Published by INTA Latin America Forum News, April 2011.
The Industrial Property Law effective in Honduras was approved by Decree No 12-99-E. Its dispositions are of public order and have, inter alia, the objective of preventing acts against industrial property or acts that constitute unfair competition. The Decree also establishes sanctions if the Law is breached.
The Civil Procedure Code in Honduras establishes claims and demands that the owner of a protected right can file against an offender. The protection of a trademark and the intellectual property development in a company are very important therefore legal action can be filed in defense of these protected rights.
The Law defines a sign as any sign used to identify a company in its commercial activity or a product or service of the same kind. It includes the commercial, trademark, collective trademarks, emblems and signs of propaganda.
The right to the exclusive use of a trademark is obtained through registering with the Industrial Property Registry. The registration of a trademark will be granted, under the applicant's responsibility and without prejudice to the rights of third parties, to the first person that submits the corresponding application. If two or more people simultaneously apply for the registration of the same trademark for the same products
or services, the registration will be granted to the person using the trademark in Honduras, without interruption, from the earliest date, unless it is a notoriously known trademark that had been taken in bad faith.
Any interested person may present an opposition to the registration of a trademark within the publication period and up to 30 days from the date of the last publication that notifies the public of the registration.
The opposition must be filed indicating the basis of their argument, together with or notification of the corresponding proof. This process is administrative and is filed before the Industrial Property Registry, where all the administrative processes will take place until a resolution is issued. The resolution in such proceedings is subject to an appeal within the three days following the notification of the resolution, and it should be filed with the same entity that issued the resolution. Then, it is sent to the Superintendence of Appeals of the Property Institute for the ruling on an appeal. An appeal exhausts the administrative level, and the interested party may challenge the action in the jurisdictional level in administrative litigation courts. The trademark registration is effective for ten years from the date the registration is granted. It can be renewed for successive periods of ten years from the expiration date of the preceding registration.
The registration of a trademark grants the registered holder the right to act against third parties which without their consent proceed with certain acts. For example, a third party may use an identical or similar sign in commercial activities to the registered trademark in circumstances for which such use may induce the public to be mistaken or confused, or it may cause an unfair economic or commercial hardship for the registered holder due to a dilution in the distinctive force or commercial value of the trademark or an unfair advantage of the popular or distinctive force of the trademark. The Civil Procedure Code effective in Honduras establishes claims and demands that the owner of a protected right can file against those who violate it, such as:
- The cessation of the actions that infringe their right;
- The owners right to have the application transferred to its rightful name or the registration granted;
- Compensation for any damages suffered;
- The adoption of necessary measures to avoid the infringements to continue and, in particular, to withdraw the products, packages, wrappers, publicity material, labels and other documents in which the infringement of the trademark has materialized; and
- The destruction or assignment with due care, if possible, at the choice of the requestor and at the costs of the sentenced, of the products illicitly identified with the trademark, unless the nature of the product allows the elimination of the distinctive sign without affecting the product or the destruction of the product causes a disproportionate damage to the offender or owner, according to the specific circumstances of each case presented to the jurisdictional entity. The defendant can file, by way of reproach, the claim declaring the expiration for lack of use by the applicant. These mentioned actions are then filed before the civil courts.
The civil requests derived from the infringement of the patent registration, the trademark registration and the industrial design registration, are prescribed as beginning from five years from the day the request could have been filed. The compensation for damages can only be requested in regards to infringement actions carried out during the last five years previous to the date in which the request is supposed to take place.
Compensation in the ruling
The compensation for damages will include not only the loss, but also the earnings not received by the registered holder of the patent, trademark or design due to the infringement of their right. The registered holder of the trademark can also request the compensation for the damage caused to the prestige of the trademark, specially, for the defective manufacture of the products illicitly branded or the inadequate presentation of the product in the market. The earnings not received will be set, by choice of the petitioner, by any of the following criteria:
- The benefits that the registered holder would have obtained through the use of the product if the infringement had not taken place.
- The benefits the offender obtained as a consequence of the infringement.
- The price the offender should have paid for the licence that would have allowed him or her to use the product lawfully.
The compensation for damages can only be requested in regards to the infringements during the five years previous to the date in which the request was filed. To set the compensation, the judge will consider, among other circumstances, the notoriety, popularity and prestige of the trademark and the amount and type of licences granted at the time the infringement took place. In case there is damage to the prestige of the trademark, the judge will also consider the severity of the infringement and the degree of diffusion in the market. In order to set the amount of damages suffered, the registered holder of the patent, trademark or industrial design can request the exhibit of the documents that may assist with setting a figure. The registered holder of the patent, trademark or industrial design, whose infringement have been violated, will have, without the need of proof, the right to receive as a compensation for damages one per cent of the business earnings the offender received with the products or services illicitly branded.
The registered holder can also request a greater compensation if he can prove that the infringement of his trademark caused him greater damages, as previously established.
Whoever files or will file a claim, as previously discussed in this article, may request the adoption of precautionary measures to ensure the effectiveness of the requests, as long as the industrial exploitation of the right is justified. The precautionary measures that may be adopted are the ones that ensure the effectiveness of the ruling and include, specially, the following:
- The immediate cessation of the actions that infringe the petitioner's right;
- The necessary measures to avoid the continuation or reiteration of the
- The seizure of objects produced or imported in infringement of their right,
- and of the means exclusively for such production or performance of the patented procedure;
- The guarantee of the prospective for compensation for damages; and
- The registry entries that proceed.
The rights of an owner of a distinctive sign are greatly protected in Honduras by the Industrial Property Law, which, as indicated, establishes a series of dispositions that allow the registered holder to perform the appropriate actions to stop the infringements of their rights. The registered holder of a trademark can act at an administrative level as well as at a jurisdictional level, with clearly defined procedures and actions that can be exercised. All of the above also represents a boundary for those who pretend to engage in commercial activities that infringe industrial property laws, since they will be the object of monetary sanctions as high as the benefits they can irregularly earn. This adequate protection of industrial property rights allows Honduras to offer national and foreign investors the protection for their rights creating an adequate environment for investments.-
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.