New Opposition/Cancellation Provisions And Covid-19 Update

Published date10 June 2020
AuthorMr Sahil Yadav
Subject MatterIntellectual Property, Coronavirus (COVID-19), Trademark, Operational Impacts and Strategy
Law FirmFross Zelnick Lehrman & Zissu, PC

The Venezuelan Intellectual Property Office (SAPI) published a series of official decisions via an official communication on February 7, 2020, that introduced new procedures for trademark oppositions and non-use cancellation actions in Venezuela. A summary of these provisions follows:

Adoption of the 11th edition of the Nice International Classification of Goods and Services

The most integral change implemented by SAPI is the adoption of the Nice International Classification of Goods and Services which will eventually affect all trademark procedures across the board including trademark oppositions and non-use cancellation actions.

The change is important since it will mean that the national classification under the Industrial Property Law will no longer apply. Since 2008, when Venezuela exited the Andean Pact and reinstated its outdated Industrial Property Law of 1956, Venezuela followed a dual-classification system to accommodate both the local classification system and the international classification system. This resulted in trademark owners having to file more than one trademark application to cover a single Nice class for one mark.

The adoption of a single-classification system will enable trademark owners to avoid having to file multiple trademark applications which in turn should reduce the number of oppositions filed.

Introduction of fee for filing oppositions and expedited service for oppositions

Starting from February 10, 2020, SAPI has begun to charge, for the first time, an official fee of roughly US $120 for filing an opposition against a mark published in the Industrial Property Bulletin. A payment receipt of the official fee must be included with the Notice of Opposition in order for the opposition to be processed.

Further, SAPI has introduced a new expedited service for oppositions on payment of a fee of roughly another US $120 (based on current market rates) which will ensure a first-instance decision within 120 working days of the opposition filing date. If a decision is not provided within this time, the opposition may be referred to a judicial court. This new service is expected to be made available this current year. The expedited service may be requested for new oppositions as well as for pending oppositions filed between February 16, 2004 and February 17, 2020.

New rules to be introduced in non-use cancellation actions

Currently, to file a non-use cancellation action, the...

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