Venezuela
María Milagros Nebreda, Patrick Petzall and Matías Pérez Irazábal
Hoet Peláez Castillo & Duque
- 1.What are the novelty or inventiveness requirements for a patent to be granted?
In order to be patentable, the subject matter must be novel; however there are some exceptions to this requirement such as: invention, improvement or industrial model or design which, being patented abroad, has not been divulged, patented nor put into execution in Venezuela, that means they are not in public domain. Inventive step is required for inventions.
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
An invention shall be regarded as having an inventive step if it is not obvious to a person in the trade with an average skill. In addition, the invention shall be deemed as being industrially applicable when its subject matter can be produced or used in a certain type of industry.
- 3.What are the different types of patent protection that can be obtained in your country, for example, utility, design? How do these types of patent protection differ?
The Industrial Property Act of 1955 recognises the following types of patent: patents of invention (letters patents), revalidations patents and introduction patents.
Revalidation patents are those based on any prior foreign patent (not necessarily the patent granted in the applicant’s home country, nor the patent that was the one the first granted), and applied for by the owner of such foreign patent or his successor in right. Revalidations patents are granted to holders or foreign patents; provided that they make a request to file their patent in Venezuela within 12 months of the foreign patent’s filing date. Act of 1955 also the grant of Introduction Patents (patents of importation), not to be confounded with revalidation patents, for a period of five years from issue is provided for, which could be applied for by a person who was neither the inventor, nor his successor or assignee, but who introduced the invention in Venezuela, while the patent application was in no way based on the patent of the country of origin. Such patent of introduction would not confer the right to prevent others from importing similar goods from abroad, but would confer upon its owner only an exclusive right of manufacture in Venezuela.
- 4.If an invention is conceived in your country, does the first filing have to be made there?
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
There are no foreign licence requirements when an application conceived in Venezuela is filed first in another country, according to the Paris Convention.
- 6.Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas (eg, in the field of genetics) that are not eligible for patent protection?
According to Article 15 of the Act of 1955, the following are not patentable:
- beverages or food, whether for men or for animals; medicines of all kinds; medicinal or pharmaceutical preparations and chemical preparations, reactions and combinations;
- financial, speculative, commercial, advertising systems, combinations or plans, or those of simple control or inspection;
- the simple use or advantage of natural substances or forces, even though they be of recent discovery;
- the new use of goods, objects, substances or elements already known or applied to definite purposes and the mere variations of shape, dimensions or material of which they are made;
- working patterns or secrets of manufacture;
- purely theoretical or speculative inventions whose industrial feasibility or well defined application could not be possibly indicated or demonstrated.
- inventions contrary to national laws, public health or public order, to morality or good customs and to the security of the State;
- the juxtaposition of already patented elements or of elements which are of public domain, unless they are put together in such a way that they cannot work independently, loosing their characteristic action; or
- inventions made known in the country for having been published, divulged in printed papers or in any other form, and those being of public domain by reason of their execution, sale or advertising within or outside the country, prior to the patent application.
The patentability of the following inventions is not clear: vegetable varieties, vegetable species, animal breeds, micro-organisms, biological procedures, human or animal genome, or human or animal germoplasma, therapeutical methods, cosmetic methods, software or their logical support; however their patentability can be assumed taking into consideration the single Paragraph of Article 14 of the Act of 1955, which states: ‘The enumeration contained in this article is merely expository and not restrictive since, generally, the result of the inventive effort of human ingenuity could be subject to be Patented, with the exceptions established in this Law.’
- 7.Summarise the current level and nature of patent litigation in your country? Are the pending litigations related to a specific industry such as the pharmaceutical industry?
In Venezuela, patent litigation will generally be sought before a trial court that may issue, within the procedure, a wide range of injunctions to safeguard a legal right.
To be able to file a suit, a patent must have been duly granted by the Venezuelan Patent Office (PTO). Thus suits are filed before trial courts that have jurisdiction in cases dealing with civil, mercantile, traffic, trade and transit matters.
In Venezuela the PTO cannot render decisions on patent litigation cases but only in matters dealing with the granting, denial or nullity of a patent right.
In Venezuela there are few cases of pending patent litigation, particularly related to the pharmaceutical industry.
- 8.What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
Among others, the following elements are considered when calculating damages:
- the consequential damage and lost profits suffered by the rightholder as a result of the infringement;
- the amount of profit obtained by the infringer as a result of the acts of infringement; or
- based on the commercial value of the infringed right and such contractual licences as may already have been granted, the price the infringer would have paid for a contractual licence.
A wide array of injunctions is available for a patent owner to guarantee its rights during the course of a judicial proceeding. The judge, at his or her own discretion and provided that the plaintiff can support its right and show irreparable harm, can order injunctions ranging from seizure of goods to the prohibition of the sale of goods. In some cases, the plaintiff will be required to post a bond to guarantee possible damages that may arise from the injunctions being sought.
Other measures (injunctions) that may be ordered include the following:
- immediate cessation of all acts constituting the alleged infringement;
- withdrawal from commercial channels of all products resulting from the alleged infringement, including packaging, wrappings, labels, printed material or advertising, or other materials, together with materials and implements of which the predominant use has been the commission of the infringement;
- suspension of the importation or exportation of the goods, materials or implements referred to under the previous paragraph;
- establishment by the alleged infringer of an adequate guarantee; and
- temporary closure of the business belonging to the defendant or accused, if necessary, to avoid continuation or repetition of the alleged infringement.
- 9.Is your country considering major changes to its patent system?
Currently Venezuela is not considering major changes in its patent system.
- 10.Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
No, Venezuela is not a member of the Madrid Protocol; however, it is signatory to the TRIP’s agreement since 1 January 1995.
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
No, Venezuela withdrew from the Andean Community on April 2006; however, Andean decisions were in force until September 2008 when the PTO officially ordered the reinstatement of the Venezuelan Industrial Property Law issued in 1955.
Regarding Mercosur, Venezuela is currently awaiting its formal admission to such regional agreement.
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
Our Industrial Property Law establishes that in order to use the registered trademark symbol the sign must be registered. If it is used regarding a sign which is not registered, fines may be imposed by the authorities. (US$100)
As for the ™ sign, please note that although unregistered trademarks are not established in our Law, it is not prohibited and so its use is permitted.
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
The main problem affecting trademark owners is counterfeiting of apparel and shoes. Strategies are discussed in question 15.
- 14.Does a trademark licence have to be recorded in your country to be effective?
Trademark licence should be recorded at the PTO, so the use of the trademark by the licensee to be considered as valid in case a cancellation action for lack of use rises against the registration.
In addition, in order to record a licence at the Venezuelan PTO the trademarks involved needs to be registered.
- 15.What strategies have been successful in combating counterfeiting in your country?
Different strategies have been successful in combating counterfeiting; among them we may mention certain out-of-court actions. The first of these are cease and desist letters, which provide an amicable means of trying to stop the infringement. In this letter, the infringer is informed of the actions brought against it for infringing intellectual property rights, and it is notified that the company must stop infringing these intellectual property rights within certain period of time.
The second action is a judicial notification. This would be carried out by a court. The court would visit the premises of the infringers and would formally notify them that:
- the owner has knowledge of their continued illegal use of the IP rights, and
- legal actions are available to restrain the unauthorised use of the IP rights, which would be taken if the infringer continues to use the IP rights within a given time frame.
The main goal of this action is to try to solve the issue without taking a contentious action.
There are also judicial remedies available, namely:
- formal claim for illegal use of IP rights: a lawsuit can be filed for illegal use of the IP rights, so as to ask the court the cease of all illegal actions representing infringement of intellectual property rights as well as indemnification for damages. Together with this procedure, and in order to stop and prevent damages, provisional precautionary measures can be requested which, in the time the process takes, would prevent the other party from performing the actions that are being denounced.
- Unfair competition: in this case, a legal action based on unfair competition could be filed, in an autonomous procedure or jointly with the formal claim for illegal use of IP rights. Unfair competition acts in intellectual property matters are those performed in the business field that are contrary to honest practices, that is, those that conflict with cultural norms accepted in certain time and place and that, therefore, are prohibited by commercial practice.
- Pretrial Procedure: International treaties executed by Venezuela and the Venezuelan Copyright Law provide that the holder of a violated right can request the relevant Court to order precautionary measures, prior to, during or after the filing of a lawsuit for illegal use of trademark, in order to prevent the carrying out, continuance and/or consequences of the infringement. This action is initiated with the request for production of evidence presented before a Municipal Court in order to evidence the existence of the infringement. Once the infringement has been verified, the Court is asked to order the immediate cease of the actions constituting infringement.
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
It is necessary to analyse this situation in a case by case basis by reviewing the content of the website and is necessary to assert if it is commercialising infringing products in our country.
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
Yes, definitely registering second level domain name in Venezuela is highly recommended in order to avoid third parties registering such domains. In our jurisdictions the following domain names are available .com.ve; .co.ve; .net.ve; .info.ve; and .web.ve.
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
Since the withdrawal from the Andean Community and the consequent reinstatement of the Industrial Property Law, the classification system is not generally well understood by foreigners.
In this regard, the classification system is based on the Local Classification. The International Classification of Goods and Services is used as a reference and is acceptable as far it coincides with the Local Classification. This is similar to the system used in the US Trademark Office but instead of applying for one application with the international class and just named the local class (or as many local classes falling into one international class) the application must be filed indicating the Venezuelan local class and indicating the international class as reference. Therefore if a proposed application falls in more than one local class, it would be necessary to file as many applications as local classes involved.
In addition, the Venezuelan PTO requests that all new applications must be accompanied by an Official Search; therefore the filing procedure is not as expedite as trademark owners would like to have their applications filed.
Finally, it is not well understood the fact that applications must be published in a Local Newspaper prior its publication in the Official Bulletin. This requisite is established by the Industrial Property Law, thus although is considered as obsolete, is mandatory its compliance in order avoid the application be published as Abandoned due to the lack of such requirement.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
When registering a trademark in Venezuela is important to consider potential obstacles. It is therefore recommended that one analyses the Official Searches prior to filing in order to determine the source of possible conflicts.
If the registrant is the entity that will use the trademark or any authorised third party, so when the application matures into registration licence shall be recorded in order to defend its use.
- 20.Can a multi-class trademark application be filed in your country?
No, each class must be filed independently one from the other.
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Yes, our Industrial Property Law establishes that once an application is published in the Official Bulletin any third party may file an opposition, if considers that the application is confusingly similar to a previously registered or applied for registration. The oppositions must be filed within 30 days from the publication and such deadline is not extendible.
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
In the case of packaging we do recommend protecting them through trademark registrations. As for the marketing material it may be protected by copyrights.
In Venezuela copyrights are protected by the mere creation of the work and its registration is only declarative. However, if the copyright will be subject to licence or assignment of the economic rights, then would be necessary to register the Copyright at the Venezuelan Copyright Office.
- 23.Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
Although our law does not establish specifically the liability of internet service providers, in practice cease and desist letters are considered by the ISP and may remove the conflicting contents; considering that the penalties and fines are directed to the infringers; however ISPs may be considered as cooperators if once having been notified of the infringements, no actions are taken in order to prevent the continuance of such activities.
- 24.What is the standard of contributory copyright infringement in your country?
In the Venezuelan Industrial Property are no specific regulations in this regard; however, the standards for contributory infringement are the standards from our Criminal Code for accessories, aiders and abettors.
- 25.Does your country recognise intellectual or industrial property protection in databases?
Venezuela recognises intellectual property for database protection.
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
Yes; however, it must be previously specified by the parties in a contract. The benefit is that the procedure is not expensive as actions at Court and is expedite. The danger is that the decision issued by the arbitrators is final thus appeal can not be filed at court.
- 27.Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
The SENIAT has a division responsible for the enforcement of intellectual property rights during the importation and transit of goods through Venezuelan customs.
Applicable law (Administrative Decision of the SENIAT SNAT/2005/0915) stipulates that the SENIAT is empowered to conduct raids on a nationwide basis to preventively seize imported products that may infringe intellectual property rights.
Although SENIAT or any other government agency has not yet created a Registry for this purpose, it is acceptable to inform them about the existence of a particular IP right and how normally are brought to the Venezuelan territory, thus if the custom authorities detect any discrepancy, the shall notify the owner or its representative.
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
There are no major developments or anticipated changes in our intellectual property law.
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
The main significant court decision was issued by the Supreme Court of Justice regarding the notoriety of the Hugo Boss trademark. This statement is a step forward to the criteria sustained by the Trademark Office, which for some years has been considered reluctant to recognise the reputation of a mark.
This case was initiated by an opposition lodged by the German company Hugo Boss AG, against the registration of the Boss Citadino trademark, filed in 1988, on behalf of Citadino International, CA. In 1995, the Trademark Office upheld the opposition filed and acknowledged Hugo Boss as well known. The applicant Citadino International, CA, filed a reconsideration petition and in 1997 the Trademark Office ratified trademark Hugo Boss as well known thus dismissing the reconsideration petition. After analysing the evidence submitted in support of the alleged reputation, the Trademark Office was able to recognise the famous character of the mark. However, the applicant company Citadino International, CA, submitted an appeal before the Ministry of Industries and Commerce (former Ministry of Production and Commerce). The Ministry did not acknowledge the evidence filed in support of the reputation of Hugo Boss filed and upheld the appeal, on the grounds of lack of evidence to prove the reputation Hugo Boss on behalf of Hugo Boss AG.
A nullity action before the Supreme Court of Justice was submitted and the Court ruled that the Minister ignored the facts found by the Trademark Office to establish as a basis for its decision, the absolute lack of evidence of the fame of the mark. The fame of the mark Hugo Boss was declared by the Trademark Office since it considered that this fact was the result of ‘knowledge and extensive international exposure, subregional, national advertising disclosure, length and consistency in the use, commercial success and market leadership’.
- 30.Has your country adopted a national legal framework for the protection of personal information in computerised form? If so, generally describe the scope of the framework, who must comply with its requirements, and the consequences of non-compliance. If not, describe how your country regulates personal data security and privacy.
Venezuela has not adopted a thorough, comprehensive national legal framework for the protection of personal information. It regulates data security and privacy through several instruments.
First, there are two constitutional provisions regarding the right to privacy and habeas data. (Articles 28 and 60 of the Constitution). Second, the comprehensive binding decision on Data Privacy Protection issued on 4 August 2011 by the Constitutional Law Chamber of the Supreme Tribunal of Venezuela. Third, several laws touch on matters of data privacy and security:
- constitutional provisions and their binding interpretation by the Venezuelan Supreme Court:
- Article 28: Every person has the right to access the information and data regarding herself or her patrimony in official or private registries, with the exceptions provided by law, as well as to know the use of same [data] and their purpose, and to request before the court with jurisdiction the updating, correction or destruction of such [data] if they are erroneous or affect her rights illegitimately. Likewise, every person may access documents of any nature that contain information which knowledge is of interest to to communities or groups of persons. The secrecy of journalistic information sources and of other professions established by law remains safe; and
- Article 60: Every person has the right to the protection of her honour, private life, intimacy, their own image, confidentiality and reputation. The Law shall limit the use of information systems to guarantee the honour and personal and family intimacy of citizens and the full exercise of their rights;
- the Supreme Court’s decision on data privacy protection: the Supreme Court reiterated that Article 28 of the Constitution grants a double right: The right to gather information on persons and their patrimony, and the right of the person which data has been gathered to access such data which may reside in public or private registries. The Court provided that any regulation or system on personal data that contains information of any kind regarding specific or determinable individuals or legal entities must guarantee:
- the principle of freedom of will, which entails the necessary existence of a prior, informed, unequivocal and revocable freely-given consent for the use or gathering of personal data;
- the legality principle: limitations to information self-determination must result only from norms of legal rank;
- the purpose and quality principle: gathering of data must respond to specific causes or purposes which cannot be against the constitutional or sectorial legal regime;
- temporality and conservation principle: Data conservation extends to the achievement of the purpose for which the data were collected, that is to say, to the causes that justified the gathering and processing;
- the accuracy and self-determination principle: data must be kept exact, complete and updated, according to the real situation of the person they refer to;
- the caution and integrity principle: analysis of possible impacts on the data subject must take into consideration data that is part of other registries and their potential links. No data lacks per se legal relevance;
- the security and confidentiality principle: technical and organisational measures must be taken to protect data against adulteration, accidental destruction or loss, unauthorised access or fraudulent use;
- the tutelage principle: persons must have extrajudicial means to guarantee their right to personal data protection, which implies the existence of public entities that exercise such authority, hear complaints from interested parties, implement models to measure efficacy of personal data protection. This is a call for establishing a personal data protection regulator; and
- the responsibility principle: violations to personal data protection rights must generate civil, criminal and administrative penalties in accordance with the law;
- legal instruments:
- the Law Against Computer Crimes. which punishes those that seize, use, modify or eliminate by any means, without the owner’s consent, the data or information about another or over which the latter has a legitimate interest which is incorporated in a computer or information technology system. The Law also punishes those that disclose, publish or transfer data or information obtained in such a manner;
- the Law of Banking Sector Institutions;
- the Law for the Defence of People in the Access to Goods and Services; and
- the Organic Law on Health.
These laws will be discussed under question 32 below.
- constitutional provisions and their binding interpretation by the Venezuelan Supreme Court:
- 31.Does your country’s data protection regime distinguish between sensitive and non-sensitive data?
There is no consistent legal definition of sensitive vs. non-sensitive data. The constitutional provisions on privacy and habeas data refer to information regarding a person of her patrimony (goods), while the Law of Banking Institutions prohibits disclosure to third parties of ‘any information about passive or active operations with users, unless authorised in writing by them [the users]”.
- 32.Do special data protection rules apply to certain industries, such as financial services, health care, telecommunications? Give details.
Yes. There are specific provisions applicable to the banking sector, health and consumer protection.
Banking
The Law on the Banking Sector Institutions prohibits the banking institutions and their staff from disclosing to third parties (except public sector entities specifically listed in the Law) any information about passive or active operations with users, unless authorised in writing. The Law also prohibits Banking Institutions from moving their computing centers and their data bases regarding their users to foreign territory or to branches subject to foreign law. Such data bases shall be confidential and can only be used for the purposes authorised by law.Health
The Organic Law on Health expressly grants patients the right to the confidential treatment of their health information.Consumer Protection
The Law for the Defence of People’s Right to Access Goods and Services provides that in electronic transactions, the supplier must guarantee privacy and confidentiality of data and information involved in the transactions so that the exchange information is not accessible to unauthorised third parties.Telecommunications: The Organic Law of Telecommunications provides that regulations aimed at protecting personal data and privacy may be issued in connection with telecommunication services and their providers.
- 33.Are there registration, notice, or official licence requirements with government entities in connection with the collection, use, storage, transfer or sharing of personal data? If so, what are they?
No. There are no provisions requiring prior registration or obtaining a licence in connection with the collection, use, storage, transfer or sharing of personal data.
- 34.Does your jurisdiction require notice to affected individuals or a governmental authority in the event of personal data compromise? If so, in what circumstances and are there any special notice requirements?
No, there are no specific procedural provisions requiring a formal notice by the data handler to the data subject (individual) or to a specific governmental authority in the event of a personal data compromise.
- 35.Does your country require companies doing business there to publish and distribute a statement or policy describing its personal data security and processing practices?
Venezuela does not require that a business publish and distribute a data privacy or security statement or policy.
- 36.Does your country require that individuals are given notice and consent to the collection, use, sharing or exportation of personal data?
Due to the binding interpretation issued by the Constitutional Chamber of the Supreme Court summarised above, it can be argued that collection, use, sharing and export of personal data will require the prior consent of the data subject.
- 37.Does your country impose restrictions on the exportation of personal data to another jurisdiction? If so, what are they?
The Law of Banking Sector Institutions prohibits moving data bases abroad.
The Supreme Court’s decision provides explicitly that ‘it must be guaranteed that no international transfers of data shall proceed to the territory of States which legislation does not guarantee a minimum of personal data protection according to the preceding principles, taking into consideration the nature of the data, the concurring circumstances in each case, such as the applicable legal regime and the consent of the potentially affected party.’
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