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.
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.
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.
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.
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).
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.
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.
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.
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.
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.
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.
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.
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 and relative grounds. In the relative examination, the examiner compares the mark to earlier applications and registrations to see whether there are conflicting marks. In the absolute examination, the examiner looks to see whether there are any absolute grounds for refusal.
Aside from genericness, descriptiveness and so on, other grounds on which a mark is ineligible for registration include the following:
- The mark incorporates emblems, symbols or signs of national or international bodies or organisations;
- The mark incorporates names of national or international bodies or organisations; or
- The mark is deemed to be contrary to good morals or public order.
No; there is only one main central register in which all granted marks are registered.
Third parties cannot object to registration before the application is published. In fact, before the mark is published, the public has no access to the application, which becomes public only upon publication in the Official Gazette.
Use of the mark is of no benefit. The rights to a trademark are obtained solely through registration, as Bolivia is a constitutive right jurisdiction. Only upon formal recognition or grant will trademark rights exist, and only from that moment forward. Prior commercial use has no bearing in the trademark registration process.
It normally takes about two months from filing to the first office action. If there are no pro forma observations, then the mark will be sent for publication, which generally occurs approximately four months after filing.
It typically takes four months from filing to publication, assuming that there are no office actions or observations. If there are, then the path to publication is suspended until the observation – such as filing a power of attorney, correcting the classification of products or clarifying a request – is addressed.
If an application is refused, this decision can be appealed. As per local practice, the first appeal is filed before the same authority that issued the first-instance decision. This ‘revocation recourse’, as it is known, is filed before the same examiner, so that any error or misanalysis can be corrected. Generally, however, the examiner will stand by his or her initial decision and the applicant will need to file a second appeal, called the hierarchical recourse, which is heard by a different examiner at a higher level.
Once an application has been refused, the trademark owner can file an appeal within 10 working days. The appeal is filed before the same examiner who issued the decision under appeal and is decided within approximately 60 days.
The revocation recourse decision, in turn, can be appealed as a hierarchical recourse to the director of the National Intellectual Property Service. The appeal entails submission of a fully argued writ within 10 working days of service of the revocation recourse. A decision is issued within approximately 120 days.
Any third party can oppose a trademark application on relative or absolute grounds. A third-party trademark owner usually argues likelihood of confusion (relative grounds), although it can also argue absolute grounds. Non-trademark owners can argue only genericness, descriptiveness or other absolute grounds.
The law states that any ‘person with an interest’ has standing to oppose a trademark application. While this is a very broad concept, it is understood to refer to any person that either:
- owns a trademark registration or application and believes that the published application is confusingly similar to its mark; or
- without necessarily owning a trademark application or registration, believes that registration should be refused on absolute grounds.
The timeframe for opposing a trademark application is 30 working days from publication in the Official Gazette.
Oppositions are heard by an examiner in the oppositions section at the National Intellectual Property Service (SENAPI). The appointed examiner will conduct the procedure until the first-instance resolution.
The opposition process is quite straightforward. Within 30 days of publication in the Official Gazette, a fully substantiated opposition must be filed. An extra 10-day period can be requested to submit evidence, if necessary; otherwise, the evidence must be filed along with the opposition. Subsequently, the opposition is served on the applicant for response, which must set out its arguments within a 30-day deadline. Upon receiving the opposition and response, SENAPI will first analyse the opposition and then perform subject-matter analysis to examine whether any additional relative or absolute grounds for refusal exist; it will then issue its decision accordingly.
Once an opposition decision has been issued, any party can file an appeal within 10 working days. The appeal is filed before the same examiner who issued the first-instance decision, in the form of a revocation recourse; in practice, such decisions are overwhelmingly upheld.
The revocation recourse decision, in turn, can be appealed as a hierarchical recourse to the director of SENAPI. The appeal entails submission of a fully argued writ within 10 working days of service of the revocation recourse. A decision is issued within approximately 120 days.
Unregistered marks have no protection, as rights arise from registration only.
Registration confers the exclusive right to use the mark and to oppose and stop any undue use by a third party.
There is no separate register for descriptive marks.
The remedies for trademark infringement constitute administrative and jurisdictional actions.
From an administrative standpoint, a trademark owner can file for infringement per se, which is an action that seeks to stop undue use of a mark. The sole remedy available is the seizure and removal of infringing materials from the marketplace.
From a jurisdictional standpoint, the trademark owner may seek compensation for damages and losses and the removal of infringing materials. However, this type of action is very slow, as the courts have little knowledge of IP law, and there are no known awards of compensation for damages.
In case of trademark dilution that affects the uniqueness of a mark, the available remedy is an opposition and/or infringement action. Dilution – that is, the blurring of the distinctive capacity of a mark – can be addressed through a preventive action such as opposition, whereby the trademark owner objects to registration of a mark that, if registered, would dilute its own earlier mark.
The other available remedy is an infringement action. While infringement entails a likelihood of confusion and dilution does not necessarily entail a likelihood of confusion, an infringement action can be used to stop use of a mark that, due to its fame, might be associated with another product.
There is no other specific provision or remedy for dilution.
Yes, trademark law recognises other remedies besides infringement and dilution.
First, the provisions on unfair competition protect against any acts involving industrial property rights that are performed in a business environment and are contrary to proper usage and practice. Such acts include:
any act capable of creating confusion, by whatever means, as to the establishment, goods or industrial or commercial activity of a competitor; false assertions in the course of trade capable of discrediting the establishment, goods or industrial or commercial activity of a competitor; and statements or assertions the making of which in the course of trade could mislead the public as to the nature, method of manufacture, characteristics, suitability for use or quantity of the goods.
In addition, trademark law provides for the right to claim ownership of a mark. Any party that believes its ownership right has been affected by the registration of a trademark can make a claim requesting that its ownership right be recognised.
Infringement is pursued by filing an infringement claim. Once that claim has been received and before serving the other party with the claim, the National Intellectual Property Service (SENAPI), along with a notary public and the claimant, will conduct an inspection of the market, the infringer’s premises or another place where the alleged infringement is occurring, to verify the activities or the availability of infringing material. Once this inspection has been carried out, the claim is notified to the infringer for a response. The parties can then request the opening of an evidentiary period for the submission of evidence, after which SENAPI will issue a decision.
Infringement claims can be pursued at an administrative level or at a jurisdictional level. The overwhelming choice is the administrative level, as this process is much quicker and SENAPI is better acquainted with IP provisions than the courts at the jurisdictional level.
Typical defences in trademark litigation include some kind of right to use the trademark, such as a licence, franchise or ownership. Where the infringing mark is not identical to the allegedly infringed mark, a lack of confusing similarity is also often argued.
Defendants also sometimes attempt to avail of various procedural defences, dragging out the proceedings as long as possible by appealing decisions, filing cancellation actions with the object of stalling the infringing action, challenging the validity of bylaws or other statutes, or trying to raise constitutional issues.
The same procedure for appealing decisions in trademark litigation applies across all actions. Once a decision has been rendered, a party has 10 working days to file a writ before the same examiner, setting out its arguments and claims against the decision. In general, there are no additional formalities to be met, as all of these will usually have been satisfied at first instance. Alongside its arguments, the appellant may sometimes submit additional evidence that has recently become available (as a general rule, however, all evidence should have been submitted during the evidentiary period at the trial level). Upon filing, the other party has an opportunity to respond, following which SENAPI will issue an appeal decision.
The initial term of registration is 10 years and the renewal terms thereafter are also 10 years.
In order to renew a trademark registration, a renewal application must be submitted. The renewal application requires the submission of forms and a petition, along with a power of attorney.
A trademark registration may be cancelled solely on the grounds of non-use. If a trademark owner has not used its mark for three consecutive years, a third party may seek cancellation of the mark.
The National Intellectual Property Service (SENAPI) cannot and will not seek cancellation of a trademark registration on its own, even if the trademark owner has not been using the mark.
The procedure to seek cancellation of a trademark registration is quite simple. Any third party can file a cancellation petition arguing the mark is not in use. The third party need make no further argument or action. At this point, it is the trademark owner that needs to provide evidence of use in any Andean country through accepted and appropriate evidentiary documentation.
A cancellation decision may be appealed by an appeal in the form of a revocation recourse before the same examiner. The appellant can argue only that the evidence proves, or does not prove, sufficient and real use of the mark during the relevant period.
The revocation recourse decision, in turn, can be appealed as a hierarchical recourse to the director of SENAPI. The appeal entails the submission of a fully argued writ within 10 working days.
There are few provisions in law regarding the licensing of a mark and no particular requirements relating to issues such as quality control. The sole specific requirement is that the licence be executed in writing and recorded with National Intellectual Property Service (SENAPI). If it is not recorded, it will have no effect in relation to third parties.
Trademark licences must be recorded before SENAPI to have effect in relation to third parties.
A licensor cannot lose its rights in a trademark by failing to comply with its obligations under the licence. The terms and conditions of the licensing agreement will govern the obligations of the parties and the specifications contained therein will apply to the licensing relationship.
Foreign trademarks which have not been registered locally cannot be enforced, as without local registration there is technically no infringement, because no granted right has been violated.
An exception is the Andean opposition, through which the owner of a trademark registered in any Andean country can object to an application for an identical or similar mark. This technically does not constitute enforcement against actual use, but rather prevents the issuance of a right to a third party.
The National Intellectual Property Service is not part of any international registration system or agreement, and thus does not permit registration of a trademark based on a foreign or international registration. Registrations are territorial and trademarks must progress through local registration proceedings.
At most, a local application can invoke a priority right from an international application, but this serves only to request an earlier filing date. The trademark must progress through the entire registration process.
