Chapter I trademarks of products and services




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TRADEMARK LAW No. 1294/98

THE CONGRESS OF THE PARAGUAYAN NATION SANCTIONS


WITH THE FORCE OF LAW:

TITLE I

TRADEMARKS

CHAPTER I - TRADEMARKS OF PRODUCTS AND SERVICES

Article 1. Trademarks are all signs that serve to distinguish products or services. Trademarks may consist of one or more words, themes, emblems, monograms, stamps, vignettes, embossments; names, fantasy words, letters and numbers with different forms or combinations; combinations and dispositions of colors, labels, containers and wrappings. Trademarks may also consist of the shape, presentation or conditioning of products or of their containers or wrappings, or of the means or places of sale of the products or corresponding services. This list is simply illustrative.

Article 2. The following may not be registered as trademarks:

  1. signs or distinguishing means that are contrary to the law, public order, morals and good customs; signs and distinguishing means that may be deceitful or confusing with respect to origin, mode of manufacture, characteristics or aptitude and purpose of use of the services and products to which they refer;

  2. Shields, distinguishing marks, emblems, names, whose use correspond to the State, other public juristic persons and international organizations themselves, unless these persons and organizations request said registration;

  3. The usual or current forms of a product or its container, the forms that are necessary in a given product or service, or the forms that grant a functional or technical advantage to the product or service to which they are applied;

  4. An isolated color;



  1. Things that consist solely of a sign that is the generic or technical name of a given product or service, or that can be used in commerce to qualify or describe a characteristic of a product or service;

  2. Signs that are identical or similar to a trademark that has been registered or whose registration has been applied for by a third party at a prior date, for the same products or services, or for different products or services, when they may bring about a risk of confusion or association with said trademark;

  3. A sign that constitutes a total or partial reproduction, imitation, translation,

transliteration, or transcription of a sign that is distinguishing, identical or similar,

or notoriously well known in the pertinent sector of the public, which sign belongs to

a third party, whatever the products or services to which the sign is applied, when

its use or registration may be susceptible of causing confusion or risk of association

with said third party, or should signify an exploitation of the notoriety of the sign or

a dilution of its distinctive force, whatever the way or means by which the sign

became known;


  1. Signs that infringe upon a copyright or an industrial property right of a third party;

  2. A sign that has been applied for or registered by a person who does not possess a legitimate right to do so or knows or should know that the sign belongs to a third party;

  3. Names, nicknames, pseudonyms or photographs which may be related to living persons, without the consent of the latter, or to deceased persons, without the consent of their heirs, up to the fourth degree of consanguinity, or any sign that may affect the right of the personality of a third party, except with this person's consent;

  1. Signs that consist of or contain a geographical indication, as defined in the present law.

Article 3. The nature of the product or service to which a trademark is to be applied shall, in no case, be an obstacle for its registration.

 

CHAPTER II - REGISTRATION, ITS FORMALITIES AND RIGHT OF OWNERSHIP OF TRADEMARKS



Article 4. The application for registration of a trademark must be filed at the Office of Industrial Property, which will issue the corresponding receipt.

Article 5. For the purpose of registration, the application shall be in writing and shall include the following:

  1. Name, domicile, and signature of the applicant and of his sponsor or attorney, as the case may be;

  2. Denomination of the trademark, or its reproduction facsimile when it is a figurative, combined or three-dimensional trademark; if it is any other kind of sign, the graphic representation of same;

  3. Specification of products or services that the trademark will distinguish, with an indication of their class; and

  4. A provisional general or special power of attorney when the interested party does not appear personally. The applicant or his/her attorney shall establish his/her domicile in the Capital of the Republic. Juridical persons may appear only through their attorneys, who must be licensed agents of industrial property.

Article 6. The Industrial Property Office, for the benefit of the public, may deny the registration of a trademark that is identical or very similar to another trademark that has been registered for the same product or service, notifying the applicant of said denial, even if the owner of the previously registered trademark has given his consent. The registration applied for may be given for only some of the products or services included in the application, or a limitation may be established for certain products or services, when a total denial is not justified.

Article 7. The registration of a trademark shall be granted only under one class of the official nomenclature. In order to register a single trademark under several classes, a separate application is required for each class.

Article 8. The products need not be specified when the registration of a trademark is requested for all those included in one of the classes of the official nomenclature. When the registration of a service trademark is applied for, such a specification shall be obligatory.

Article 9. The owner of a registration may, at any time, request that the list of products or services included in the registration of a trademark be reduced, or that a material error in the registration granted be corrected.

Article 10. When in a denomination, label or drawing, whose registration is applied for, the name of a product or service is included; the trademark shall be valid only for said product or service.

Article 11. The Office of Industrial Property shall assign a presentation date to an application, which shall include at least the identification and address of the applicant, and shall fulfill the requirements mentioned in paragraphs (b) and (c) of Article 5, which shall distinguish the trademark.

Article 12. Priority regarding the right to obtain registration for a trademark shall be determined by the date and hour of the filing before the Office of Industrial Property. In the application for registration, the applicant may invoke his/her right of priority on the basis of a previous application for registration, for the same trademark or for the same products or services; said priority may be the result of an application filed in a State that is obligated by a treaty or agreement to which Paraguay is a party.

Article 13. Once all the legal requirements have been fulfilled and the terms have expired, and if the trademark does not fall within any of the prohibitions included in this law, the Office of Industrial Property shall grant a registration of a trademark, after the corresponding taxes and fees have been paid. If the registration has been denied, the respective resolution shall contain the reasons for said denial.

Article 14. The Office of Industrial Property shall issue a certificate of registration of the trademark, which certificate shall include the corresponding data and those established by the provisions of the regulations.

Article 15. The registration of a trademark carried out in accordance with this law, grants its owner the right to the exclusive use of same and to exercise the corresponding measures and actions before the jurisdictional organs and against the persons that infringe upon his/her rights. In addition, said registration grants said owner the right to oppose the registration and use of any other trademark that may, directly or indirectly, cause confusion or association among the products of services, whatever class they may be included in, provided that there is a relationship among them.

Article 16. When the trademark consists of a label or another sign composed of a group of elements, the protection regarding exclusiveness shall not extend to the elements contained in the trademark, when they are of common use or necessary in commercial activities.

Article 17. Free circulation of trademarked products, legitimately introduced into commerce in any country by the trademark owner or with authorization of same, shall not be impeded on the basis of the registration of the trademark, as long as said products, as well as their containers or packaging have not suffered alterations, changes or harm.

Article 18. The owner of a trademark for products or services that has been registered abroad shall enjoy the guarantees granted by this law, once said trademark has been registered in this country.

The owner or his/her duly authorized agents are the only persons that may apply for registration.



Article 19. The registration of a trademark shall have a validity of ten years, and may be extended indefinitely for like periods, provided that its renewal is applied for during the last year prior to its expiry and as long as the same formalities as for registration are observed. The new term shall commence on the date of expiry of the prior registration.

The renewal of a registration may be applied for within a grace period of six months after expiration of the original registration; in this case, the applicant must pay the established late filing official fees, in addition to the corresponding renewal fee.



 

CHAPTER III - PUBLICITY REGARDING APPLICATIONS FOR REGISTRATION AND RENEWAL OF TRADEMARKS

Article 20. Once the application for registration of a trademark has been filed and its form has been examined, its publication shall be immediately ordered. The examination of registrability of the application shall be performed after expiration of the term allowed for opposition. Applications for renewal shall also be published.

Article 21. The time periods established in this Law relating to the publication of registrations shall be computed from the business day following the date of the last publication. The regulations related to this law shall determine the form in which the publication shall be made and the contents of the corresponding notice.

CHAPTER IV -  ABANDONMENT OF REGISTRATION APPLICATIONS AND LOSS OF PRIORITY RIGHT

Article 22. The abandonment for ninety days of any application for registration of a trademark shall cause a loss of the priority right regarding the trademark, and said right shall be passed successively to subsequent applicants.

Article 23. The term of ninety days shall be computed from the date of the last procedure. If there has been opposition to the application for registration of a trademark and a definitive resolution has been handed down, said term shall be computed from the date that said resolution becomes sound and final.

Article 24. The abandonment of an application for registration shall be determined, for the purposes of declaring same, by the passing of the term established, if the interested party has not taken action in the proceedings for registration of the trademark.

Article 25. The express abandonment of the application for registration of a trademark shall bring about the loss of the right of priority regarding registration.

Article 26. Regarding an application for renewal of a trademark, the term for abandonment to be so considered shall be one hundred eighty days, computed from the date of expiration of the registration or from the last procedure of an act after said expiration, and the pertinent provisions of this chapter shall be applied.

CHAPTER V - USE OF A REGISTERED TRADEMARK

Article 27. The use of a trademark is obligatory. If a trademark is not used, its registration shall be canceled upon request by an interested party:

  1. when a trademark has not been used for the term of five years immediately following the granting of its registration;

  2. when its use has been interrupted for a term exceeding five consecutive years; and

  3. when its use, within the terms stipulated in the two preceding paragraphs, has taken place with substantial alterations of the original distinctive character of the trademark as described in the original certificate of registration.

The cancellation shall not take place if the use of the trademark or its non-use, whichever the case may be, has been justified by a final judicial sentence in a prior trial, within the five-year terms stipulated in paragraphs (a) and (b). The cancellation shall not take place when the non-use can be justified by reason of force majeure.

The registration of a trademark not used in one class shall not be canceled, if said trademark was used in marketing a product or in rendering a service included in other classes.

An action requesting cancellation due to non-use shall be filed in civil and commercial judicial courts. The person obtaining a favorable cancellation judgment shall have a preferential right of registration of the trademark in question, if he/she applies for said registration within three months after the date on which said judgment becomes sound and final.

Article 28. The burden of proof of the use of a trademark is upon the owner of the registration. The use of a trademark shall be proven by any means of evidence admitted by law, which ascertains that a trademark has been used publicly and effectively.

Article 29. A registered trademark is in use when the products or services that bear said trademark have been placed in commerce or are available in the marketplace with said trademark, in the amount and manner that is appropriate for the nature of said products or services and the form of their marketing; the size of the market is to be taken into account as well.

The use of a trademark with the purpose of advertising the introduction into the marketplace of goods or services shall also be construed as use, provided that said use is made within four months of the initiation of the advertising campaign.



Article 30. The use of a trademark must be made as it appears in the registration, but if said use is different with respect to details or secondary elements, this fact shall not constitute a cause for canceling the registration. The use of a trademark on one or several products or services included in a class shall justly imply that the trademark has been used on all the products or services of said class.

CHAPTER VI - LICENSES FOR USE OF A TRADEMARK

Article 31. The owner of a registered trademark may, by written contract, grant a license to use same, including all or only some of the products or services that the trademark covers.

Article 32. A license to use a trademark must be recorded with the Office of Industrial Property in order that the license have legal effects against third parties from the time of its recording. The application for registration shall be accompanied by a copy of said licensing contract or a summary of same, written in Spanish or translated into this language. A summary of substantial parts of the contract shall be published according to the provisions of the respective regulations. For the purposes of the validity of the evidence of use, the registration of the license to use a trademark is irrelevant.

Article 33. The recording of a license for use of a trademark may be requested by the licensor or by the licensee, without prejudice to what is stipulated in the contract.

Article 34. For the purposes of its recording, the contract regarding license for use of the trademark must necessarily include provisions that assure control on the part of the owner of the trademark over the quality of the products or services licensed, without prejudice to the control that the competent authorities may exercise for the defense of the consumer.

Article 35. Any clauses in the contract authorizing use of a trademark that impose upon the licensee restrictions regarding the use of the trademark, when said restrictions do not relate to the rights conveyed by the registration of the trademark, shall be null and void.

Article 36. If the provisions of this Law are not complied with, the Office of Industrial Property shall deny the recording of a license to use a trademark, by means of a resolution indicating the reasons for such a denial.

Article 37. The licensee shall have the right to use the trademark during the term that the license contract is valid, including its renewal periods, in all of the nation's territory, unless the contract provides otherwise, and the contract shall indicate the products or services that the license includes.

Article 38. Unless it is otherwise stipulated in the license contract, when the license has been granted in an exclusive capacity, the licensor shall not grant other licenses in the same territory and for the same trademark for the same products or services, nor shall the licensor himself/herself use said trademark in the same territory and for the same products or services. Franchise contracts, with respect to license of trademarks, shall abide by the provisions contained in this Chapter.

CHAPTER VII - ASSIGNMENT AND TRANSFER OF RIGHTS ON TRADEMARKS

Article 39. Rights on a registered trademark, or on a trademark whose registration has been applied for, may be assigned or transferred for all or some of the products or services for which a trademark has been registered or a registration applied for.

Article 40. The transfer of a registered trademark may be made independently with regard to the company that owns the trademark rights. The transfer of a company includes the transfer of its trademarks, unless expressly provided for otherwise.

Article 41. A trademark that consists of the commercial name of the company that owns it, or of an essential part of said name, may only be transferred together with the company or enterprise identified by said commercial name.

Article 42. The assignment or transfer shall be null if its purpose or result is to deceive the public, especially with regard to the nature, origin, mode of manufacture, characteristics, or aptitude of usage of the products and services to which the trademark is applied.

Article 43. The assignment or transfer of any registered trademark, when it is made within the national territory, must be made before a Notary Public. The assignment or transfer of a trademark, performed out of the national territory, shall be performed by means of a document which is valid in the country where the assignment or transfer is to take place.

Article 44. The assignment or transfer of a trademark shall have legal effects against third parties from the time of its recordal with the Office of Industrial Property. The application shall be published in accordance with the provisions of the Regulations; once this is done and after the respective fees and taxes have been paid, said recordal shall be ordered. Upon request by the interested party a certificate shall be issued.

Article 45. Any change in name, domicile, modification of juridical nature, merger, or any other alteration regarding the status of the owner of the trademark must be recorded with the Office of Industrial Property in order that said changes may cause effects for third parties.

CHAPTER VIII - OPPOSITION TO REGISTRATION

Article 46. An opposition to the registration of a trademark must be filed in writing with the Office of Industrial Property and the reasons for said opposition must be given, before the expiry of the term of sixty business days, computed from the first business day following the last publication.

Article 47. The opposition that has been filed shall be notified by means of an official document to the applicant or his/her attorney, who shall have eighteen business days to answer it. If there are facts to be proven, the case shall be open to the presentation of evidence for a term of forty business days, a term that shall be computed from the time the parties have been notified by official document. Instrumental evidence may be offered and added to the case records at any moment during said probatory term. Once a reply to the opposition has been filed, or if the case may be, once the probatory period has been closed, the files shall, without further action, await a decision, even if the opposition has not been answered. If one or more oppositions have been presented, all of them shall be resolved in one decision, by means of a resolution containing the reasons that support same.

Article 48. When in an opposition or cancellation procedure a person who has not registered a trademark is recognized as possessing the right to do so, he/she is obligated to apply for registration of said trademark within ninety days after the date on which the definitive resolution became effective. If this is not done, said person shall lose his/her right of priority.

Article 49. The heads of the respective sections shall resolve in the first instance all non litigious matters in which they are competent. The head of the Litigious Matters Section shall resolve in the first instance the controversies in which the Office of Industrial Property is competent. In all cases the reasons supporting the corresponding resolutions must be given.

Article 50. If forty days have passed and the head of the respective section has not issued a resolution, any of the interested parties may appeal and, if this is done, the case documents must be sent to the hierarchical superior.

Article 51. Any resolution of the heads of sections may be appealed within the term of five business days. Once this remedy has been granted, the appellant shall express grievances before the Director of the Office of Industrial Property who, after notifying the other party, shall dictate a resolution expressing the reasons for same; thus, the administrative instance shall have been completed.

Article 52. When in an opposition procedure and by means of a counterclaim, the cancellation of a trademark is alleged for reasons of non-use of same, the files of the case shall be sent forthwith to the sitting judge of the civil and commercial jurisdiction, in order that the case may be tried before said judge, in accordance with the rules of an ordinary trial.

CHAPTER IX - EXTINGUISHMENT OF A RIGHT

Article 53. The right of ownership of a trademark is extinguished:

a. when the owner renounces ownership;

b. when validity of the registration has expired and it has not been renewed; and

c. when there is a judicial resolution of nullity or expiry brought about by non-use of a registered trademark.



Article 54. Judicial authorities shall be competent to intervene in an action for nullification of a registration, after said registration has been obtained:

  1. when the provisions of the present law have been infringed upon; and

  2. when a registration has been obtained by fraudulent means or by a person who had no right to obtain said registration, or when the registration has been obtained causing damage to a person who had a better right to obtain said registration.

Article 55. The nullification action shall take place even in the absence of an opposition and shall prescribe after five years, computed from the date the registration is granted. There is no statute of limitation when there has been bad faith in the proceedings or the registration obtained is null.

CHAPTER X - EXPIRATION OF ADMINISTRATIVE INSTANCE

Article 56. The administrative instance shall expire de jure in all litigious matters when no procedural act has been performed for a term of six months after the most recent act.

CHAPTER XI - GEOGRAPHIC INDICATION

Article 57. The expression geographic indication is to be understood as the sign that identifies a product as originally from a country, region, locality or any other place, when a certain characteristic of the product, or its reputation, could be attributed essentially to its geographic origin.

Article 58. Only the producers, manufacturers or artisans who perform their activities in the place designated by the geographical indication may use said geographic indication in commerce with regard to the product that said geographic indication identifies. They may legally act to prevent any other person from using the geographic indication to identify products of the same genre that are not native to the place designated by said geographic indication.

Article 59. The use of a geographic indication is to be considered as such when said geographic indication is used for publicity purposes or in any commercial document related to the sale, exhibit or supply of products or services.

Article 60. Any interested party shall be entitled to file judicial action to prevent the use of any means that, when designating or presenting a product, indicates or suggests that the product comes from a geographic region that is not its true place of origin, or any other use that constitutes an act of unfair competition.

CHAPTER XII - COLLECTIVE TRADEMARK

Article 61. A collective trademark is any sign trademark that is used to indicate the origin or any other characteristic of products or services from different companies that use the trademark under the control of its owner.

Article 62. Entities that are legally authorized to operate may register collective trademarks for use by their members.

Article 63. The registration of a collective trademark must be requested by its owner, who shall expressly indicate the type of trademark and shall provide rules for the use of said trademark.

Article 64. The publication of the registration application shall also contain a summary of the rules of use, including the essential conditions of said use.

Article 65. The owner of a collective trademark shall inform the Office of Industrial Property about any changes in the rules for use of the collective trademark. The changes shall cause effects against third parties after they have been registered and published.

Article 66. Collective trademarks are subject to all other provisions of this Law related to trademarks.

CHAPTER XIII - CERTIFICATION MARK

Article 67. A certification mark is a sign applied to products or services whose characteristics or quality have been certified by the owner of the trademark.

Article 68. A certification mark may be owned by a national or foreign company or institution, of private or public law; or a state, regional or international entity.

Article 69. When the owner of the registration of a certification mark is a state entity, the registration of the certification mark shall have an indefinite duration, becoming extinct with the dissolution or disappearance of said state agency.

Article 70. A certification mark may be transferred only together with the entity that owns the registration.

Article 71. Certification marks are subject to all other provisions of this Law related to trademarks.



TITLE II

COMMERCIAL NAME

Article 72. A commercial name may be constituted by a designation, name of a business person, name or denomination that has been adopted for a company, emblem or acronym used legally in relation to a given commercial activity; a commercial name constitutes a property for the purposes of this Law.

Article 73. A commercial name must be sufficiently different from another name adopted or used earlier by another person performing the same or similar economic activity.

Article 74. A commercial name may not be constituted by a sign that due to its nature or to the use it could be given is contrary to morals and public order, or by a sign that may induce deception or confusion for commercial activities or for consumers, regarding the identity or nature of the company designated with said commercial name.

Article 75. The exclusive right to a commercial name is acquired through first use of said name in commerce. It is not necessary to register a commercial name in order to exercise the rights granted by the present Law.

Article 76. The owner of a commercial name shall have the right to prevent the use in commerce of a sign that is identical to the protected commercial name, or a similar sign when it is susceptible of causing confusion or there is a risk of its being associated with the owner's company or with its products or services, or when it could cause the owner unfair economic or commercial damage on account of the inappropriate use of the goodwill of the name or the goodwill of the company of said owner.

Article 77. The right to the commercial name is extinguished by the dissolution of the company or by the cessation of the activities of the company that uses it.

Article 78. The sale of a company includes the transfer of the respective commercial name, except when it is otherwise stipulated.

Article 79. A commercial name may be assigned or transferred only together with the company or the part of the company designated with that name.

TITLE III

UNFAIR COMPETITION

Article 80. Unfair competition is any act that is contrary to good practice and honest use with regard to industrial or commercial matters.

Article 81. The following are considered acts of unfair competition, among others:


  1. acts that are susceptible of causing confusion or a risk of association with respect to products, services, a company or a business belonging to other persons;

  2. false descriptions of products or services through the use of words, symbols and other means, which tend to induce deception of the public with respect to the nature, quality or usefulness of products and services;

  3. false geographic indications on products or services, through the use of words, symbols or any other means which tend to induce deception of the public; and

  4. direct or indirect use or imitation of a geographic indication, even when the true origin of the product is also given, or when the geographic indication is translated or is accompanied by expressions such as genre, type, manner, imitation, or other similar expressions;

  5. use or dissemination of false indications or allegations, which are capable of disparaging or discrediting products or services or companies belonging to others;

  6. use or dissemination of indications or allegations susceptible of causing error or confusion with respect to origin, manufacture, aptitude for use or consumption or other characteristics of products and services owned by the user or disseminator or by other persons;

  1. use of a marketed product by a third party in order to mold, trace or otherwise improperly copy said product for commercial purposes, taking advantage of someone else's efforts or goodwill;

  2. Improper use of a trademark.

Article 82. A manufacturer, industrialist or business person who may suffer damages due to unfair competition has the right to file judicial action with civil and commercial courts in order to demand that said unfair competition cease, or to prevent its repetition, and to obtain reparation for said damages.

Article 83. The judicial action against unfair competition shall prescribe two years after the unfair act has become known with certainty, or four years computed from the time said act was committed for the last time, whichever term expires first.



TITLE IV

CHAPTER I - CIVIL AND PENAL ACTIONS FOR INFRINGEMENT

Article 84. The owner of a right to exclusive use of a registered trademark or of a commercial name may initiate action before a judicial authority against any person who infringes upon said right. The following acts shall be considered infringements upon the rights of an owner of a registered trademark:

(a) to apply or place a trademark or a similar distinguishing sign on products for which the trademark has been registered, or on products related to the services for which the trademark has been registered, or on containers, wrappers, or packaging of said products;

(b) to delete or modify the trademark with commercial purposes after the trademark has been applied or placed on products;

(c) to manufacture labels, containers, wrappers, packaging and other materials on which are duplicated the trademark or commercial name, and market or unlawfully posses said materials;

(d) to refill or reuse with commercial purposes containers, wrappers or packaging which bear the trademark or commercial name;

(e) to use in commerce a sign identical or similar to the trademark or commercial name for any products or services when such use may cause confusion or a risk of association with the owner of the registration;

(f) to use in commerce a sign identical or similar to the trademark or commercial name for any products or services or activities when such use may cause the owner an unjust economic or commercial damage due to a dilution of the distinguishing force or of the commercial or advertising value of the sign, or due to the unjust exploitation of the prestige of the sign or its owner; and

(g) to use publicly a sign identical or similar to the trademark or commercial name, even if it is used for noncommercial purposes, when said use may cause a weakening of the distinguishing force or of the commercial or advertising value of the sign, or an unjust exploitation of its goodwill.

Article 85. In a final judgment following an action for infringement, the following measures may be ordered, among others:

(a) cessation of the acts that constitute the infringement;

(b) payment by the infringer of lawyers' fees and court costs and indemnization for damages;

(c) attachment or seizure of the products that caused the infringement, including containers, packaging, labels, printed matter or advertising materials and other materials that caused the infringement, and materials and means that were used principally to commit the infringement;

(d) prohibition of import or export of the products, materials or means used to commit the infringement; and

(e) implementation of necessary measures to avoid the continuation or repetition of the infringement, including the destruction of the products, materials or means used to commit the infringement, and imposition of a fine equivalent to the value of 500-2000 daily minimum wages, to be paid to the Office of Industrial Property.

Article 86. If the case involves products that bear a false trademark, it shall not suffice to delete or remove the trademark in order that the products be introduced into the market.

Article 87. A competent judicial authority may, at any time during the proceedings, order the defendant to provide all the information that he/she possesses regarding the persons that participated in the manufacture or marketing of the products or services that caused the infringement.

Article 88. The action for infringement shall prescribe two years after the owner had knowledge worthy of belief about the infringement, or four years after the infringement was committed for the last time.

Article 89. A one- to three-year jail sentence, which cannot be suspended, and a fine equivalent to 1,000-3,000 minimum daily wages, shall be imposed:

(a) on persons who falsify or adulterate a registered trademark;

(b) on persons who fraudulently imitate a trademark;

 


  1. on persons who knowingly have in warehouse, place on sale, sell or contribute to the sale of or circulate products or services that bear a trademark that is falsified, fraudulently imitated or unlawfully placed on products or services;

  2. on persons who, with a fraudulent intent, apply or have applied on a product or service any false statement or false designation with respect to the nature, quality, quantity, number, weight or measure, the name of the manufacturer or the place or country where the product or service has been manufactured or dispatched; and

  3. on persons who knowingly place on sale, sell or contribute to the sale of products or services that bear any of the false declarations mentioned in the preceding paragraph.

Article 90. The same punishment mentioned in the previous Article shall be applied to the persons who make fraudulent use of a commercial name.

Article 91. In order that an act of this nature be considered a delict, an imitation or fraudulent application of a trademark need not affect the whole of a given lot of merchandise; it suffices that the application be made on only one article of the genre.

Article 92. The same penalty mentioned in Article 89 shall be imposed on persons that through fraudulent or malicious actions, or any other unfair means, try to deviate the clientele of a commercial or industrial establishment for their own or a third party's benefit.

Article 93. The delicts enumerated in Articles 89 and 90 are of public penal action.

Article 94. The penal action shall prescribe in two years. The provisions of the Penal Code shall apply supplementally in matters not expressly covered by this Law.

CHAPTER II - PRECAUTIONARY MEASURES

Article 95. In the action filed for infringement of a right included in this Law, the judge may be petitioned by the trademark owner to apply immediate precautionary measures in order to prevent the infringement from taking place, to avoid its consequences, to obtain or conserve evidence, or to ensure the effectiveness of said action or obtaining payment for damages. Said precautionary measures may be petitioned before filing the action for infringement, together with it or after it has been filed.

Article 96. Precautionary measures are:


  1. immediate cessation of the acts that constitute the infringement;

  2. attachment or seizure of the products, packaging, labels and other material that bear the trademark that has been infringed upon, and of the machinery and other means used to commit the infringement. In the penal jurisdiction, said means shall be destroyed if, within an expert investigation as part of the judicial action related to the precautionary measure, the infringement is confirmed; this may be possible without awaiting the final sentence.

  3. suspension of the import or export of the products, materials and means referred to in paragraph (b); and

  4. suspension of the effects of registration and of the use of the trademark while the judicial action is being carried out.

Article 97. The precautionary measure shall be ordered when it has been proven that the right invoked is legitimate and that a delay may be dangerous. The judge may require that sufficient securities or guarantees be granted.

Article 98. Any precautionary measure shall be nullified ipso jure if the pertinent action is not filed within fifteen business days after said measure has been executed.

Article 99. Precautionary measures or other measures that are to be applied at the nation's frontier shall be applied by the customs authorities at the time of importation, exportation or transit of the products that are the objects of the infringement or of the materials and means that served principally to commit the infringement.

CHAPTER III - MEASURES AT THE NATION'S BORDER

Article 100. The owner of a registered trademark who has motives based on valid reasons to assume that an importation or exportation of products that infringe upon a right protected by this Law is being prepared, may petition the customs authority that said importation or exportation be suspended at the time of its clearance through customs. The conditions and guarantees applicable to the above mentioned precautionary measures are also applicable to said request and to the order dictated by said authority.

Article 101. The person who petitions that measures be applied at the nation's frontier must convey to the customs authorities the necessary information and a sufficiently precise description of the merchandise in order that it may be recognized.

Article 102. Once the conditions and applicable guarantees have been fulfilled, the customs authority shall order or deny the suspension petitioned and shall communicate its decision to the petitioner. The decision of the customs authority shall not be definitive.

Article 103. Once the suspension has been carried out, the customs authorities shall give notice of same to the importer or exporter of the merchandise and to the petitioner of the measure.

Article 104. If ten business days pass after the suspension has been notified to the petitioner of the measure and said petitioner has not communicated to the customs authorities that a judicial action has been filed regarding the infringement or that a judge has ordered precautionary measures designed to extend the suspension, the suspension shall be lifted and the merchandise seized shall be cleared through customs.

Article 105. Once judicial action regarding the infringement has been filed, the affected party may petition the judge in order that the judge reconsider the suspension and the affected party shall be given an audience to that effect. The judge may decide to modify, revoke, or confirm the suspension.

Article 106. In order to justify the extension of the suspension regarding the merchandise retained by the customs authorities, or to support an action for infringement, the judge shall permit the owner of the trademark to inspect the merchandise. The importer or exporter of the merchandise shall have the same right to inspect. Upon permitting the inspection, the judge may take whatever actions are necessary to protect confidential information, when relevant.

Article 107. Once the existence of an infringement has been verified, the plaintiff shall be informed of the name and address of the consignor, importer or exporter, and consignee of the merchandise, and the quantity of the merchandise whose clearance through customs has been suspended.

Article 108. If the products involved bear false trademarks and the products have been retained by the customs authorities, it shall not be permitted that said products be re-exported in the same condition nor that they be submitted to a different customs procedure.

Article 109. A person who has been granted ownership of a trademark may register the trademark with the General Customs Office in order that this entity may verify the legitimacy of the products whose customs clearance has been requested. The registration with the General Customs Office shall be regulated by the Executive Power.

Article 110. Once the registration has been carried out at the General Customs Office, the owner of the trademark may request that he/she be informed of the requests for clearance of products that bear the trademark, when the manufacturer is not the owner himself/herself. The owner of the trademark may also request that the customs clearance of the products be suspended until their legitimacy is verified.

Article 111. Registration with the General Customs Office is not obligatory in order to exercise any of the rights conveyed by this Law.

TITLE V

INDUSTRIAL PROPERTY AGENTS

Article 112. The profession of Industrial Property Agent Agente de la Propiedad Industrial is hereby recognized with regard to the proceedings that are of the competency of the Office of Industrial Property.

Article 113. In order to exercise the profession of Industrial Property Agent, the interested person must have the title of Attorney at Law and be registered in the Registry of Agents at the Office of Industrial Property.

Article 114. The persons who without having the title of Attorney at Law were already registered as Industrial Property Agents before this Law was promulgated, may continue exercising the profession. However, in litigious matters they must act under the sponsorship of an Attorney at Law.

Article 115. The notarial copy of any power of attorney that empowers a person to act in the administrative instance in matters that fall within the competency of the Office of Industrial Property, regardless of the place where said power was granted, must necessarily be registered at a registry that the Office of Industrial Property shall make available for this purpose. Consular legalization of powers of attorney granted in a foreign country to Industrial Property Agents in order that they may act before the Office of Industrial Property shall not be necessary; said notarial copy is sufficient.

Article 116. A power of attorney granted by letter, telegram, fax, telex or electronic mail to an Industrial Property Agent shall empower him/her to act in accordance with his/her mandate, provided that the power of attorney is presented within the term of sixty business days.

Article 117. In all proceedings carried out before the Office of Industrial Property, the intervention of an Industrial Property Agent as a sponsor or proxy shall be required, and the same formalities established for the application for registration of a trademark shall be followed, whenever applicable.

TITLE VI

OFFICIAL FEES

Article 118. The Law sets forth the official fees that are to be paid.

Article 119. The income derived from the collection of fees as established in the preceding Article and from the collection of fines stipulated in the present Law shall be deposited in a special account at the Central Bank of Paraguay, opened in the name of the Ministry of Industry and Commerce, and overseen by the Ministry of Finance. Said income shall be included in the General Budget of the Nation beginning the year following the promulgation of this Law, and investment of the proceeds shall be programmed by the Office of Industrial Property.

TITLE VII

OFFICE OF INDUSTRIAL PROPERTY

Article 120. The Office of Industrial Property, a department of the Ministry of Industry and Commerce, is the competent entity regarding the administrative jurisdiction dealing with trademarks; said Office shall be governed by the provisions of the present Law, other pertinent legal provisions and the regulations that the Executive Power should dictate.

Article 121. The Office of Industrial Property shall be headed by a Director, appointed by the Executive Power, upon his/her nomination by the Ministry of Industry and Commerce.

Article 122. The Office of Industrial Property shall publish an official organ which shall include the judicial acts required by this Law, the registrations granted and their renewals, as well as the resolutions and final judicial decisions related to the revocation, annulment or cancellation of any registration. Said publication shall be for informative purposes only; it shall not imply that it is a notification, and it shall be published without prejudice to any other publication determined by the Regulations.

Article 123. In order to be Director of the Office of Industrial Property, the person designated must be a Paraguayan citizen, thirty years of age, and by profession an Attorney at Law; he/she must also have a known moral solvency. Said Director may not exercise any other remunerated activity, with the exception of teaching.

TITLE VIII

LEGAL REMEDIES AND GENERAL PROVISIONS

Article 124. Against any resolution, be it interlocutory or final, the following remedies apply:

(a) reconsideration or reversal, presented to the authority that dictated the resolution; and

(b) appeal to a hierarchically superior authority.

The presentation of each remedy shall be optional for the interested party, but an appeal cannot be presented in advance of a request for reconsideration or reversal.

Article 125. If a Chief of Section of the Office of Industrial Property has rejected an application for registration or renovation, within a non-litigious procedure, a reconsideration request may be presented by means of a writ explaining the reasons for the presentation, within a term of five business days; the resolution regarding said request shall not be final. If a Chief of Section has not dictated a resolution within the term of fifteen business days, the interested parties may present an appeal to the Director of the Office of Industrial Property. It shall be understood that the Chief of Section's fictitious resolution rejected the reconsideration request, and the Director's resolution shall confirm or revoke said rejection.

Article 126. Against simple procedural resolutions that do not cause irreparable harm, dictated by a Chief of Section within litigious proceedings before the Office of Industrial Property, the interested party may present a reversal request by means of a writ explaining the bases for same, within a term of five business days after the notification of said resolution; the resolution regarding said request shall be final.

Article 127. Resolutions by the Chiefs of Sections shall be appealable to the Director of the Office of Industrial Property. Said appeal shall be filed with the Chief of Section within the term of five business days after the notification of said resolution.

Article 128. The reasons for the appeal shall be presented to the Director of the Office of Industrial Property within the term of eighteen business days after the notification was carried out. The other party shall be notified of said reasons, after which this party shall answer within a like term of eighteen business days.

Article 129. A resolution by the Director of the Office of Industrial Property shall be the last administrative instance. A resolution by the Director of the Office of Industrial Property may be appealed by means of an administrative-law action filed with the Judicial Power within a term of ten business days.

Article 130. If forty days pass and the Director of the Office of Industrial Property has not dictated a resolution, the interested party may file an administrative-law action directly with the Judicial Power. It is to be understood that the fictitious resolution has rejected the pretensions of the party that now files the administrative law action in a judicial court and the sentence of the first instance judge shall either confirm or reject said fictitious resolution.

Article 131. All procedural terms included in this Law are peremptory and non-extendible. All notifications must be carried out by official document.

Article 132. The documents that refer to trademarks shall remain in the files of the Office of Industrial Property. The documents that are sent to the Courts shall be returned after the judicial proceedings have been concluded.

Article 133. The applications for registration or renewal of trademarks that are being processed on the date this Law becomes effective, shall continue to be processed in accordance with the previous legislation, but the registrations and renewals that are granted shall be subject to the provisions of the present Law.

Article 134. The trademarks and other distinctive signs registered in accordance with the previous legislation shall abide by the provisions of the present Law and the corresponding regulations, which shall be applicable from the date the present Law is in force.

Article 135. The present Law shall be applicable to all litigious actions after said Law becomes effective, and also to litigious actions whose resolution is pending, with the exception of proceedings, formalities and terms that had already been initiated, which shall be carried out in accordance with the norms in effect at the time of their initiation.

Article 136. The provisions of the Civil and Penal Codes and the respective procedural codes shall be applied supplementally.

Article 137. The Executive Power shall regulate the present Law.

Article 138. The following laws are hereby derogated: Trademark Law No. 751/79; Law No. 1,258, dated October 13, 1987, that modifies Trademark Law No. 751/79; Law No. 259, dated November 16, 1993, that modifies and expands Article 77 of Trademark Law No. 751/79; Articles 262 (Paragraph XII) and 356 of Law No. 879, dated December 2, 1981, Code of Judicial Organization; and any other provisions that are contrary to the present Law.

Article 139. May the present Law be communicated to the Executive Power.



ASUNCION AUGUST 6, 1998

 




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