Registration and use

Ownership of marks

Who may apply for registration?

Any physical or juridical person (foreign or national) may apply.

Scope of trademark

What may and may not be protected and registered as a trademark?

The definition of a trademark or service mark is as follows: any visible sign able to distinguish the products or services of a business in respect of the products or services of other businesses. A mark shall consist, inter alia, in fantasy denominations, names, pseudonyms, commercial slogans, shapes, portraits, letters, figures, monograms, labels, coats of arms, cotton prints, vignettes, fringes, lines, stripes, combinations and arrangements of colours. They shall also consist in the form, presentation or conditioning of the products or their packing or wrapping, or from the means or places of expenditure of the corresponding products or services. Without prejudice of the other provisions of the law hereby and from other applicable norms, trademarks shall also consist in national or foreign geographical indications as long as they are sufficiently arbitrary and distinctive of the products or services to which they are applied, and that their use shall not be susceptible of creating confusion or creating wrong or unjustified expectations in the public about the origin, source, qualities or characteristics of the products or services to which the marks are applied.

Unregistered trademarks

Can trademark rights be established without registration?

No. The general provision states that the right to the exclusive use of a trademark is acquired through its registration at the Honduran Trademarks Office (TM office). If two or more parties simultaneously request the registration of a trademark for the same products or services, the registration will be granted to the party who proves it has continuously used the mark in Honduras for a longer period of time, unless the application refers to a mark considered to be well known and has been adopted and used in bad faith. A trademark can also be rejected (although this seldom happens) by the examiners of the TM office when it is identical or confusingly similar to a trademark not registered but amply used by a third party who would have a greater claim to obtain the registration, as long as the mark covers the same products or services, or for products or services different but able to be associated with or related to those the previously used mark distinguishes.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Under the Honduran Industrial Property Law enacted on 28 February 2000, well-known marks are subject to the following regulations:

  • to determine the notoriety of a distinctive sign, any relevant circumstance will be taken into consideration, particularly the following aspects:
    • the degree of knowledge of the distinctive sign among the members of the pertinent business sector; the duration, scope and geographical extension of use of the distinctive sign within the territory;
    • the duration, scope and geographical extension of promotion or advertisement of the sign, within the country;
    • the publicity and presence in trade fairs and shows or other events, concerning the establishment, activity, products or services to which the distinctive sign is applied;
    • the existence and antiquity of any trademark registration or trademark application for the distinctive sign in the country; or
    • pertinent actions based on the notoriety of the distinctive sign and judged favourably;
    • the value of any investments made to promote the distinctive sign or to promote the establishment, activity, products or services bearing the sign; and
  • the sole existence of the following factors will not suffice to recognise the notoriety of a distinctive sign:
    • the existence of registrations or pending applications for the sign abroad;
    • the former or current use of the distinctive sign abroad; and
    • the declaration of notoriety for the sign in a foreign country.

Please note that the TM office is requesting that all claimed notoriety must be within the country. We do not agree with this interpretation but must inform that it is the one currently upheld by the said office. The authorities have yet to issue the by-laws of the new Law.

The benefits of registration

What are the benefits of registration?

Honduras is a registration country where the right to exclusively use a trademark and prevent others from using or copying the same originates mainly from its registration before the Honduran trademark office. Mere use of the trademark gives very limited rights in our country.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The documentation needed to file a trademark application include power of attorney duly legalised by the apostille or nearest Honduran consulate; a wordmark or design mark; class number or specification of goods or services. If it is a legal entity, the state of incorporation is required; if a natural person, a valid picture ID.

The mark must be filed as closely as possible since it will be used there is no specific requirement for specimens or labels. Electronic filing is not available. Trademark searches are available but are not a requirement before filing. The official fee for requesting a trademark search is US$30.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It usually takes between 8 to 12 months to secure a trademark registration, including the issuance of the corresponding certificate of registration. Cost varies depending on publication costs, which depend on the number of products or services covered by the application. Standard costs range from US$475 to US$600 per trademark, per class. Firms usually grant discounts on professional fees based on volume and particular arrangements. Registration comes into effect at the date of granting.

It takes about 12 months to secure a registration and the cost of registering a mark per class is approximately US$430, including standard professional charges, VAT, normal publication expenses and official fees. No multi-class applications are allowed. Additional professional fees and disbursements (the costs vary depending on the particular issue raised or encountered) should be expected in the event of initial refusals, objections or citations from the examiners of the TM office. A power of attorney and copy of the applicant’s Certificate of Corporate Good Standing, both legalised by the apostille, are needed for filing an application. One set of documents (if not restricted by the applicant) serves for all matters of interest to an applicant.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The Nice Classification of Goods and Services (eleventh edition) is used. Multi-class applications are not allowed in Honduras, but significant discounts on professional fees can be awarded for large filing projects.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Trademarks are examined and confronted against previous registrations or pending applications. Letters of consent are generally accepted by the TM office, provided that different channels of commercialisation, as well as even minor visual, phonetic and grammatical differences, exist between the conflicting marks, and that the overall difference in the goods covered or identified by the similar or identical marks does not mislead or cause confusion to the general consumer. In other words, letters of consent are allowed with the exception of those involving identical or confusingly similar marks covering very similar goods or services. Note, however, that letters of consent are examined on a case-by-case basis, so their acceptance cannot be guaranteed in all cases. About 70 per cent of applicants respond to initial rejections or objections.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Under the current Honduran Industrial Property Law, registered marks that have not been used in Honduras for three years or more, counted from the registration date, may be subject to cancellation on the grounds of non-use and following a simple petition from an interested third party. It should be noted that the said petition may also be used as a defence in an opposition. The owner of the attacked registration must prove use of the mark or payment of ‘rehabilitation taxes’. Payment of these taxes fully protects a registered and non-used mark against actions or defences on the grounds of non-use. Once a cancellation action on the grounds of non-use is filed by an interested third party, it is no longer possible to pay the taxes in arrears.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

A registered ™ symbol can be used to indicate that a trademark has obtained a successful registration. A ™ symbol can also be used to indicate that a trademark seeks registration.

The use of such marking is not mandatory. No significant risks occur for not using such words or symbols since it is the trademark registration itself that confers rights to its owner and not use of the marking symbols. The benefits of using these derive mainly from being easier to claim knowledge by competitors and the general public of the owner’s rights over a particular distinctive sign.

Appealing a denied application

Is there an appeal process if the application is denied?

If a trademark application is rejected by the TM office, the affected party may request the reconsideration of the said rejecting resolution before the same office. The filing of evidence in support of all arguments filed is allowed in the form of documentary evidence (affidavits), expert witness declarations and inspections performed (at the request of the petitioner) by officers of the TM office. If the TM office maintains the rejection, an appeal can be filed before the Directorate of Intellectual Property and if the same maintains the rejection a further appeal can be made before the highest administrative office, the Superintendence of Intellectual Property. The resolutions of this body are final and the only resource left for the affected party is to file suit against the administrative office for damages. This is filed at the Contentious Administrative Court.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

An interested party may file an opposition against a trademark application within the period of publication and up to 30 working days counted from the last publication of the application in the Official Gazette. The opponent must prove the grounds for lodging the opposition and must attach or announce the pertinent means of proofs in support of its allegations and claims. An opposition founded on the previous use of a mark will be dismissed if the opponent cannot prove to have previously filed an application for registration of the mark in which the opposition is based. Oppositions are substantiated according to the declarative procedures, and parties (opponent and applicant) must prove all claims and allegations. Brand owners may oppose a bad-faith application even if they do not have protection in the country (eg, a brand owner may oppose a trademark registration application filed without authorisation by a distributor or re-seller of the goods covered by the mark).

Cancellation actions on the grounds of non-use are also contemplated by the law following the same declarative procedures. In these cases, there is a reversal of the burden of proof and it is the registrant who must prove either the use of the mark as defined by the law or payment of rehabilitation tax. A mark will be considered as used in Honduras when the products or services identified by the same can be found in the market under that mark in the quantity and regularity that normally correspond to the size of the Honduran market, the nature of the products or services in question and the form in which such are usually commercialised. The lack of economic resources or the insufficient demand for the products or services covered by a mark in the Honduran market will not be considered as just cause for non-use. When non-use of the mark affects only one or some of the products covered by a given registration, then the cancellation will be resolved by a reduction or limitation of the coverage of the registration provided that sufficient evidence as to the right of the third party is provided.

Any interested party can file a petition before the TM office requesting the annulment of a trademark registration proving that it was granted despite the following inherent prohibitions:

  • the mark consists of the usual or common shapes of the products or their packaging or of necessary shapes imposed by the nature of the given product or service;
  • the mark consists of shapes that provide a functional or technical advantage to the product or service it applies to;
  • the mark consists exclusively of a sign or indication used in the market to describe the characteristics of the given products or services;
  • the mark consists exclusively of a sign or indication, which in the common language or commercial usage of the country, is a common or usual designation, generic denomination or technical name of the given products or services;
  • the mark consists of a single and isolated colour;
  • the mark lacks distinctiveness in respect of the products or services covered;
  • the mark violates morality or public order;
  • the mark consists of signs, words or expressions that ridicule or tend to ridicule people, ideas, religions or national symbols, of the symbols of third countries or international entities;
  • the mark is susceptible to deceiving the commercial market or the public about the source, nature, way of manufacturing, qualities, aptitude for the use or consumption, amount or any other characteristic of the products or services covered;
  • the mark is identical or confusingly similar to a mark whose registration has expired or has not been renewed, or has been cancelled upon request of its holder or annulled by any cause, and that covering similar products or services, or for other products or services that, due to their nature, could be associated with those, unless one or two years (for collective marks) have elapsed from the date of expiry, cancellation or annulment of the registration;
  • it contains an appellation of origin protected in accordance with the law for the same products, or for different products when their use could cause a risk of confusion or association with the denomination or represent an unfair use of its notoriety, or consist of a geographical indication as contemplated by the law;
  • the mark reproduces or imitates official signs of control or guarantee adopted by any country or public entity, without the full authorisation from the respective national or public entity;
  • the mark copies coins or bills of legal course within the territory of any country, securities or other commercial documents, seals, stamps or government obligations in general;
  • the mark includes or reproduces medals, prizes, diplomas or other elements that can deceive the public, unless such awards had actually been granted to the trademark applicant;
  • the mark consists of the names, emblems and distinctive marks of the International Red Cross and the Red Crescent and religious and welfare entities legally recognised;
  • the mark includes a total or partial reproduction or imitation of a coat of arms, flag or other emblem, initial, denomination or abbreviation of denomination of any country or international organisation, without the authorisation of the said country or international organisation;
  • the mark consists or includes the Olympic symbol as it is defined in the Nairobi Treaty on the Protection of the Olympic Symbol 1981; and
  • the mark includes the denomination of a vegetal variety protected in the country or abroad, if the mark is to cover products or services related to this variety or if its use has the potential to generate confusion or association with the same.

A nullity action can also be filed by an interested party who proves that the registration was granted in violation of the following prohibitions based on the prior acquired rights from third parties:

  • it is identical or similar to a previously registered mark or pending application in such a way that can visually, grammatically or phonetically create confusion to distinguish between those products or services or between products or services different but susceptible to being associated or related to those the prior trademark distinguishes;
  • it is identical or confusingly similar to a trademark not registered but amply used by a third party who would have a better right to obtain the registration, in a way that can visually, grammatically or phonetically create confusion, as long as the mark covers the same products or services or for products or services different but susceptible to being associated or related to those the previously used mark distinguishes;
  • it is identical or confusingly similar to a widely used trading name, emblems or slogans used in the country by a third party since a previous date, as long as, given the circumstances, it could create confusion;
  • it constitutes the total or partial reproduction, imitation, translation or transcription of a distinctive sign used in Honduras that is famous or notorious to the general consumer or to the relevant business sectors of the country and to which the public belongs, to a third party, notwithstanding the products or services covered by the well-known or notorious sign; when its use had the potential to create confusion or a risk of association with the same;
  • it consists of the name, signature, title, hypocoristic or portrait of a person different from the one who requests the registration, unless the consent of that person is submitted or, if such person has died, the consent of his or her descendants or ascendants in the closest degree; and
  • it infringes a copyright or a right on an industrial design or it clearly violates provisions against unfair competition.

All nullity actions are substantiated according to the declarative procedures and the parties must prove all allegations and claims at the corresponding probatory period. The proofs allowed include documentary evidence, expert witness declarations, judiciary and administrative audit or inspections and presumptions, etc.

The nullity of registration of a trademark shall not be declared for reasons that were no longer applicable at the moment of issuing the resolution declaring or dismissing the nullity action. Nullity actions based on prior better rights shall be initiated within five years after the date of objected registration or within three years after the date in which the use of the trademark for which cancellation is demanded began. The right to initiate a nullity action will not expire when the registration for which cancellation is demanded was registered in violation of inherent prohibitions or in bad faith.

The costs (in US dollars) associated with these proceedings are, generally speaking, as follows:

Oppositions to a trademark registration

Description

Legal fees

(US$)

Official fees/expenses (US$)

Total (US$)

For filing an opposition suit

335

50

385

For the final pleadings, filings and further prosecution of the case up to the final decision from the TM office

550

50

600

Preparing and filing an answer to an opposition suit

335

50

385

For filing means of proof during the prosecution of the case

450

25

475

For the final pleadings, filings and further prosecution of the case up to the final decision from the TM office

550

50

600

Nullity

Description

Legal fees

(US$)

Official fees/expenses (US$)

Total

(US$)

Preparing and filing/answer a nullity action on the grounds of better rights (judicial action)

1,800

50

1,850

For filing means of proof during the prosecution of the case

800

50

850

For the final pleadings, filings and further prosecution of the case up to the final decision from the court

800

50

850

For obtaining a first- instance decision from the court

850

0

850

For filing a review appeal or defending a case against a review appeal filed by the counterpart

1,800

200

2,000

Cancellation actions on the grounds of non-use/trademark/service mark/slogan registrations

Description

Legal fees

(US$)

Official fees/expenses (US$)

Total

(US$)

(a) For preparing a cancellation action on the grounds of non-use (administrative action) (minimum)

1,700

140

1,840

(b) Publication of final resolution in the Official Gazette and a local newspaper

Mostly publication expenses - may be higher depending on length of decision

Infringement and forgery

Description

Legal fees

(US$)

Official fees/expenses (US$)

Total

(US$)

Infringement and forgery actions, including (if necessary) seizure of counterfeit goods (minimum)

1,575

750

2,325

(Logistics and miscellaneous are discussed case by case)

Logistics and other expenses when coordinating with police and public prosecutors

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark is registered in Honduras for 10 years counted from the registration date and the registration can be indefinitely renewed for 10 years. A six-month grace period counted from the initial expiry date is allowed for the registration of a mark. Proof of use is not required at any moment during the maintenance of a mark or at renewal date, unless a third party attacks a registration on the grounds of non-use.

Surrender

What is the procedure for surrendering a trademark registration?

Voluntary cancelation of a trademark is possible and is usually granted following a simple petition from the registered owner.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Sometimes designs may also be protected under design laws; and in very particular situations that are analysed on a case-by-case basis, copyright may be available to some figurative trademarks.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no special law. Use of trademarks in cyberspace or the physical world are governed by the Trademark Law.