Trademarks: El-Salvador

General Information

International Agreements : TRIPS, Paris Convention, Nice Convention & CAFTA.

Classification : Nice Classification (8th Edition). Single-Class filing.

What is registrable : Word marks, device marks, Three-dimensional marks, Sound marks, Smell marks & Certification marks (see notes below).

Priority under Paris Convention : Yes
Examination : Yes - under relative and absolute grounds.

Publication : Yes - there is a publication in the Official Gazette and in a Commercial Newspaper.

Opposition : Yes – within 2 months as of publication date

Time frame for registration : 8 months
Registration term : 10 Years
Renewal term : 10 Years.
Grace period for renewal : 6 months.
Use requirement for filing : No use requirement.

Cancellation : 
The cancellation of a trademark for non-use was abolished in 2002. Under the DR-CAFTA, changes have been made that allow full or partial cancellation of a mark not used in a 5-year period. Partial cancellation will affect only those goods or services that are not being used. The mark will therefore remain registered only for those goods or services which were not cancelled.

A cancellation can be filed 5 years after the trademark registration date. The prevailing party’s right to the mark runs as early as the cancellation filing date or no later than 3 months following the court’s decision.

According to the new law, a trademark is in use when (i) the goods or services are found in commerce or (ii) the goods are exported from El Salvador or (iii) the services are provided abroad but originated in El Salvador. Additionally, “advertising of the mark through any means” will be considered use, “even if the goods or services covered are not actually traded” in El Salvador. This particular provision is useful to foreign trademark owners who can rely on advertising in magazines, newspapers, via satellite, cable TV and the Internet to help prove use of the trademark. To prove the use, trademark owners should couple advertising evidence with commercial invoices, accounting documents or auditor’s certifications that show the amounts and regularity with which the goods or services were used in commerce. Defenses to non-use include circumstances beyond the power of a trademark owner, such as import restrictions or any other official requirements imposed on products or services protected by the mark.

The amended law does not require filing of a proof of use on a regular basis.

Marking requirements : None.

Assignments-Must assignments be recorded ? Yes

Licenses-Must Licenses be recorded ? The recordal of license agreements is no longer mandatory. License agreements are enforceable before third parties, including infringers and authorities, as long as the agreements are duly legalized and translated into Spanish

Can pending application be licensed ? No

Infringement & Remedies : Preliminary injunctions are now being granted against goods in transit and seizures at the border. Permanent injunctions can include the destruction of goods seized at the border, as well as destruction of materials used in manufacturing and creating the infringing goods. To discourage infringement, infringers are not being compensated for any losses incurred in the procedure. The infringing goods may be destroyed; they may also be donated to charity, subject to the removal of all labels displaying the infringing mark.

Under the DR-CAFTA influenced provisions of the new law, rules relating to damages have been substantially modified. A plaintiff can base his/her claim on one or more of the following:

  • Damages caused to the trademark owner as result of the infringement; 
  • Benefits the trademark owner could have obtained if the infringement had not occurred. In such a case, the court will consider the value of the goods or services infringed based on their retail price, or other means that prove their value; 
  • The price or royalty that the infringer would have paid if he had been granted a license, considering the commercial value of the infringed right and other similar licenses granted. In addition, the infringer must pay the plaintiff any profits he/she gained from the infringement, if they have not been included in the abovementioned options. 
    The statute of limitations for filing an infringement action is 5 years from the date of the last infringement.

Notes :

  1. The rights over a trademark are acquired by its registration in 
    El- Salvador, and not by its first use.
  2. Registration of certification marks is effective for an indefinite period of time when the mark is owned by a public entity, subject only to the continuing existence of such entity. 
    Certification marks are subject to “bullet proof” protection, in that they cannot be seized, embargoed, subject to preliminary injunction or judicial execution. 
    If a certification mark is not renewed, is abandoned, or a public entity owning it seizes to exist, the same mark cannot be registered or used by another for 10 years.
  3. Co-existence agreements will be approved as signed by the parties without the Registrar’s challenge relating to the issue of a likelihood of confusion.

Filing Requirements

Trademark/Service Mark Requirements

  1. Name, nationality and address of the applicant. 
  2. International class; goods/services to be covered. 
  3. Priority application number (if applicable). 
  4. Power of attorney legalized by Apostille or the Salvadoran Consulate.

Renewal of Trademark/Service Mark Requirements

  1. Applicant general information; trademark and registration number in El-Salvador. 
  2. Power of attorney legalized by Apostille or the Salvadoran Consulate.

Assignment Recordal Requirements

  1. Applicant general information; trademark and its registration/ application 
    number in El Salvador. 
  2. Assignment document legalized by Apostille or the Salvadoran Consulate.

License Recordal Requirements

  1. Applicant general information; trademark and its registration/ application 
    number in El Salvador. 
  2. License document legalized by Apostille or the Salvadoran Consulate.

Change of Name/Address Requirements

  1. Applicant general information; trademark and its registration/ application 
    number in El Salvador. 
  2. Change of name/address document legalized by Apostille or the Salvadoran Consulate.

 

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