From Caracas to Commerce: How to Trademark in Venezuela

Meet Miguel, the proud owner of "El Paraíso de la Guayaba" in Caracas. His juice bar is so popular that it's become a tourist spot. Miguel's fame takes him to Madrid, Spain. A juice lover, he tells the taxi driver to take him to the best juice shop in the city. He wants to quench his thirst and maybe compare flavors.

But to his shock - he is dropped off at a giant juice shop using his brand name and colors. To make matters worse, its proprietor is Venezuelan. Astounded and frustrated, he realizes his brand isn't protected internationally. 

In Venezuela's bustling business landscape, your brand is your identity. Many entrepreneurs think trademark registration is only for big corporations. The truth is that securing a trademark is vital for any business. Whether you sell arepas or jugos or run a tech startup, this guide will help. It explains how Venezuelan entrepreneurs, such as Miguel, can protect their trademarks at home and abroad.

What is a trademark?

A trademark is any sign that distinguishes a company's products or services from those produced by competitors in the market. It can be a name, logo, slogan, symbol, or even a combination of these elements.

What is trademark registration?

Trademark registration in Venezuela gives exclusive rights to a business, organization, or person. This means they can use a brand name, logo, or symbol without others interfering. This procedure safeguards businesses' identities and prevents unauthorized usage by other parties.

The Industrial Property Law of 1956 forms the primary legal basis in Venezuela. Servicio Autónomo de la Propiedad Intelectual (SAPI)," which translates to "Autonomous Service of Intellectual Property," is the government agency responsible for managing intellectual property rights in Venezuela. 

What is the importance of trademarks? Registered trademark holders are entitled to:

1. Protection against unauthorized imitations.
2. Taking action against any party that uses or applies the protected trademark to other products without consent.
3. Blocking third parties from marketing or selling products bearing the protected trademark without explicit permission.
4. The owner is able to license or sell the trademark, making it a business asset.

Venezuelan law says you only get exclusive trademark rights when you register under the Industrial Property Law. Unregistered trademark owners can oppose, with proof of prior use, mark registrations if they infringe on their existing rights. They do this by submitting an objection based on their own trademarks.

What can't be trademarked in Venezuela?

One is eligible to trademark items like logos, slogans, brand names, and unique holograms.

However, certain words, names, phrases, and even signs can be approved for trademark registration.

They include:

• Words, phrases, figures, or signs that suggest immoral ideas or that go against morality and good customs.
• The national symbols and emblems of the states or municipalities.
• The geographical names as an indication of the place of origin.
• Trademarks that graphically and/or phonetically resemble another already registered.
• Misleading marks or signs likely to deceive the public or consumers
• Caricatures, portraits, drawings, or expressions that ridicule persons or objects worthy of respect and consideration.
• The words commonly used to indicate the genus, species, nature, origin, quality, or shape of the products. For example, Arabica (genus/species), organic (nature), Swiss (origin), premium (quality), and oval (shape)

Procedure for applying for a trademark in Venezuela

Securing a trademark in Venezuela is a multi-step process that begins with a comprehensive search and continues through filing, examination, publication, and potential opposition before final registration. Understanding each stage ensures a smooth application and protects your brand for years to come.

1. Trademark search

To register trademarks in Venezuela, start with a background search for your chosen name. If your trademark has a design or logo, you need two searches: a phonetic one and a graphic one. First, pay the required fees into the SAPI's bank accounts.

The results will be provided within a few days. However, to proceed with the application, you only need to submit the search payment receipt and a duplicate of the form. Fees for various entries are detailed on the SAPI website.

The process of trademark search in Venezuela starts by registering on the SAPI website. You will be required to sign in to be able to access the online search tool.

You will have to make a payment to facilitate the search. However, if the signup portal search tool is unavailable, you will have to contact the registry to assist with the search.

To be thorough in your search, also be sure to check social media, the web, and business listings. This expands the scope of your search, enabling you to capture trademarks that are already in use but haven't been registered or still have pending registration status, ultimately preventing avoidable objections.

While performing the search, be sure to identify the class of goods according to the Nice 3 International Classifier.  

Execute the search, then save your request, after which you will be required to make a second payment corresponding to the trademark application form. (FM-02). 

Proceed to preload the trademark application (FM-02) in the system. Here, you will indicate the products or services that will be protected. If it's a graphic or mixed brand, you must make a clear and specific description of everything that is displayed in the image as a whole.

Print the form and sign it before sending it in PDF format along with the supporting documents to the email address that will be provided.

If you meet all the requirements, the SAPI will assign you an application number via email. 

2. Filling 

After you have ascertained that your trademark isn’t infringing on anyone's rights, it's time to prepare your documents for filing.

The documents required include:

• The trademark application form is available on the SAPI official website.
• A clear representation of the trademark can be a logo, brand name, or symbol.
• List of goods or services - classified according to the NICE Classification.
• Proof of payment of fees - payment can be made through provided bank transfer details or in person at the SAPI offices.

3. Examination

Your trademark application will then undergo scrutiny to verify its adherence. Upon meeting these requirements, the application is assigned a number and filing date, followed by an assessment of its compliance.

Should the application fail to meet one or more formal requirements, the applicant will be informed through the Industrial Property Bulletin. The applicant must address the deficiencies within 30 business days of notification. If they fail to meet this deadline, the application will be deemed abandoned. This period may be extended by three months if requested by the applicant and deemed necessary by the examiner.

After the applicant successfully fulfills all formalities, the SAPI will conduct a registrability analysis of the mark to establish its uniqueness. In the event of application rejection, the applicant has recourse to two administrative appeals: a reconsideration petition to the SAPI and a subsequent appeal to the Minister of Light Industry and Trade.

Following this, a final appeal can be lodged with the Supreme Court of Justice within six months of the minister's decision.

4. Publication

Following successful application and examination, the registrar will instruct for publication of the details in a daily newspaper at their own cost. The SAPI will, on the other hand, publish the application in the Industrial Property Bulletin. This paves the way for the next step: potential opposition.

5. Opposition

Upon publication in the Industrial Property Bulletin, any individual may contest the trademark registration within 30 working days. Objections can be based on legal grounds for rejection or claims of superior rights.

The applicant will be notified of any opposition through the Industrial Property Bulletin and has 30 working days from this notification to respond. If they fail to respond or request an extension, the application is considered abandoned. 

The examiner's decision will then be published in the official bulletin. Parties have a 15-day window to file a reconsideration petition against an unfavorable decision; otherwise, the decision becomes final.

6. Registration

If an application passes both formal and substantive exams without any opposition, a notice of approval will be published in the official bulletin. Trademark rights are established upon registration and payment of the required fee.

The registration remains valid for 15 years from the date of approval, with the option for unlimited renewals. 

How do you get a certificate of registration after a trademark is granted?

After receiving your trademark approval, you may wonder how to obtain the certificate of registration. 

Visit the SAPI and locate the "Electronic Certificate" section. Enter your registration number to access your certificate. 

If you need the Registrar of Industrial Property's certified signature, print two copies of the original certificate and take them to the registrar for signing.

How long does it take to register a trademark in Venezuela?

The process typically spans between eight and twelve months, assuming no delays occur. This duration is determined by statutory time limits that must be adhered to throughout the procedure.

What is the cost of registering a trademark in Venezuela? 

The cost for registration will vary depending on the number of trademark classes registered for and whether you employ the services of a qualified attorney or not. Also, extra costs may come up if the applicant has to handle objections or give more explanations.  

Protect your brand in Venezuela: the “El Paraíso de la Guayaba” warning

In Venezuela's dynamic commercial environment, your brand represents more than a simple identifier. It embodies your essence, standing, and enduring impact. The experience of Miguel from "El Paraíso de la Guayaba" serves as a cautionary tale. Not securing your trademark can lead to imitations, legal issues, and money troubles for your business.

It doesn't matter if you sell artisanal juices in Caracas, launch a tech company in Maracaibo, or export worldwide. Getting your trademark is key. Begin protecting your brand by registering your trademark now.

Additional resources

• Why Don't More Celebrities Trademark Their Image?
• Can You Trademark a Color (+ Some Famous Examples!)
• Trademarking Your Brand in the Fashion Industry
• Trademark Insurance: Protecting Your Intellectual Property

Glossary of legal terms

• Class of goods/services: A category under which a trademark is registered based on its use.
• Intellectual property (IP): Legal rights that protect creations like trademarks, patents, and copyrights.
• Madrid System: An international system for registering trademarks across multiple countries.
• Filing date: The official date a trademark application is submitted.
• Trade dress: The visual appearance of a product or packaging that signifies its source.
• Descriptive mark: A trademark that directly describes a product or service, often hard to register. E.g., sweet honey.