Fast Facts What is the name of the government department and office that handles registration of trademark rights in your jurisdiction? The government department that deals with Intellectual Property matters is called SENAPI, an acronym for National Intellectual Property Service.
Where is the headquarters office located, and are there other branches? SENAPI is a centralized institution that addresses all matters from its offices located in La Paz, but has filing offices throughout the main cities in the country. These branch offices receive petitions that then get forwarded to the central office.
How are trademark rights assessed—on a first-to-file or first-to-use basis? Trademark rights are assessed on a first-to-file basis.
What are the key domestic laws that govern trademarks? The most relevant domestic law that governs trademarks is Decision 486 belonging to the Andean Community, which is a regional market that includes Bolivia, Colombia, Ecuador, and Peru and seeks to achieve an integrated and balanced IP system.
Decision 486 is the Intellectual Property Common Regime that sets forth the main concepts and regulations for patents, utility models, industrial designs, genetic resources, trademarks, commercial names, and denominations of origin, among others. This set of provisions make up a framework that governs Industrial Property in the region, to which any other complementary laws and bylaws of the member countries must conform.
There are also bylaws and procedural provisions that are applicable to inter-partes or ex-parte dealings with the local trademark offices.
Are there any protections for unregistered trademarks, particularly well-known marks? There is no protection for unregistered marks, as Bolivia is an “attributive” jurisdiction that affords rights only after an application process ends successfully with the grant of a proprietary right over a trademark (i.e., a registration certificate).
Well-known marks, however, may eventually gain special protection even if unregistered; yet, in order for a well-known mark to have such protection it needs to be held a well-known mark in the territory first.
This means that it is not sufficient to merely make a claim of fame; instead, the notoriety must be recognized in an administrative process. Generally, recognitions of fame are brought via a petition to the local trademark office as part of another process that is underway. If a mark is unregistered it will be even less likely that it will have undergone a notoriety recognition process. For this reason, the notoriety declaration is usually sought in the same process where the protection is invoked. An example may occur in a third-party application process where the owner of the famous mark would like to oppose but lacks a registration right. In this case, the trademark owner, in addition to making his/ her opposition arguments, would need to make a case for notoriety, to which end he/ she will need to submit evidence of fame pursuant to local law requirements.
Should the mark have been previously held as well-known by the local office, then invoking the special protection will be more direct.
What rights does a trademark registration afford the owner? A trademark registration affords the owner the right to its exclusive use and to enjoin any third-party from non-authorized uses or registration for confusingly similar goods or services.
Can trademarks be protected using other IP rights regimes, such as copyright or designs? Trademarks can be protected using other IP rights regimes. A situation where there are alternatives is when a given design, for instance, can be protected either through a tri-dimensional mark (trademark regime) or through an industrial design (patent regime) or even through a copyright (copyright regime).
Also, in specific situations, a person owning a right protected under a different regime, such as copyright, can use such right to prevent a third-party from successfully obtaining a trademark registration even when that person lacks a trademark right.
What kinds of marks can be applied for? The basic set of marks that can be applied for are the traditional marks, such as word marks, tri-dimensional and design marks, as well as non-traditional marks, such as sound and smell marks. In fact, any mark that is capable of being graphically represented can become a registered mark.
It is also possible to apply for certification marks as well as collective trademarks.
Who can file trademarks? Is special documentation required for agents filing on behalf of trademark owners? A mark may be filed by either the owner or by an agent, who must act via a Power of Attorney.
Is electronic filing available at all stages of the application process? Electronic filing is not available for any type of IP service.
What are the most common grounds for refusing to register a trademark? The most common ground for refusing to register a trademark application is likelihood of confusion with a previously applied for or registered mark. The great majority of refusals involve lack of perceived distinctiveness.
Also, on the pro-forma side, the greatest number of rejections come from failure to submit documentation on time, namely, the legalized Power of Attorney.
Is the applicant required to conduct a trademark search prior to filing? What search tools are available and what are the costs involved? No, the applicant is not required to conduct a trademark search prior to filing, though it is advisable do so to potentially save costs and time. Our firm maintains its own database to conduct searches.
How does the Office determine priority rights? Priority rights are simply determined by the official filing date stamped on the application. This statement holds true both for local as well as foreign priorities.
What type of examination is conducted? There are two types of examination conducted. The first is conducted shortly after filing and is a formal examination to see if the application conforms and contains the pro-forma requirements; the second examination is a subject-matter examination which determines if the mark is confusingly similar to prior marks and if it conforms to other legal requirements.
Can applicants amend their applications in response to objections? What are the time frames for responses? Applicants can only amend their applications when the objections relate to pro-forma issues and always before publication. Objections that arise during the subject-matter application cannot be amended and can only be argued in an appeals process that no longer qualifies as an amendment.
Can applicants appeal rejections? All applicants can file appeals to rejections. In fact, there is a two-level appeals system in force.
What is the average timeline from application to registration of a mark? The average timeline is approximately 8 months if the application process runs smoothly.
When is registration official? Registration of a mark is official upon issuance of the resolution and the registration certificate that grant the mark.
For how long is the registration effective? Registration is effective for a 10-year period and this period can be renewed indefinitely for subsequent 10-year periods.
Are there registration or maintenance fees? There are no registration or maintenance fees.
Is there an opposition system? The trademark system provides for opposition where any person can file opposition against a trademark application be it for relative or absolute requirement reasons. The period during which oppositions can be filed is a 30 working-day period as of the date of publication of the official gazette.
Once a mark is registered and unopposed, are there reasons it may still be revoked? Once a mark is registered and unopposed, there are two sets of reasons why a mark may still be revoked. The first includes those cases that fall under the “nullity” category. These are marks that have been issued, for example, in contravention of absolute requirement provisions such as unduly bearing a geographic indication without qualifying for it, that have been adopted in bad faith, or that are generic. The second category includes marks that are subject to cancellation, which occurs upon petition of a third party for reasons of non-use only.
What are the procedures for cancellation/ revocation of a mark already on the register, and who can request such a proceeding? The procedure for revocation depends on which type of revocation is invoked. If the revocation takes the form of a cancellation action, then any person interested in obtaining that mark can petition for its cancellation. Such a petition needs only to argue that the given mark is not in use. Then the trademark owner needs to file a response and has the burden of proving use with very specific and stringent evidence. The rate of a mark being cancelled is quite high in relation to successfully defending it—not necessarily because it is not in use, but because the owner can often not show use as required; e.g., it does not have a recorded license of use, for example, for a distributor or it does not have sales documents, or these documents do not show the name of the mark.
The revocation of a mark for nullity reasons allows for a broader range of arguments and debate. Any person interested in filing for nullity can argue that the mark does not conform to the law. The trademark owner is then allowed to reply to such argument. In these cases, the burden of proof falls on the petitioning party and not on the trademark owner.
Can a trademark owner appeal a cancellation or revocation? All trademark procedures relating to the revocation of a decision can be appealed up to two times. The first appeal instance is called revocation recourse and the second appeal is called hierarchical appeal.
Where can trademark disputes be appealed? Trademark disputes are appealed before the same examiner that issued the first-instance resolution. This first-instance appeal takes the form of a petition, whereby a party asks the examiner to correct the original decision.
Then, there is a second instance appeal, called “hierarchical recourse” which is argued before the director of SENAPI.
It is conceivable to have a third chance at appeal, to the Supreme Court. It is generally not used as cases are not often heard at this level. The rate of having a decision overturned by the Supreme Court is very low.
How and where can trademark owners bring infringement complaints, and how soon must they bring them? Are criminal remedies available? What are the requirements for each type of action? Infringement actions can be brought in either jurisdictional courts or administrative courts. The first requisite for bringing an infringement complaint is ownership of a trademark registration. Without a registration, any infringement claim will be refused.
An infringement claim should focus on the similarity of a third party’s mark, or use of the mark, to one’s own mark; thus, the marks have to be quite similar. It should also be noted that an infringement action necessarily one of the parties has a registration and the other party does not. Any other combination of ownership will not meet the criterion.
It is usually best to opt for the administrative procedure because it is far less expensive, it is a quicker process, and the courts are more knowledgeable than in the alternative. The downside of using this type of process is that no penalties of any kind can be imposed. A trademark owner expects and seeks, in this type of venue, the withdrawal of the infringing material from the market or the termination of the infringement. If monetary compensation is desired, then the claim has to be brought before jurisdictional courts.
What is the average time-frame for infringement actions? Are settlements common? Infringement actions in the administrative venue can take up to 9 months to get a first instance resolution. With all appeals, a trademark owner can expect a time-frame of about 14 months.
Settlements are not common, but they occur on occasion. Of course, it is always advisable to attempt a settlement because any concessions that a trademark owner makes will take some time to be obtained in an administrative proceeding. If the infringer continues to infringe after a decision is issued, it is quite a bureaucratic process to begin again in order to remove the infringing material; administrative entities do not have any capacity to impose other types of penalties.
Will courts grant injunctions to stop infringement? Under what circumstances and standards? Statutorily, courts should grant injunctions either before or during an infringement procedure; however, practice shows that administrative courts are quite reluctant to issue injunctions and one has to push hard to have one issued. There is a provision that allows a court to request that a bond be placed when there is an infringement, but courts are hesitant to use this mechanism; it is often appealed and the case resolved before such a bond is imposed.
What monetary remedies for infringement are available to trademark owners? Monetary remedies for trademark owners are available only at jurisdictional courts such as a civil/commercial court. The monetary remedy will be based only on the actual damage suffered, which needs to be proven. This means that projected sales losses, for example, will not be awarded a remedy, as losses are, in the court’s opinions and in the law, still speculative.
Monetary awards are not something plaintiffs should seek as they do in other jurisdictions that have other methods of awarding damages, such as treble damages, or that allow for inferring potential damages that a plaintiff likely suffered.
How can mark owners ensure that assignment or license agreements are legally binding? Assignments, license of uses, security interests and the like, in order to be legally binding, need to be duly recorded with SENAPI. It is an easy recordal process that usually gets neglected by trademark owners. With a notarized and legalized document and a Power of Attorney the license of use or security interest gets recorded inexpensively and quite quickly.
How can trademark owners enforce their marks at the border? Border measures are not quite developed in Bolivia as in most others. While there are two articles in Customs Law that make reference to border measures, they are too vague and they do not allow the trademark owner to act on its own behalf, but only through SENAPI.
Furthermore, there is no recordal system where owners can register their marks, so most actions occur with previous knowledge of the trademark owner who has advance knowledge of an infringement import coming. By petitioning SENAPI, the owner can halt the import process and in a 10-day period must show that the material is infringing—a process that ideally ends with the seizure of those products. However, border measures are currently quite ineffective and the few actions that can be brought up require a lot of previous information, which a trademark owner usually does not have.
What are the most common defenses against infringement? Are certain types of unauthorized uses of marks allowed? Under what laws? The most common defense against an infringement claim made by defendants is that they have better rights based on their market use. It is quite common for an infringer to invoke a commercial name argument, whereby a defendant will state that it has been using the mark for a long time, or that its use pre-dates the owner’s trademark registration, or that it has registered the company before the commerce registry. Infringers usually try to claim bona fide use or prior use in commerce.
Unauthorized uses of marks can occur in two scenarios: fair use and trademark exhaustion. In the former, a trademark can be used in an academic setting, for example, or it can occur to advertise the availability of the product. Of course, said uses have specific restrictions and have to occur under specific circumstances but the use of a mark in these cases is permitted.
In the latter case, when the trademark owner has initiated the import of the goods bearing the mark or otherwise ”opened” the market, all other merchants are free to import the brand and commercialize the original products without the need for authorization from the trademark owner.
How and where can infringement decisions be appealed? Infringement actions are appealed in the same fashion all administrative actions are appealed. The first appeal is before the same officer that issued the first-instance resolution and the second appeal is filed before the SENAPI director.
Then, there is a second instance appeal, called “hierarchical recourse” which is argued before the director of SENAPI.
It is conceivable to have a third chance at appeal, to the Supreme Court. It is generally not used, as cases are not often heard at this level. The rate of having a decision overturned by the Supreme Court is very low.
If the infringement action was brought in a jurisdictional court, then it will depend on the type of court and the type of action that was used. Generally, however, such an action would get appealed before a second instance court or before the Superior Court of Justice and then, it could, in some cases, be appealed to the Supreme Court.
What mechanisms are available to protect trademarks online? There are no mechanisms to protect trademarks online. All actions and petitions have to be filed in person or through an owner’s agent before SENAPI.
There are no other online uses that enable trademark protection.