Registration and useOwnership of marks
Who may apply for registration?
Any person or legal entity, of any nationality, domicile or activity may acquire and enjoy the rights granted by the Industrial Property Law, which covers trademark rights.Scope of trademark
What may and may not be protected and registered as a trademark?
The Trademark Law states, first, that a mark can be any sign capable of distinguishing the goods or services produced, marketed or provided by any person or legal entity and, second, requires, in order for the sign to be registrable, for such sign to be ‘distinctive’ with regard to the products or services it will cover.
The nature of the product or service to which the mark will be applied will not be an obstacle in any case for the registration of the mark.
Marks may be for products or for services and may consist of words or groups of words, letters, figures, designs, monograms, shapes, pictures, labels, badges, patterns, engravings, vignettes, borders, lines and stripes and colour combinations and arrangements, as well as any combination of these signs. The shape, presentation, packaging or arrangement of the products and of points of sale of the products or services are also protectable. Non-traditional trademarks such as sound and scent marks are also registrable. The Trademark Law does not limit what can be a trademark, since it has left a general clause that indicates that in addition to that listed in the Trademark Law, trademarks may include ‘others that in the opinion of the Registry have or may have acquired a distinctive character’.
Marks may consist of national or foreign geographical indications, provided such are distinctive regarding products or services to which they are applied, and that their use is not prone to cause confusion or association with regard to the origin, qualities or characteristics of the products or services for which the marks are used.
When the mark consists of a label or another sign that is composed of a group of elements and the name of a product or service is contained on such, the registration will only be granted for such product or service.
Special protection is provided to well-known trademarks; however, knowledge of the trademark must be proven.Unregistered trademarks
Can trademark rights be established without registration?
Exclusive trademark rights are granted upon registration; an exception to this rule are well-known trademarks, which are entitled to protection even if not registered in Guatemala; however, such a level of knowledge of a trademark is subject to evidence and will be dependent on a Trademark Office or judicial decision.
Guatemala is a party to the General Inter-American Convention for Trademark and Commercial Protection, an instrument that provides for protection for signs registered or in use in other member states, even if such have not yet been registered in Guatemala. This prior use in another member state may support, depending on the facts and circumstance, registration in Guatemala with preference over other petitioners or may allow the filing of an opposition or to seek cancellation of a registration.
Since under the law there is no obligation to register to use a trademark, there may be cases in which use of a non-registered trademark is confronted with unfair use by a third party. In such cases, one may invoke the law referring to unfair competition. All acts contrary to honest business uses and practices performed in all industrial and commercial activities shall be considered unfair. The Trademark Law also includes, within the prohibitions for the registration of trademarks based on third parties’ rights, the situation in which registration of a trademark may result in consolidating or perpetuating an unfair competition act.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?
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?
The legislation does not expressly recognise foreign famous trademarks, although this does not prevent invoking their protection even if they are not used in the country through the figure of the well-known trademark.The benefits of registration
What are the benefits of registration?
The registration of a trademark provides to the owner an exclusive right, so that he benefits from not having the burden of proving any use or other factor at the time of taking action against third parties infringing acts, since only the presentation is sufficient of the respective registration certificate to exercise all enforcement actions regulated by the law. On the other hand, although the lack of registration does not imply the impossibility of accessing the exercise of legal actions, the interested party must then limit him or herself to exercising only those provided for cases of unfair competition.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 power of pttorney is legally required only in the case of foreign applicants. However, the request can be submitted without the power of attorney, but this said document shall be subsequently filed to duly accredit the title of representation and accredit a guarantee for any damage or harm that can be caused to the person who the applicant claims to represent the applicant or to affected third parties.
The request must contain relevant information about the trademark, a copy of graphic or figurative elements should be included if applicable and the information about the products or services that it will identify.
There is no electronic filing of applications.
Trademark searches are available. It is possible to request searches of a given registration or a trademark application. It can be requested by a printed form before the IP office. An official fee applies to request the information to receive an official report. Likewise, it can be consulted online in the IP office database that requires prior subscription. Subscription is free. However, it is not a source of complete information; thus, it must be verified at the IP office's books to have complete data for some cases. A printed version of an online search result is not considered an official document.
The official fees to trademark searches are as follows:
- word-mark search: US$14;
- figurative mark search: US$27; and
- owner search: US$135.
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?
From filing the application through grant of the trademark registration, the process may typically take seven to eight months. This estimated time will be increased if the trademark office issues an office action (ie, objection to registration) or if an opposition is filed against the application. Such actions will also increase the costs of the trademark process.
In addition to the applicant’s information, the clear identification of the trademark and printed copies of the same (in the case of non-traditional trademarks such as sounds and scents, a description of such that is sufficiently clear, intelligible and objective), the list of products or services that will be covered and an indication of the class number for which it is intended, filing should be accompanied by the correspondent power of attorney. If the document is granted in a country other than Guatemala, it must be validated through the process provided in the Apostille Convention, which entered into force in Guatemala on 18 September 2017, and as a consequence both the power of attorney and the apostille, if written in a language other than Spanish, must be translated in Guatemala by a certified translator to comply with the requirements. If for any reason the power of attorney has not been sent at the time of the application, a Guatemalan attorney is empowered by law to act as an ex officio representative and, therefore, empowered to submit the filing and obtain a filing date and time. The trademark procedure will be suspended until the attorney submits an authenticated copy of the power of attorney, for which the trademark office will grant a two-month period for the presentation of a bond; if a bond is submitted, the authenticated POA shall be presented prior to grant. The registration of a trademark has its legal effects only from the date of the respective registration.
We can provide details of registration costs and fees upon written request.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?
For the purposes of the classification of products and services for which the registration of a trademark is requested, the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) applies by express reference of the current trademark law, even though Guatemala is not a party to the Nice Agreement.
If there is doubt regarding the class in which a product or service shall be placed, such will be resolved by the Registry, which may carry out technical consultations. For all cases, the publications of the World Intellectual Property Organization related to trademark classification shall be considered as a guide for the correct classification of the products and services.
Guatemala is a party to the TLT, which implies the admission of multi-class filings; the implementation of several of the TLT’s provisions will be subject to an amendment to the Industrial Property Law, which is still at draft stage.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?
Once the application is received, the Trademark Office proceeds, first, to review if the formalities and required documentation have been met. If the application fails to comply with such formalities or documentation, the Office will suspend the process and will request the applicant to remedy any failure within a one-month period under the warning that otherwise the application will be considered abandoned.
After the form examination, the Office will proceed to examine the trademark in order to determine that it does not fall into the inadmissibility cases or registration prohibitions and that it does not affect third parties’ rights (ie, potential conflicts with other trademark applications or registrations). If the Office concludes that there are grounds to reject the application based on such examination, it will serve notice to the applicant, granting a two-month period to respond. If the applicant does not respond, the application will be declared abandoned. If the applicant responds and the Office criterion is that the reasons to object prevail, it will reject the application; otherwise, the Office will allow the process to continue, issuing the edict for publication.
The Trademark Office does not accept letters of consent, but coexistence agreements are accepted, because it is important that the parties establish provisions in order to ensure that the rights and interests of consumers are not affected.
Once publication takes place in BORPI (the Trademark Office’s electronic bulletin), there is a two-month period for any interested party to file for opposition. If there is an opposition, the Office will serve notice to the trademark applicant, providing the applicant with a two-month period to respond to the opposition. If there is a need for the office to receive offered evidence a two-month evidence phase will be enabled. The opposition shall be decided by the Office (the law does not establish a term for the Office to issue its decision). Oppositions are currently taking a minimum of eight months to be decided.
If no opposition was filed against the application (or the opposition was rejected and no administrative remedy was filed against such decision), the applicant must pay the registration official fee, and once this has been performed the Office will issue the registration certificate.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?
No current law in force obliges a product or service to be identified with a trademark for purposes of its commercialisation; registration of a trademark is an option for the person using it. Claiming or proving trademark prior use is not legally required in order to request or obtain registration. Once the trademark is registered, proof of use does not need to be submitted (not even for renewal purposes). However, the Trademark Law provides for non-use cancellation action, by any person with interest, which may be activated when five years from grant of the trademark have passed without it having been used or five years from last use of the trademark. The cancellation of a registration for non-use may also be requested as defence against an objection of the Registry or against a third-party opposition to the registration of a trademark; against a request for statement of invalidation of a registration or against an action alleging infringement of a registered trademark. Cancellation will be settled by the competent judicial authority.
When non-use affects only one or some of the products or services for which the trademark was registered, the cancellation of the registration will be settled by a reduction or limitation of the respective list of products or services, eliminating those for which the trademark has not been used.
A registered trademark must be used in the market exactly as it appears in its registration; however, the use of a trademark in a way that differs from the way in which it is registered, but only with regard to details or elements that are not essential and that do not change the identity of the trademark, will not constitute grounds for the cancellation of the registration, and will not reduce the protection that such confers. The use of a trademark by a licensee or another person authorised for such will be considered as if it were being carried out by the holder of the registration, for the effects relating to the use of the trademark.
Non-use cancellation action will not apply when such non-use is owing to justifiable reasons. The burden of proof regarding use of the trademark will fall upon the trademark owner.
The applicant for the registration of a mark may claim priority based on a prior registration application, filed in order in a state that is a party to a treaty or agreement linked to Guatemala (ie, the Paris Convention). Such priority must be claimed in writing in the application, or later, until a three-month term following the expiration of priority, indicating the date and the country in which the first application was filed; proof must be submitted with the claim or within three months following the expiration of priority. Multiple or partial priorities may be claimed in the same application, which may have originated in applications filed in two or more different states; in such case the priority term will begin at the earliest priority date. The priority right shall be in force for six months as of the following day of the filing of the priority application.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?
No regulation applies in the sense of admitting or forcing the use of symbols that indicates that a trademark is protected in favour of a specific person, either by use or by its registration. The exercise of the exclusive rights that derive from the registration of a trademark is not subject to compliance with the use of any symbol on its use or registration.Appealing a denied application
Is there an appeal process if the application is denied?
If a trademark application is denied by the Trademark Office (rejection upon examination; rejection upon opposition), the petitioner may file, no later than on the fifth business day after having been served notice, an administrative recourse before the Minister of the Economy. Because of the large number of cases referred to the Minister of Economy, these recourses are being decided in approximately a one-year period.
If the decision of the Minister of the Economy confirms rejection, the petitioner may file a contentious judicial action before the Contentious Administrative Court within three months of having been served notice of the ministerial decision. For the same reason, these judicial processes are being decided in approximately two years. The affected party may submit an extraordinary recourse (cassation appeal) against the court’s decision before the Supreme Court of Justice.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?
Having successfully passed the examination process, a publication edict will be issued. The edict must be published once in BORPI.
Any interested party may file opposition against a trademark application within a two-month period counted from the date of the publication, based on relative grounds (ie, third-party rights) or absolute grounds (prohibitions for registration, non-distinctive).
Guatemala is a party to the General Inter-American Convention for Trademark and Commercial Protection; this Convention provides for the protection of signs registered or in use in other member states, even if such are not registered in Guatemala. The Convention provides for additional grounds for formulating oppositions. A brand owner may oppose a bad-faith application in Guatemala, even if such owner has not registered the trademark before, on the grounds of article 6-septies of the Paris Convention, which refers to ‘use’ and ‘filings’ by a former agent or distributor. Finally, another ground to file an opposition to an application, even if the trademark has not been registered in Guatemala, will be the provision that states that if the pretended trademark may result in an unfair competition act against a third party, such trademark shall not be registered.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?
Trademark registration is granted for a 10-year period counted from the date of grant; registration may be renewed indefinitely for equal and consecutive 10-year periods. Use of the trademark is not required for its maintenance or for renewal purposes.
Renewal may be filed within one year prior to the expiration of the 10-year term, subject to the payment of the renewal fee. However, if the term elapsed without having filed for renewal, the law provides for a six-month grace period, during which one can file for a late renewal, paying an increased official fee.Surrender
What is the procedure for surrendering a trademark registration?
The use of forms previously approved by the IP Office and their physical presentation at the receiving window, upon payment of the applicable fee, is required.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes, trademarks can be protected at the same time under copyright and industrial designs.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The law only recognises the protection of trademarks when they are subject to unauthorised use on the internet, or, when they are part of domain names, when a prohibition of use is ordered in a final judicial decision derived from an infringement action or the transfer of ownership of the domain name.