Monday 27 November 2017

Thursday 23 November 2017

Venezuela: Recommended to pay official fees for trademark in good time before the due date


In Venezuela, as a consequence of the Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015, there has been a significant increase in the official fees for procedures for registered rights.

The Reform has also complicated the handling of payment of fees for registration, renewal and recordals of changes of ownership, changes of address and licences in the area of trademarks.

Experience has shown us that in Venezuela steps must be taken as far in advance of the due date as possible, given that payments of fees must be transferred to the account of the Autonomous Intellectual Property Service (SAPI) and once the transfer has been completed, the transfer receipt must be officially stamped. It is not uncommon to encounter extraordinary bureaucratic obstacles, which lead to delays.

Furthermore, the U.S. Government recently imposed economic sanctions on Venezuela, which also have an impact in the field of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring transactions made in dollars to accounts in Venezuela, which can lead to considerable delays in the completion of payments. These obstacles can have significant consequences for trademark rights. If we consider, for example, the renewal procedure, in relation to which there are no provisions under Venezuelan legislation for a grace period beyond the expiry date, the payment of the official fee (which for one trademark in a single class currently amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry date of the trademark, otherwise it will be declared abandoned.

It is therefore advisable to keep in mind that in Venezuela, with respect to those procedures requiring payment of a fee affected by Article 6 of Decree No. 1398, it is necessary to act well in advance of the deadline.



Author: Cristina Arroyo


Visit our website: http://www.elzaburu.es/en

Friday 3 November 2017

Indonesia becomes the 100th Member of the Madrid Protocol

On 2 January 2018, the Madrid Protocol will take effect in Indonesia. Following Thailand’s accession to the Protocol some weeks ago, this is a natural and expected development.

Indonesia joins the Madrid System having submitted some of the most common declarations permitted under the Madrid Protocol. The Indonesian Trademark Office will be able to extend the time limit for refusal of the trademark to 18 months, by virtue of Article 5.2 b) of the Protocol, and will be able to charge an individual fee for applications, subsequent designations and renewals affecting Indonesia, pursuant to the provisions of Article 8.7. The Indonesian government has also made the declaration provided for under Rule 20bis(6) of the Common Regulations, indicating that recordals of licenses on the International Register shall have no effect in Indonesia. For recordals of licenses to have effect, it will be necessary to file the appropriate recordal application with the Indonesian Office.


There are certain particularities in legal and administrative practice in Indonesia regarding the prosecution of trademarks. For example, national applications must be accompanied by a Bona Fide Statement. For the time being, the Madrid System does not appear to have developed any formula for adapting this requirement laid down at national level to the international level. Other member countries of the Madrid System have addressed this requirement by formulating an ad hoc document or including an express declaration on the international application form. It remains to be seen how the Indonesian authorities will adapt those specifications of goods/services that have been deemed acceptable by the home office or WIPO to the sui generis practice in Indonesia. Such issues will arise in day-to-day practice and it will be necessary to work closely with our network of local agents to adapt to the new situation and guarantee the best possible strategy for trademark owners with interests in Indonesia.

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en