Venezuelan PTO increases rates and introduces direct payment

The Venezuelan PTO announced new increased rates for Intellectual Property related matters in Venezuela. Two interesting facts related to the increase are:1. in some instances a 60% increase in government fees; and 2. the requirement as of May 28th, 2015 is for the foreign applicants/owners to pay the fees directly to the PTO and not via the Venezuelan IP law firms. It remains unclear what the effects of this, if any, will be for the law firms in question. The industry has filed an appeal against these measures.

Registro de Marcas en Jamaica

La legislación en materia de propiedad intelectual de Suriname, es decir, la Ordenanza de Marcas del 1999, se basa en el principio de “first-to-file” o prioridad de depósito. La Ordenanza entre on el vigor en el 2001. El proceso dura aproximadamente 12 meses.  El registro de la marca y sus posteriores renovaciones tendrán una vigencia de 10 años. Los registros de marca se publican cada mes en una Gaceta Oficial de Jamaica.

The judicial system of Aruba in trademark matters.

The Joint Court of Justice of Aruba, Curaçao, Sint Maarten and of Bonaire, Saint Eustatius and Saba is responsible for the administration of justice in first instance and in appeal on the islands. The Joint Court of Justice consists of a presiding judge, the other members, and their substitutes. The members of the Joint Court of Justice deal, in first instance and in appeal, with civil cases, criminal cases, cases of administrative law and trademark related cases. The Court in First Instance

A case that is dealt with in court for the first time generally falls under the jurisdiction of the Court in First Instance, which is an organizational part of the Court of Appeal. One judge generally deals with cases in first instance. The Court in First Instance of the Netherlands Antilles has its seat in Curaçao and has jurisdiction in all the islands. There are also sessions in all the islands. There is a Court in First Instance of Aruba that is also part of the Court of Appeal.

The Trademark Act provides for an opposition procedure via the Court in First Instance of Aruba via a dedicated extra judicial procedure. This recourse does not prevent a party to initiate a regular civil action based on tort.

Cases in Appeal

The Joint Court of Justice handles cases in appeal that were dealt with and decided on by the Courts in First Instance. A judge who handled a case in first instance will not participate when the case is dealt with in appeal. Three members of the Court deal with the cases in appeal. Those judges then make up the Joint Court of Justice of Aruba, Curaçao, Sint Maarten and of Bonaire, Saint Eustatius and Saba. So, this name denotes both the whole of the judicial system of Aruba, Curaçao, Sint Maarten and of Bonaire, Saint Eustatius and Saba (including the Courts in First Instance) as well as the higher court of appeal by itself (hereafter ‘the Court of Appeal’). There are some exceptional cases where the Court of Appeal also handles cases in first instance with more than one judge.

Cases in the Supreme Court

Most decisions of the court of appeal may be appealed "in cassatie" to the Supreme Court of the Netherlands in The Hague. Decisions of the Supreme Court are final and do not address the facts of the case, but only points of law: whether the decision was based on the right legal grounds and properly motivated. The legal basis for those appeals is the Regulation of 20 July 1961, Stb. 1961, 212, titled the "Cassatieregeling Nederlandse Antillen" ("Appeals Regulations of the Netherlands Antilles"), later renamed "Cassatieregeling Nederlandse Antillen en Aruba".

One distinction between the appeals procedure in the Netherlands and that of the Caribbean territories is that when a judgment of a Netherlands court is overturned by the Supreme Court, the case is generally remanded to a different court at the lower level for purposes of rendering a new decision. Because the Joint Court is the only court at its level, it will rehear its own cases after being overruled.

Aruba Trademark Act and a mala fides trademark registration

Brazilian based Souza Cruz S.A. and Paraguayan based Tabacalera del Este S.A. were involved in a trademark dispute in Aruba over the cigarettes trademark PALERMO. Souza Cruz had registered the trademark in Aruba on December 1st of 1998. Tabacalea had used and registered the trademark since 1996 in Paraguay and other places. Tabacalera launched an opposition procedure based on the Aruba Trademark Act against the registration made by Souza. The claimwas based on a so-called “mala fides”-registration by Souza. Tabacalera also argued that Souza had no ”justifiable interest” to keep the registration. Tabacalera was successful in the Court of First Instance of Aruba and also won the appeal that was filed by Souza. In February 2006 the Supreme Court ruled in favor of Souza and overturned the decision of the Appellate Court. The Supreme Court ruled that the Aruba Trademark Act had limited grounds for a successful opposition and that neither the terms “mala fides” nor “lack of justifiable interest” were part of the limited grounds. The case was send back to the Appellate Court for re-evaluation following the limits set by the Supreme Court. Back at the Appellate Court the trial continued and ultimately ruled in favor of Tabacalera del Este re-establishing the initial rulings by the lower courts.

Arubags trademark or copyright?

Aruba in it. Arubags initiated a court action to prevent Koolman from selling bags containing the “Arubags” design. Arubags had registered the trademark in Aruba in June 2010. Koolman had been retailing the products since 2004 and based on that the court of first instance of Aruba ruled in favor of Koolman based on the right of first use.Arubags appealed and the appellate court ruled in favor of Arubags; however the appellate court based the decision on the copyrights of Arubags not based on trademark. Koolman perceived this decision to be a “surprise-ruling” since Arubags had not made any allegations about copyrights during the proceedings.

The Supreme Court in The Hague later ruled that the appellate court had gone beyond the scope of the dispute by making a ruling based on copyright, while Arubags had not made such claim in court. The Supreme Court quashed the ruling and ordered the case back to the appellate court for further evaluation based on trademark aspects. The appellate court will now have to re-visit the matter and determined which of the parties has the right of first use of the trademark Arubags in Aruba.

Gomez & Bikker acted as advisor of Koolman on Supreme Curt aspects.

Complete ruling: http://uitspraken.rechtspraak.nl/inziendocument?id=ECLI:NL:HR:2014:212

Trademark renewals in Curacao.

Trademarks registered or renewed in Curacao are valid for 10 years. The renewal of a trademark registration in Curacao can be done as early as 6 months prior to the date of the expiration. If the trademark has expired the Bureau Intellectual Property Office of Curacao will grant a grace period of 6 months to renew a registration subject to an extra late charge. A power of attorney will be required from the applicant to its local trademark lawyer. As with registration this PoA does not have to be notarized no legalized. The renewal process can be usual completed in about 8 weeks. A proof of use of the trademark is not required at the time of filling for the renewal.

Trademark renewals in Aruba

Trademarks registered or renewed in Aruba are valid for 10 years. The renewal of a trademark registration in Aruba can be done as early as 6 months prior to the date of the expiration. If the trademark has expired the Intellectual property Office of Aruba will grant a grace period of 3 months to renew a registration subject to an extra late charge. A power of attorney will be required from the applicant to its local trademark lawyer. As with registration this PoA does not have to be notarized no legalized. The renewal process can be usual completed in about 8 weeks. A proof of use of the trademark is not required at the time of filling for the renewal.

Filling a trademark in Bonaire (the BES-islands)

As of October 10th, 2010 and due to constitutional changes the Netherlands Antilles ceased to exist. Since then Bonaire, Sint Eustatius and Saba (“BES-islands”) has become special municipalities of the Netherlands. The Trademark Office is managed by the Benelux Office for Intellectual Property (“BOIP”). The Madrid Agreement and Protocol apply to the BES-islands. The BES-islands IP legislation i.e. Trademarks Act for the BES-islands is based on the “first-to-file”-principle. In other words he who files a trademark first is granted the exclusive right to use the trademark in the BES-islands. While it is not required for a mark to be used at the time of or prior to filling, a registration can be declared null and void by the Court of First Instance of the BES-Islands upon demand of any third party, if it can be determined that no use of the trademark has been made during a period of 5 uninterrupted years. Use by the owner following a period of 5 years of uninterrupted use will serve to fullfil the “use”-requirement. Registration and subsequent renewals are valid for a period of 10 years. Registrations are published monthly in an Official Gazette. The first to file principle is without prejudice to the rights of priority established in the Paris Convention for the Protection of Industrial Property of 20 March 1883 and the Protocol of 27 June 1989 (Treaty Series [Trb.] 1990, 44) to the Madrid Agreement Concerning the International Registration of Marks of 14 April 1891 or the right of priority pursuant to the Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994; Appendix 1C to the Agreement to Establish the World Trade Organization

Sint Maarten to enact new trademark legislation 2015

In March 2014 the Sint Maarten government concluded an agreement with the Benelux Office for IP www.bpi.int ("BOIP"). The BOIP will, after the entry into force of the new Sint Maarten Trademark Act and the establishment of the Sint Maarten Bureau for Intellectual Property (BIP SXM), manage the execution of the new legislation and the IP-registry. The new legislation is expected enter into force early 2015.

Trademarks in registration in Sint Maarten

As of October 10th, 2010 and due to constitutional changes the Netherlands Antilles ceased to exist. Since the island of Sint Maarten has become a state within the Kingdom of the Netherlands.  Sint Maarten did not establish its own Bureau of Intellectual Property (“BIP”) following the constitutional changes. The choice was made for the BIP of Curacao to manage trademarks registration for Sint Maarten during a transitional period. The Sint Maarten IP legislation i.e. Trade Marks National Ordinance 1995 is based on the “first-to-file”-principle. In other words he who files a trademark first is granted the exclusive right to use the trademark in Sint Maarten. While it is not required for a mark to be used at the time of or prior to filling, a registration can be declared null and void by the Court of First Instance of Sint Maarten upon demand of any third party, if it can be determined that no use of the trademark has been made during a period of 5 uninterrupted years. Use by the owner following a period of 5 years of uninterrupted use will serve to fulfill the “use”-requirement. Registration and subsequent renewals are valid for a period of 10 years. Registrations are published monthly in an Official Gazette.

Registration of Trademarks in Curacao

Filling a trademark in Curacao As of October 10th, 2010 and due to constitutional changes the Netherlands Antilles ceased to exist. Since then Curacao has become a state within the Kingdom of the Netherlands and Curacao has established its own Bureau of Intellectual Property (“BIP”). The Curacao IP legislation i.e. Trade Marks National Ordinance 1995 is based on the “first-to-file”-principle. In other words he who files a trademark first is granted the exclusive right to use the trademark in Curacao. While it is not required for a mark to be used at the time of or prior to filling, a registration can be declared null and void by the Court of First Instance of Curacao upon demand of any third party, if it can be determined that no use of the trademark has been made during a period of 5 uninterrupted years. Use by the owner following a period of 5 years of uninterrupted use will serve to fulfill the “use”-requirement. Registration and subsequent renewals are valid for a period of 10 years. Registrations are published monthly in an Official Gazette ("Merkenblad").

Parallel import in Aruba Curacao, Sint Maarten and the BES-island

The territories of Aruba, Curacao, Sint Maarten and the BES-islands do not have specific legislation against parallel-import. I am not aware of any upcoming legislation to prohibit parallel import. There have been a number of cases before the courts that were argued based on tort a/o infringement a/o misuse of IP rights. There was 1 decision in the Court of First Instance of Aruba that deemed parallel import to be a tort but the Court of First Instance of Curacao shortly thereafter deemed that the parallel import was not a tort. The Common Court later confirmed this decision; there have been subsequent decisions by the Common Court of Appeals of Aruba, Curacao, Sint Maarten and the BES-islands by virtue of which the court has deemed parallel import not an act of tort a/o IP rights infringement. This included a case in which the importer had removed serial numbers engraved on the bottles to disguise the origin of the shipments. The main consideration of the court has been that considering the small size of our economies it would not be in the nest interest of the population if parallel-import were prohibited, as this would potentially create the opportunity for the licensed importers to unduly control and influence the pricing of the imports thereby driving the cost of living. The decision seems to have favored the competition in general among licensed importers and parallel importers versus the rights of the licensed importers.  Granted the consideration by the court may be deemed a bit awkward because the parallel-importers were primarily trying to protect their business interests and not the "general good" of the consumer market.

Validity of trademark registration in Aruba

A registration is valid for ten (10) years. A registration should be renewed: (i) six (6) months prior to the expiration of the period of protection; (ii) three (3) months after expiration. After the three month period a new application will have to be filed with the Bureau. Validez de un registro marcaría en Aruba

Validez de un registro marcaría en Aruba. Un registro de una marca en Aruba es válido por diez (10) años. Un registro marcaría debe ser renovado: (i) seis (6) meses antes de la expiración del plazo de protección; o (ii) tres (3) meses después de la expiración. Después del paso de tres meses una nueva solicitud de registro tendrá que ser presentado ante la Oficina de Propiedad de Intelectual de Aruba.

Requirements for trademark registration in Aruba

The information and documentation required for filing a trademark application in Aruba is as follows. A duly executed power of attorney approved by the applicant. Although notarization and/or legalization is recommended it is not mandatory. Standard forms are available upon request. To register a design or device it is required for colored marks twenty (20) prints and for black and white marks fifteen (15) prints. Prints should measure approximately 3" x 3". Colors should be specified. The approximate time required for completion of the application procedure is one (1) month. The date of the registration is assigned as per the date of the application. Convention priority can be claimed within six (6) months from the filing date. Registrations in other countries will not be validated in Aruba. Registration in different classes of international classification is possible in order to obtain protection in a whole class of goods. Requisitos para un registro marcaria en Aruba

La información y los requisitos para un registro marcara en Aruba son: Un poder debidamente ejecutado aprobada por el solicitante. La certificación notarial y/o legalización no es obligatorio. Para registrar un diseño o dispositivo que se requiere para las marcas de colores veinte (20) copias y para las marcas blancas y negras quince (15) copias. Las impresiones deben medir aproximadamente 3" por 3". Los colores tienen que ser especificados. El tiempo aproximado necesario para la finalización del procedimiento de solicitud es ocho (8) semanas. La fecha del registro se asigna según la fecha de la solicitud. Prioridad del Convenio puede ser reclamado dentro de los seis ( 6 ) meses a partir de la fecha de solicitud original. Los registros marcarias de otros países no crean derechos Aruba. La inscripción en las diferentes clases de la clasificación internacional es posible con el fin de obtener protección en toda una de las clases deseadas.

Opposition and/or nullity actions in trademarks in Aruba

The current legislation permits an opposition action to be initiated within six months of the official publication of the trademark. For a successful opposition action evidence would have to show first usage by the opposing party of the trademarks in Aruba or worldwide notoriety of the trademark. After the six-month opposition period has expired cancellation is still possible provided the unlawful registration is substantiated with a judgment of the Aruba courts.

Procedure of trademark registration in Aruba

The Bureau does not require evidence of first usage or intent to use for registration of a mark. The registration process is simple, efficient and takes approximately three weeks to complete. The trademark lawyer on behalf of the trademark owner files the application. It should be noted that all trademark lawyer need to be approved by the Bureau. The trademark lawyer will require a power of attorney from the owner of the mark. In practice fax copies of executed power of attorney are acceptable to the Bureau. According to good business practice it is important for the trademark lawyer to have a duly executed original in its files. It is not required for the power of attorney to be legalized or notarized. When the application is filed with the Bureau, the Bureau will carry an independent investigation to see if there are any objections to the application. After this has been done and no objections are made by the Bureau, the trademark is registered and the corresponding certificate of registration is issued. The registration is valid for ten years. All registered trademarks are published in the official publication of the Bureau, the "Markaruba".

Registration of Trademarks in Aruba

Registration of a trademark as such does not give the registrant the exclusive right to the use of the trademark. Pursuant to the Ordinance a registration of the trademark creates a presumption of first usage by the registering party. This presumption places the burden of proof of first usage of the trademark on those parties claiming to have the exclusive right to use the mark. The presumption of first usage is one reason why it is advisable for the owner of a trademark to register his mark in Aruba. In addition, once a trademark has been registered, the Bureau of Intellectual Property will not register other marks, which are identical or so similar that it might create confusion in the mind of the public as to the origin of the goods or services in Aruba.

First Usage of Trademark in Aruba

The current legislation in Aruba gives the exclusive right to the use a trademark to the party who has made, and is able to prove first use of a mark in Aruba to distinguish his goods or services in a particular category of the international classifications. The first usage can be based on the: import, (re) sale, use of the goods in the local market. In addition and based upon jurisprudence, the first usage can also be obtained by advertising of the goods or services in local or international media which is distributed Aruba.

Trademark Law in Aruba

The trademark law in Aruba is regulated by the National Ordinance on Trademarks (A.B. 1989 no. G.T. 46) ("Ordinance"). In addition Aruba is a party to the Paris Union Convention for the protection of industrial property. The Ordinance was made necessary when in 1986 when Aruba acquired the status of a separate country within the Dutch Kingdom. In 1987 Aruba opened its own Bureau of Intellectual Property. The Aruba trademark law contains provisions for the registration and protection of both trademarks and service marks. The basis of the Ordinance is the trademark legislation of the Netherlands prior to the adoption of the Benelux trademark law.