or its duly recorded licensee may file a criminal complaint before this office requesting the seizure (both at the market place and at the customs authority) of goods bearing infringing marks. Infringement procedures before this unit have an expedited procedure and the complainant must only prove to own a Honduran valid trademark registration and also provide clear and precise indications as to the nature of the infringement that it wants to ban.

Burden of proof

What is the burden of proof to establish infringement or dilution?

In Honduras, the general principle is that the parties must prove all allegations. With that understanding, it is the plaintiff who must prove infringement or dilution of its trademark rights. There is a reversal of the burden of proof for the cancellation of a trademark registration on the grounds of non-use. In these cases, the owner of the attacked registration must prove use, justified reasons for non-use as outlined in the law or payment of rehabilitation tax.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The registered owner of a trademark registration or duly registered licensee (unless expressly forbidden from doing so in the licence agreement) has the right to prosecute a suit against a third party infringing his or her rights. A distributor may not bring a suit for infringement. The trademark owner and the duly registered licensee also have the standing to bring a criminal complaint.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Honduran trademark law is territorial in principle. The infringer may act only when the infringement takes place within the country or at its borders.

Customs recordation is not possible in Honduras. However, note that we can submit a memo to the Special Prosecutor's Office of Industrial Property and Informatics Security, providing them with particulars of the trademarks duly registered by one of our clients in our country. The said prosecutor will then send a copy of the memo to the Honduran customs authority asking them to duly notify them of any importation of goods under these marks. When and if they are informed of such an importation, the public prosecutor’s office will then inform us for our pertinent action.

Note that the public prosecutor's office does not guarantee the effectiveness of these procedures. The most effective way of stopping these importations is through the appointment of an exclusive distributor for products under these brands.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery and disclosure techniques are seldom used in trial as their effectiveness is not normally recognised by the courts and the administrative offices.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Infringement actions before the TM office have a typical time frame of six to 12 months before first instance resolution is issued.

Civil actions before the courts have a typical time frame of 15 to 20 months before a first-instance resolution is issued.

Criminal complaints before the criminal courts have a time frame of around 15 to 20 months before a first-instance resolution is issued.

Complaints before the IP division of the attorney general’s office have a time frame of one to two weeks before the preliminary injunction is issued.

All decisions, including the preliminary injunctions, rendered by the above-mentioned administrative offices and courts are subject to appeal before the higher administrative office and Court of Appeals respectively. The injunctions issued by the IP division are subject to an appeal to be resolved by the attorney general’s office within two weeks.

Limitation period

What is the limitation period for filing an infringement action?

An infraction action may be filed within the next nine years from the date the client was informed of said infraction according to our current Penal Code.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Around US$6,000 to US$12,000. Generally speaking, the plaintiff may recover costs, although this is not common.

Appeals

What avenues of appeal are available?

The affected party may appeal all resolutions before the Higher and Highest Administrative Office. The decisions rendered by the highest administrative office puts an end to administrative procedures.

In judicial cases the affected party may appeal before the Court of Appeals and before the Honduran Supreme Court. Decisions rendered by the Supreme Court put an end to judiciary proceedings.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

An accused infringer may defend itself by proving not to have committed the infringement, the lack of right to sue by the affected party and also based on formalities and technicalities that can be used as dilatory pleas as part of the defence from the alleged infringer. The alleged infringer may also counterclaim the nullity of the allegedly infringed trademark under formal and substantial considerations.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The affected party may also request one or more of the following remedies in the event of infringement of IP rights:

  1. the cessation of the acts that infringe the rights;
  2. the indemnification from the damages suffered. These damages must be proven by the party alleging them;
  3. seizure of the objects resulting from the infraction, and of the means that had predominantly served to commit the infraction;
  4. the prohibition of the import or export of the products, materials or means referred to in 3;
  5. the withdrawal of the objects or means referred to in 3 from the commercial circuits, or their destruction, when appropriate;
  6. the attribution in property of the objects or means referred to in 3. In this case the value of the assets will be imputed to the amount of the damages; and
  7. the necessary measures to avoid the continuation or repetition of the infraction, including the destruction of the seized means compliant with 3.

A bond will be required from the plaintiff prior to issuing the provisional injunctions needed to carry out any of the measures listed above. This bond has the goal to warrant damages to the defendant.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Alternative dispute resolution methods are available in Honduras, but they are not commonly used. This may change in the future since the enacted revisions and additions to the Investment Law of July 2011 require the mandatory use of alternative dispute resolution methods before filing suits on intellectual property matters. This provision does not affect complaints before the special IP unit of the attorney general’s office.