Trademarks Overview 2008

Originally published in Getting The Deal Through - Trademarks

2008. Contributing Editors: Joseph Nicholson and Stuart Sinder.

Published by Getting The Deal Through.

1. Ownership Of Marks

Who may apply?

Any person or entity can apply for a mark in El Salvador,

regardless of nationality, domicile or establishment.

2. Scope Of Trademark

What may and may not be protected and registered as a

trademark?

A trademark may consist of words or sets of words, including

names of people, letters, numbers, monograms, figures, pictures,

labels, shields, printings, fringes, lines and stripes, sounds,

scents or combinations and dispositions of colours, as stated in

our Trademark Act and in the Trademark Law Treaty (TLT), recently

ratified by El Salvador. Trademarks may also consist of the form,

presentation or preparation of products, or their packages or

envelopes, or the corresponding means or premises of expended

products or services (trade dress). Geographic indications may also

be protectable as trademarks.

The following may not be protected and registered as trademarks

for intrinsic reasons if:

it consists of the usual or current form of the goods for which

registration is sought, or their packaging, or a form that is

necessary due to the nature of the goods or services;

it consists of a form that gives a functional or technical

advantage to the goods or services for which registration is

sought;

it consists of a common or usual name, term or designation of

the goods or services in usual, technical, scientific or commercial

language;

it serves in trade to describe a characteristic of the goods or

services;

it is a simple, isolated colour;

it is a letter or digit separately considered, unless

represented in special and distinguishing form;

it is contrary to morality or public order;

it includes elements that offend or ridicule people, ideas,

religions or national symbols of any country or international

organisation;

it could mislead or cause confusion as to the geographical

origin, nature, method of manufacture, qualities, aptitude for use

or consumption, amount or some other characteristic of the goods or

services;

it totally or partially reproduces or imitates the coat of

arms, flag, emblem, denomination or abbreviation of denomination of

any state or international organisation, without express

consent;

it totally or partially reproduces or imitates an official sign

of control or guarantee adopted by a state or public organisation,

without express consent;

it reproduces currencies or bills of legal tender, titles or

other documents, seals, stamps or fiscal stamps;

it includes or reproduces medals, prizes, diplomas or other

elements that suggest the goods or services have won an award,

unless such an award has in fact been granted to the applicant or

to its cause and this is duly credited;

it consists of the name of a protected vegetal variety in El

Salvador or abroad; or

it is a certification mark whose registry is to expire, was

annulled, cancelled or has been left unused by dissolution or

disappearance of its owner. In such cases, no use or registration

would be allowed during 10 years counted from the respective

cancellation, annulment, dissolution or disappearance.

Additionally, a trademark may not be protected and registered

if, upon examination, the Registrar of Trademarks determines that

it violates third-party rights ? for example, if:

it is identical or similar to a third party's mark

registered or the subject of an application for goods or services

related to those protected by a registered or pending mark, when

that use may cause confusion;

it has visual, phonetic, olfactory or conceptual similarity to

a third party's mark or distinctive sign registered or filed

previously, for goods or services related to those protected by a

registered mark or one that is the subject of an application, where

this may cause confusion;

it is likely to cause confusion because it is identical or

similar to a third party's trade name or emblem already used in

El Salvador for similar commercial activities;

it constitutes a full or partial reproduction, imitation,

translation or transcription of a third party's well-known mark

and that use may cause confusion or a risk of association with the

third party's mark, or take unjust advantage of the notoriety

of the well-known sign. The goods and services covered by the

proposed registration need not be identical or similar to those

identified by the well-known mark, but there must exist some

connection between the respective parties' goods or

services;

it affects a third party's personality rights or consists,

fully or partially, of a third party's name, signature, title,

pseudonym or image, unless the third party or his or her heirs

expressly grant consent;

it affects the right to the name, image or reputation of a

local, regional or national collective, unless consent is properly

granted;

it is likely to cause confusion with a pre-existing protected

appellation of origin;

it is likely to infringe a third party's copyright or

industrial property rights, unless consent is granted; or

it has been applied for in order to perpetrate or consolidate

an act of unfair competition.

3. Obtaining A Trademark

How long does it typically take, and how much does it

typically cost to obtain a trademark registration?

The registration procedure takes approximately six to eight

months if no Office action arises and its typical cost per mark in

each class is approximately US$500 to US$600. Cost can vary

depending on length of the notice for publication, which

mandatorily lists the goods or services covered. Since El Salvador

recently ratified the TLT, multi-class applications may now be

filed. But the official fee charged by the Trademark Office per

mark in each class if multi-class application has been filed is

still the same as if a single application were filed. At this time

multi-class applications are treated as individual class

applications, so no real benefit is obtained from it, as of

now.

4. Classification System

What classification system is followed, and what goods

or services may be claimed?

Whatever is the current edition of the Nice Classification of

Goods and Services. The ninth edition is currently in use. One can

claim a limited list of goods or services, the class heading or an

extensive list of goods or services that fall within the class of

interest.

5. Conflicts With Other Trademarks

Are applications examined for conflicts with other

trademarks? What is the procedure followed in the Trademark

Office?

Yes. Applications are examined after filing to determine whether

they fall in the criteria discussed in question 2. Once the

application meets all formalities, an examining attorney conducts

his examination based on his criteria and on a printed report of

the Registry's database. If the mark passes the examination, it

is admitted and a notice for publication is served to the applicant

or its local counsel.

6. Use Of A Trademark And Registration

Does use of a trademark or service mark have to be

claimed before a registration is granted? Does proof of use have to

be submitted? If registration is granted without use, is there a

time by which use must begin to maintain the

registration?

No use needs to be claimed for the granting of a registration.

Proof of use would be submitted as a defence if a cancellation

action for non-use has been filed in a mercantile court. No use is

required for granting the renewal of a registered mark.

A cancellation action for non-use can be filed if the mark has

not been used during five years after its registration date. This

figure was reintroduced in 2006 and, considering that the law is

not...