Trademarks Comparative Guide

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The main source of rights for patents, designs, trademarks and indications of origin is Decision 486, which is the common statute for the Andean countries - that is, Bolivia, Colombia, Ecuador and Peru. This statute sets forth the general provisions that govern trademark activity. In addition to this statute, the Trade Mark Law 1918 is valid in all respects that do not counter the provisions of Decision 486.

1.2 How do trademark rights arise (ie, through use or registration)?

Trademark rights in Bolivia arise only through registration on a first come, first served basis. Use will be to no avail, as rights arise through a formal registration process which ends with the issuance of a registration certificate.

1.3 What is the statutory or other source of the trademark registration scheme?

The main sources governing trademark registration are:

Andean Decision 486; Decree 20791, effective 10 May 1985, adopting the international classification system; Administrative Procedure Law 2341 and its bylaws; and the bylaws of the National Intellectual Property Service.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Trademarks, service marks, collective marks, certification marks and slogans serve all as identifiers under the law. Trademarks can be in graphical or three-dimensional form; smells and sounds can also function as trademarks.

Anything that has the capacity to serve as an identifier and that can be graphically represented may constitute a trademark.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

To function as a trademark, a designation or other identifier must be able to be represented graphically. As such, all types of marks mentioned in question 2.1 constitute a mark, as they can all be graphically represented (for smells or sounds, the chemical formula or the stave with the specific notes, respectively, will suffice).

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Elements that cannot function as marks include:

the names, flags, emblems and symbols of state, national or regional bodies or international organisations; and marks that are ineligible under absolute grounds for refusal, such as generic and descriptive marks, and marks that contravene public order and good morals.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The trademark registration process is governed by the National Intellectual Property Service (SENAPI), which regulates the issuance, cancellation and nullification of trademarks, and regulates most acts that affect rights and ownership of trademarks.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The fee that SENAPI charges for the filing, prosecution and issuance of a registration is approximately $250 plus the cost of publication, which is about $40 depending on length. There are additional associated out-of-pocket expenses.

3.3 Does the trademark office use the Nice Classification scheme?

Yes, SENAPI uses the Nice Classification system of goods and services, as adopted on 10 May 1985. Classes 43, 44 and 45 were adopted in April 2002.

3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

Class-wide applications are not allowed. Expressions such as 'all products included in this class' are not permitted. Applicants must specify the goods or services for which protection is sought.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

No, intent to use is not a requirement in Bolivia; thus, no bona fide intention to use the trademark need be filed to apply for registration.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, SENAPI performs a relative examination of earlier trademark applications and registrations. This relative examination usually covers identical or very similar trademarks and the related products or services. If very similar or identical marks are found in the same class or in a class with similar products, the application may be refused registration.

3.7 What types of examinations does the trademark office perform other than relative examination?

The first examination that SENAPI conducts is a pro forma examination, which seeks to determine whether all formal requirements have been met, the goods and services have been correctly classified and so on. Subsequently, SENAPI conducts a subject-matter examination on both absolute...

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