www.latinamerica-ipr-helpdesk.eu

Co-funded by:

European Union

Central America IP Country Factsheet

1. THE FACTS: Business Facts in Central America for EU Companies

3.1 M4.2 M

7.3 M

A. SIZE of Market

Sources: United Nations Database (GDP), World Bank Data (Annual GDP Growth and Population), DG Trade (EU exports, EU imports and EU Trade). All data collected refer to 2016.

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THE FACTS: Business Facts in Central America for EU Companies

IPR in Central America for SMEs: BACKGROUND

A. Intellectual Property Rights for SMEs: Why is this relevant to you?

B. How do Central American IP legal frameworks work compare to INTERNATIONAL STANDARDS?

IP Rights in Central America: THE BASICS

A. Copyright and Related Rights

B. Patent and Utility Model

C. Industrial Designs and Industrial Models

D. Trademarks

E. Geographical Indications (Indications of Source and Appellations of Origin)

Using CUSTOMS to block counterfeits

ENFORCING your IPRs

RELATED LINKS and Additional Information

GLOSSARY

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Guatemala El Salvador Honduras Nicaragua Panama

GDP €55,979,058,881 €21,826,162,184 €17,525,224,964 €10,775,823,960 €44,951,300,216

Annual GDP Growth

3,067% 2,367% 3,61% 4,702% 4,891%

Population 6,344,722 16,582,469 9,112,867 6,149,928 4,034,119

EU exports in goods

€ 905,062,174 € 471,171,199 €451,851,678 €236,115,250 €2,177,212,644

EU imports in goods

€ 896,411,930 € 213,325,947 €1,037,924,737 €343,424,233 € 596,373,777

EU Total trade

€ 1801 million € 684 million € 1489 million € 579 million € 2770 million

2. IPR in Central America for SMEs: BACKGROUND

A. Intellectual Property Rights for SMEs: Why is this relevant to you?

Intellectual Property (IP) refers to any creation, invention or sign, which can be used in commerce and is bound to its creator or inventor, capable of generating profits for its creator, inventor or rights holder. Hence, it must be considered as part of the main assets in a company or industry. IP is usually divided into two branches, namely Industrial Property, which relates to inventions, designs or signs used in commerce; and Copyright (or ‘author’s rights’, according to non-English definitions), which relates to literary and artistic works and Related Rights which refer to those involved in the production and performance of those works.

Intellectual Property Rights (IPR) are exclusive rights granted by a National Authority or by the Law that allow right holders to prohibit any unauthorized use or exploitation of their creations, inventions or signs by third parties. The exclusive rights are territorial and temporary; their length differs depending on the type of IPR and the country.

The importance of IPRs therefore lies in the possibility of generating assets for companies based on the exploitation of the exclusive rights granted and their protection against unfair competitive practices.

The development and protection of most creations and innovations protected by IPR tend to be expensive, The protection of these rights will enable SMEs to:

• Differentiatethemselvesfromcompetitors

• Provideastrongbasistobuildgoodwillinthemarket

• Generate income throughother businessmodels suchaslicensing or franchising

• Protect intangibleassets thatcouldbeevenmore importantthan tangible assets

• Prevent third parties fromusing their names, inventions,creative works, etc.

CENTRAL AMERICA IP COUNTRY FACTSHEET 1

B. Key INDUSTRY SECTORS

The Association Agreement between the European Union and Central America made a real change in the relationship between these two regions. The trade part of the agreement is aimed to open up markets for goods, procurement, services and investment on both sides. The abovementioned agreement is not only beneficial for European and Central American consumers; it also helps provide a more stable environment for business and investment by providing a predictable set of rules which, in many instances, go further than the commitments made under the framework of the World Trade Organization (WTO).

During the last three years, Central America has been implementing the Trade Pillar of the EU-Central America Association Agreement. As a result, EU exports to Central America increased by 22%, according to Regional statistics.

The main EU imports from Central America are, by order of importance: vegetable products; foodstuffs, beverages, tobacco; optical and photographic instruments and vegetable fats and oils. (Source: DG Trade)

The main destinations of EU export in Central America in 2016 were Guatemala and El Salvador (with 904 million and 471 million respectively). Nicaragua delivered a positive increase in total trade flows with the EU with an increase of 4,9% between 2015 and 2016. There is a common trend to all the concerned countries: a constant increase of imports from the EU. (Source: DG Trade)

According to the most recent Report from the Commission, the last meeting of the sub-committee on Intellectual Property Rights (IPR) (one of the implementation Bodies in charge of negotiating and ensuring the correct implementation of the Agreement) took place in June 2016. Two questions are still under negotiations: Geographical Indications and technology transfer. However, meetings and discussions have enable negotiators to make progress regarding the updating of the list of GIs to be protected.

Costa Rica, which is part of Central America, is also a member of the abovementioned Association Agreement with Europe. For further information related to Costa Rica, please check our Costa Rica IP Country Factsheet.

COSTA RICA

Central ameriCa iP Country FaCtsheet 2

although intellectual Property legislation enjoys a certain degree of international harmonization, Central america’s iP legislation differs somewhat from that of the eu. the purpose of this Factsheet is to provide an overview of the iP system in Costa rica, el salvador, Guatemala, honduras, nicaragua and Panama, as well as explaining the main differences between Copyright, Patents, industrial Designs and models, trademarks, Geographical indications and appellations of origin.

in comparison to the eu, Central america’s iP legislation still presents some deficiencies. For example, in Guatemala, el salvador and honduras, there are no specific regulations regarding new technologies, data protection, terms of privacy, videogames or social media.

CENTRAL AMERICA LACK OF LEGISLATION

B. How does the Central American IP legal framework work compare to INTERNATIONAL STANDARDS?

the countries of Central america are all members of the Patent Cooperation treaty. however, as of today, none of them has joined either the madrid system or the hague system. through the PCt system, eu sme’s with a single patent application will have a document serving as a basis for registration in each of the designated countries (see Glossary). however, if your company is interested in applying for a trademark or an industrial Design in those countries, you will need to apply locally.

Central american iP framework is composed of:

• InternationalTreaties,AgreementsandConventionsratifiedbythe country.

• Nationallaws(inIP,mainlyLawDecreesandResolutions).

regarding the first group, the countries considered in this iP guide are part of the following treaties and Conventions:

GT SV HN NIC Pa

Berne Convention for the Protection of literary and artistic Works P P P P P

WiPo Copyright treaty (WCt) P P P P P

Paris Convention for the Protection of industrial Property P P P P P

trademark law treaty (tlt) P P P P P

Convention establishing the World intellectual Property organi-zation P P P P P

lisbon agreement for the Protection of appellations of origin and their international registration x x x P xBudapest treaty on the international recognition of the Deposit of microorganisms for the Purposes of Patent Procedure P P P P P

Convention on Biological Diversity P P P P P

international Convention for the Protection of new Varieties of Plants (uPoV)1 x x x 1978 act 1991 act

Brussels Convention relating to the Distribution of Pro-gramme-Carrying signals transmitted by satellite X P P P P

Beijing treaty on audiovisual Performances (not yet in force)2 x P x x x

General inter-american Convention for trade mark and Com-mercial Protection of Washington, 1929. P x P P P

1 Guatemala and honduras have initiated the procedure for acceding to the uPoV Convention. el salvador has been in contact with the office of the union for assistance in the development of laws based on the uPoV Convention.

2 regarding the Beijing treaty, el salvador is the only country to have ratified it. so far, Guatemala, honduras and nicaragua have only signed and not ratified.

In addition, Central American countries have implemented their own national laws and regulations, while respecting the acquired

international obligations. The following are the most relevant:

Country Industrial Property Law

Copyright Law

Guatemala Industrial Property Law (Decree 57-2000)

Law on Copyright and Related Rights (Decree No. 33-98)

El SalvadorTrademark and Other Distinctive Signs Law (Decree 868)

Copyright Law (Decree 604)

Honduras Industrial Property Law (Decree 12-99-E)

Law on Copyright and Related Rights (Decree 4-99-E)

NicaraguaLaw on Trademarks and Other Distinctive Signs (Law No. 380 of 2001)

Law No. 312 of 1999 on Copyright and Rela-ted Rights

PanamaLaw No. 35 of May 10, 1996, on Industrial Property

Law No. 64 of October 10, 2012, on Copyright and Related Rights

In addition, the EU-Central America Association Agreement, entered into force in 2013. This agreement has eased commercial exchanges between the EU and El Salvador, Guatemala, Honduras, Nicaragua, Panama and Costa Rica. As regards IPRs, this agreement includes a chapter on the effective protection of intellectual property rights in order to provide right holders with the necessary tools to defend their rights more effectively in case of infringements. After the implementation of this agreement, the Central American countries have adopted new or amended their existing legislation to incorporate ‘Geographical Indications’ (GIs), in a manner similar to the EU. According to a European Commission report, over 200 EU GIs could be protected on the Central American markets for the benefit of European producers of GI products. Similarly, various Central American GIs will be protected on the EU market.

3. IP Rights in Central America: THE BASICS

A. Copyright and Related Rights

What are Copyright and Related Rights?

Copyright protects artistic, literary and scientific works such as books, musical compositions, sculptures, computer programs, etc. that may be reproduced or disclosed by any current or future means. Such protection covers both original and derivative works (e.g. adaptations, compilations, transformations, translations or arrangements).

Related rights protect the rights of those who are not authors but who contribute in some way to the creation, embodiment or communication of the work, such as musicians who perform in a concert, actors and book editors.

For Copyright protection, works must meet the originality requirement, in the sense of being unique, ingenious and/or creative

WHAT do you need to know?

Like Europe, in Central America, Copyright can be divided into two categories of rights:

− Moral rights are personal and non-transferable rights of the author. The main ones are the right to be recognized as author, the right to decide to publish the work and the right to the integrity of the work (i.e. the right of the author to impede any modification of his/her work without his/her consent).

− Economic rights, derived from the property of a work, granting the author (or owner) the right to prevent third parties from: communicating to the public (e.g. exhibition in a gallery), reproducing, distributing and transforming the work. All the economic rights recognized by law, can be subject to transfer or licence, as a whole or just some of them. Transfer and licence agreements require written form for their implementation.

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HOW much does it cost?

Where to register? Costs*

Guatemala Register of Intellectual Property €22 to €55

El Salvador National Center of Registries (CNR)

€9

Honduras Directorate General of Intellec-tual Property (DIGEPIH)

€20 to €40

Nicaragua Intellectual Property Office €38 to €95

PanamaDirectorate General of Copyri-ght. Ministry of Commerce and Industries

€4 to €8

*Costs depend on the type of work. They do not include attorney´s fees, translation costs neither disbursements costs unless otherwise expressed. (Costs updated on March 2018).

For more detailed information about registration costs and steps, please contact our Helpline.

B. Patents and Utility Models

Central American legislation provides two different types of protection for inventions:

Patents, to protect technical solutions that consist of a process (e.g. a process for manufacturing a computer) or a product (e.g. a new pharmaceutical composition).

Utility models protect new shapes, configuration or disposition of elements of a product, tool, instrument or mechanism that improve or transform its performance, use or manufacture providing a different use, advantage or technical effect (e.g. tools, appliances, devices or part of them). Processes and substances cannot be protected as Utility Models

Both Patent and Utility Models are territorial rights. Therefore it is necessary to apply for registration on a country-by-country basis.

In order to benefit from Patent protection, your invention must fulfil the following requirements:

• Novelty: An invention is considered new when it is not included in the state of the art. The state of the art comprises everything that has been made available to the public through written or oral description, by use or marketing or by any other means prior to the filing date of the patent application or, where appropriate, the recognized priority date (see Glossary).

• Inventive step: An invention is regarded as involving an inventive step as long as it is neither obvious nor obviously derived from the state of the art for an expert with average skills in the technical field concerned.

• Industrial applicability: An invention is deemed industrially applicable when its subject matter may be produced or used in any type of industry. In this context, industry includes all productive activity, including services.

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HOW LONG does legal protection last?

The exclusive rights granted by Copyright starts from the moment of creation and lasts for the author’s lifetime plus 70 years after his/her death, in El Salvador, Nicaragua and Panama, and 75 years in Guatemala and Honduras. However, the starting date and/or term of protection may vary depending on the type of work (e.g. in El Salvador and Honduras, in anonymous or pseudonymous works it will be 50 years from the first publication; in the case of computer programs, the term of protection coincides with the general term of protection, but the starting date starts from the first publication or, failing this, the date of creation).

HOW do you register?

As in Europe, Copyright registration is not mandatory in the Central American countries. Protection of the work against any infringement is granted from its creation even without formal registration. Nevertheless, registration can be very useful in enforcement actions as a proof of ownership, and, in particular, as evidence of the date of creation or content of the work itself.

The procedure of registration in this region is quite simple and inexpensive. You must provide the required documents, which must be submitted in person since online registration is not yet available in these countries.

Generally, the checklist for filing is as follows:

• Applicationform• Copyofthework• IDcopy• Proofofpayment(whenapplicable)• PowerofAttorney(incaseoflegalpersonorrepresentative)• Translationsofdocuments(whenapplicable)

Please bear in mind that the working language of the IP offices of these countries is Spanish and documents are to be submitted in this language. Moreover, sworn translation is required if the original is issued in a foreign language.

WHO can register?

Any natural or legal person, national or foreigner, can register their work before the competent Intellectual Property Office. Natural persons can apply directly; legal persons must act through a legal representative.

Central American laws also allow foreign companies to register their works as long as they have a local domicile in the corresponding country. Otherwise, a legal representative must be appointed.

It is compulsory in this region to register the following documents before the relevant Intellectual Property Office:

• Actsor contractsmodifyingor transferringcopyrightownership, as well as any administrative or judicial provision regarding these rights.

• Thepowerofattorneygrantedtoanynaturalor legalpersons to act before the IP office.

COMPULSORY REGISTRATION

CENTRAl AMERICA IP COUNTRY FACTSHEET

In order to obtain a Utility Model, the applicant should prove that the invention has a new use, advantage or technical effect (novelty), as well as industrial applicability. Hence, unlike Patents, the “inventive step” requirement does not apply to Utility Models.

DISCLOSURE and GRACE PERIOD

Unlike Europe, most Latin American countries, including Central American ones, provide a grace period during which public disclosure of an invention (under certain conditions) does not affect the validity of a subsequent Patent application, provided that a complete application is filed within 12 months of the disclosure.

When using this option, make sure that you provide all the necessary evidence at the time of filing your Patent application.

Just like Europe, some creations cannot be protected either as a patent or as a utility model in Central American countries, either:

• Because these creations are not considered as inventions: discoveries, scientific theories, mathematical methods, economic or business methods, exclusively mental activities or games, mere presentation of information, layout designs of integrated circuits, computer programs (protected as copyright), living matter, pre-existent substances in nature, combination of prior existing inventions (unless the combination fulfils the patent requirements, i.e. novelty, inventiveness and industrial application), etc.

• Because there is a specific prohibition: plant or animal varieties, the use of which may be contrary to public order or public morals, those contrary to the health and life of humans or animals and may harm the environment and plants or animals (except microorganisms and biological process for the production of plants or animals).

In most of these countries, Second Use Patents (see Glossary) are not excluded nor expressly allowed under their Intellectual Property Laws. Nevertheless, in countries such as El Salvador, the Patent Office has opposed patent applications related to 2nd therapeutic use alleging a lack of novelty of the claims. For updated information on current practice and law, please contact our Helpline.

EXCLUSIONS FROM PATENTABILITY

HOW LONG does legal protection last?

Patents are granted for 20 years from the application date subject to the payment of annual fees. The granting procedure takes between 5 and 6 years.

Because of DR-CAFTA, for patents filed after the agreement, if the registration process takes more than 5 years, or the substantive examination takes more than 3 years, applicants can apply for an extension of the protection. The extension should be requested within the 3 months following the granting date. Extension can be granted in the following cases:

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(a) when the process suffers an unjustified delay of more than 3 to 5 years; or

(b) when the invention belongs to the pharmaceutical field, and it takes more than a year to the administrative authority in charge to issue the relevant commercialization permits.

The term of the extension varies from country to country.

Regarding Utility Models, the term of protection is 10 years from the application date and the granting process tends to be shorter in comparison to Patents. In Honduras the term is 15 years.

HOW do I register?

- Application

These are the main aspects you should consider when applying for a Patent or a Utility Model registration in Central American countries: 1. Power of Attorney for a legal person or representative. It

should be authenticated by means of an Apostille. 2. Description of the Invention, which must include:

• The name of the invention• The technological sector to which the invention is related. • Abstract

3. Drawings, chemical formula or sketches of the invention, depending on its nature.

4. Claim(s) object of the invention. 5. A certified copy of the priority document. It does not require

legalization. This document must be filed in Panama within the next 3 or 6 months following the application in the country of origin.

6. If the applicant is not the inventor, certified copy of the assignment agreement of the invention. This document should be authenticated by means of an Apostille of The Hague (Guatemala was the last country to approved the Apostille Convention, which entered into force on September 2017).

In this region, the original assignment document might not be required by the Patent Office when applying under the PCT. A simple copy of the declaration of the inventor(s) might be sufficient under the PCT rules.

- Formal examination and publication

Once received, the Registry will check if the application contains all formal requirements. If the outcome of this first examination is positive, the Registry will register the date and hour of reception of the application. A number will be assigned to it and the corresponding receipt will be issued to the applicant. Hereafter the application will be examined regarding compliance with further formal requirements. If there is any deficiency, time will be granted by the Registry to correct them. If there is no response from the applicant, the application will be classified as abandoned.

CENTRAL AMERICA IP COUNTRy FACTSHEET

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The Patent Office will then publish the patent application: first, in the Official Gazette. This first publication will only contain the filing details (name of the applicant, application number, name of the inventors, etc.)

- Third parties’ oppositions/observations

Within 2 to 3 months from the publication, any person may file observations related to the patentability of the invention, together with the information or documents considered relevant. The Registry will inform the applicant of the observations filed. Whereupon, the applicant may within another 2 to 3 months, reply with the information and documents he considers pertinent.

In Nicaragua, if the Patent Office considers that the invention can be protected as a patent, it will notify the applicant with a positive substantive examination and within 2 months the applicant must pay the required fee.

After these 2 months, the Patent Office will issue a granting certificate and issue a public notice. From that date, third parties will not be able to file observations because the observations period expired. From now on, the only way third parties can oppose the Patent is before a Judge, through a judicial procedure.

- Substantive examination and final decision

Regarding the substantive examination, the following documents will be analysed: the information/documents filed by applicant; documents/information filled by third parties through observations (if any), and the information related to novelty examinations or patentability examinations carried out abroad regarding the same applications. The Registry may consider the outcome of the foreign examination procedures sufficient to conclude that the invention may be patentable.

If the Registry considers that a patent can be granted, it will issue an order to that effect. The Applicant must then pay the established fee. After registration, a certificate will be issued with all the specifics of the registration, including the description, claims, drawings and abstract.

WHO can register?

Applicants may be a natural person or legal entity.

Where the applicant is not the inventor, the requirements vary from country to country even though the idea behind them is the same: proving that the right to the patent has been legally acquired by the applicant.

Nicaragua requires the applicant to state how he acquired the right to the patent. El Salvador, requires the application to be accompanied by a declaration justifying the right to file the patent application. Honduras only requires the application to include the name of the inventor. Panama requires the application to be submitted through a lawyer and if the applicant is not the inventor, the Assignment Agreement or any document that duly justifies the right to file the application.

For foreign companies wishing to register their works, the only requirement is for them to appoint a legal representative.

HOW much does it cost?

The official fees for Patent and Utility Model registration are the following:

Patent cost* Utility Model cost*

Guatemala€ 700 (Application +

Examination fee + Cer-tificate’s issuance)

€ 428 (Application + Examination fee; +

Certificate’s issuance)

El Salvador

€ 314 (Application + Examination fee) for less than 10 claims; €10 for each extra

claim

€ 229 (Application + Examination fee) for

less than 10 claims; €5 for each extra claim

Honduras€ 378 (Application +

Examination fee + Cer-tificate’s issuance)

€ 141 (Application + Examination fee +

Certificate’s issuance)

NicaraguaI€ 500 (Application + Examination fee +

Certificate’s issuance)

€ 305 (Application + Examination fee +

Certificate’s issuance)

Panama€ 870 (application+

examination+ registra-tion+ publication)

€ 342 (application+ examination+ registration+ publication)

*Costs do not include attorney´s fees, publication, renewal neither prior search fees unless otherwise expressed. Costs updated in March 2018.

EU SMEs should take into account that there is no official fee for the number of claims in a patent application, except in El Salvador, where €10 are charged above the 10th claim.

CENTRAl AMERICA IP COUNTRy FACTSHEET

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C. Industrial Designs and Models

Central America countries provide for two different types of protection:

Industrial Design is any element or combination of flat elements, with aesthetic or ornamental character such as shape, colour, design, texture, with or without relief, that incorporated into an industrial or craft product (two-dimensional object), may serve as a pattern for industrial or handicraft production.

Industrial Model is any industrial or handicraft volume product, or its parts, whose shape, configuration, texture, material or combinations thereof, gives it a special appearance of ornamental or aesthetic nature (three-dimensional object), may serve as a pattern for industrial or handicraft production.

Both legal IP features refer to the appearance of a product defined by shape, configuration, texture or materials, not dictated by functional considerations

In general, and as other countries in Latin America, the countries of this region require novelty as a minimum requirement for Design protection. The Novelty requirement implies that no identical or closely similar Design has been applied for, commercialized or otherwise disclosed in any part of the world. Some countries in the region, such as Honduras, also require industrial applicability.

Should you need additional support on which requirements your Design must meet prior to registering it in a given Latin American country, please contact our Helpline: it is free, fast and confidential.

As opposed to what happens in Europe, take into account that these countries also provide a Grace Period for Industrial Designs. Therefore, disclosures that occurred within the time period established by law (6 months in Guatemala and 1 year in El Salvador, Honduras, Panama and Nicaragua) preceding the filing date of the application or, as the case may be, within the period preceding the applicable priority date, provided that such disclosure is the direct or indirect result of acts performed by the designer himself or his successor in title, or of a breach of contract or unlawful act committed against any of them.

As regards Latin America, only Panama (2 years), Nicaragua and Guatemala (3 years) grant protection to Non-Registered Designs in a similar way to the European Union. Therefore, it is not advisable to rely on unregistered protection of your Designs in Latin America.

NON-REGISTERED DESIGNS

HOW LONG DOES LEGAL PROTECTION LAST?

The protection lasts up to 15 years from the filing date, except El Salvador that protects them for 10 years. The granting procedure takes between 2 to 4 years depending on the Trademark and Patent Office.

HOW DO I REGISTER?

The granting procedure for designs is very similar to patents; nevertheless, in this case, the application will be published in a term of not less than 6 months, depending on the country.

Commonly, applicants should file an application before the relevant Patent Office including the following information:

• Designapplicationform

• Cleardescription

• Graphicorphotographicrepresentation

• Adeclarationfromthedesignerauthorising theapplicant tofile the application (if the applicant is not the designer)

• Proofofpaymentofthefees

• PowerofAttorney(ifnecessary)

• DeclarationofPriority(ifclaimed)

• Iftheapplicantisnotthedesigner,evidenceofrightsoverthedesign (i.e. transfer or assignment of the rights).

WHO can register?

Any natural or legal person, whether the inventor is a person or a third party to whom the rights have been assigned, may apply with the assistance of a legal representative. Take into account, that if the applicant decides to apply through a representative, the power of attorney or document proving representation must be attached to the application.

HOW much does it cost?

The fees are the following:

CENTRAL AMERICA IP COUNTRY FACTSHEET

D. Trademarks

WHAT is a trademark?

A trademark is any sign, word, or combination thereof or any other medium the characteristics of which are capable of distinguishing a product or service on the market.

Trademark registration grants the owner the exclusive right to use the trademark, to exploit it for an economic activity at a national level and to prevent any unauthorized use thereof by third parties.

The exclusive right to exploit the trademark is granted for a specific geographical territory. This right may also be licensed, thus allowing a third party to sell goods or services under the holder’s trademark in exchange for royalties.

Similar to the European scenario, in Central America, Tradenames (to identify business) and advertising Slogans are also protected. Exclusiveness over a Tradename is acquired by the first use while Slogans must always be linked to a Trademark registration or application.

TRADE NAME AND SLOGAN PROTECTION

As a rule of thumb, the owner of a Trade name or a Slogan has similar rights as the owner of a registered Trademark (for example, opposition against unauthorized use). The registration of a Slogan is granted a 10-year protection period from the filing date of the application, and can be renewed indefinitely for equal periods, provided that renewal is requested within the corresponding term and that the prescribed fees and charges are paid. On the other hand, Tradenames are protected indefinitely.

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WHAT do you need to know?

El Salvador, Guatemala, Nicaragua, Honduras and Panama do not require Trademarks to be capable of graphic representation. Therefore, these countries accept the registration of non-traditional Trademarks, such as sound, smell or 3-D Trademarks.

A trademark is subject to substantial examination in order to determine if the given sign falls into any absolute or relative grounds.

Absolute grounds for refusal refer to the nature of the trademark itself, for example:

• Lackofdistinctiveness regarding theprotectedserviceorproduct

• Genericinthecourseoftrade• Descriptive• Consistsoftheusualshapeofthegoods• Contrarytomorals,publicorderorcouldbedeemedoffensive• Might cause confusion or deception to the public or the

affected business sector.• Copiesorimitatesanyshield,flagoremblemrepresentingthe

corresponding country or any other foreign country

Relative grounds for refusal refer to conflict with earlier rights, for instance:

• Identicalor confusinglysimilar toapreviously registeredtrademark

• Identicalorconfusinglysimilartoacommercialname,signoremblem used or registered in the country by a third party

• Affectstherightsofathirdparty,especiallyregardinghis/hername, signature or title

• Mayinfringecopyrightorconstituteunfaircompetition• MayleadtoconfusionorbeassociatedwithaWell-knownor

famous trademark

CENTRAL AMERICA IP COUNTRY FACTSHEET

Fees Guatemala El Salvador Honduras Nicaragua Panama

Industrial Design application per class

€ 108 € 47 € 63 € 50 € 114

Industrial Model application per class

€ 108 € 47 € 63 € 81 € 114

Opposition fee N/A N/A N/A N/A N/A

Publication fee* €200-270 € 58 N/A € 48 € 11

*Publication fees are estimates. It includes one publication in the Official Bulletin + one publication in one national newspaper. It also depends on the number of characters and the chosen newspaper.

b) The trademark for which registration is sought, or a reproduction of the trademark in the case of a word mark with special graphic elements, shape or colour, or a figurative, composite or three-dimensional mark with or without colour

c) Translation of the Trademark to Spanish (if the sign is in a language other than Spanish)

d) The goods or services to be protected

e) The class/classes in which you want to register

f) Proof of payment of the fees

g) Power of attorney

After the first publication of the application in the Official Gazette and within the following 2 months, any person with a legitimate interest may file an opposition on the basis of any of the grounds for refusal as described above.

Regardless of whether oppositions are filed, the Trademark Office will perform the substantive examination and will determine whether there are grounds for refusing the application and consequently, grant or refuse the application.

WHO can register?

Any natural or legal person, national or foreigner, may apply for a trademark in Central American countries. It can be done directly or through a legal representative.

For notification purposes, foreigners (either natural or legal person) must indicate a local address or fax number.

HOW MUCH does it cost?

The Official fees are as follow:

Coexistence agreements are contracts signed by the Trademark holder and the holder of an earlier Trademark to define the use and scope of each right. This type of agreement is very useful in cases where Trademarks conflict at registration level but their real use in the market would not cause confusion among consumers.

Unlike Europe, where Trademark Offices use such agreements as a means to unblock oppositions and Trademark granting procedures, the IP Offices of these countries are reluctant to accept coexistence agreements, particularly those which identify Trademarks with similar products and services.

COEXISTENCE AGREEMENTS

HOW LONG does legal protection last?

In all Central American countries, the exclusive right granted to Trademarks last for 10 years starting from the registration date. These can be indefinitely renewed for 10-year periods. It takes around 6 to 12 months to register a Trademark, subject to the absence of third parties’ oppositions or Trademark Office objections/rejections.

HOW do I register?

Guatemala is the only country providing the possibility to submit the documents online in order to obtain a provisional filing date (here). However, as in the rest of the countries, registration must be filled in person.

The application must contain, at least, the following information:

a) Applicant’s identifying information

9CENTRAL AMERICA IP COUNTRY FACTSHEET

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E. Geographical Indications (Indications of Source and Appellations of Origin)

WHAT are they? WHAT do they protect?

Within Central America, there is a need to distinguish between three concepts:

Geographical Indication (GI) is the name of a given country, region or place or a name that is used to identify a product originating therein when its quality, reputation or other characteristics are essentially attributable to its geographical origin.

An Appellation of Origin (AO) is the name of a given country, region or place or a name, which is used to identify a product originating therein when its quality, reputation or other characteristics are essentially attributable to the geographical environment in which it is produced, including both natural and human factors.

On the other hand, an Indication of Source (IS) (creation with no parallel at European level) is the name of a given country, region or place or a name, which is used to identify the area of extraction, processing or production of a product.

WHAT do you need to know?

IS are not subject to registration. Any natural or legal person in the field of trade can use them freely as long as they are used according to their distinctive nature and it does not interfere with earlier rights of third parties.

The Indication of Source is a means to protect consumers against being misled from the origin of a product rather than a conventional IPR. By means of the IS the consumers and competitors can prevent a third party to use the name or evocation of a place if the product does not come from such place. (E.g. they can prevent the use of the expression “Italian milk” if the milk does not come from Italy).

CEnTRAl AmERICA IP COunTRy FACTShEET

Fees Guatemala El Salvador Honduras Nicaragua Panama

Trademark application fee per class

€200 €160 €165 €150 €121

Tradename €200 €160 €165 €150 €121

Advertising slogan €200 €160 €165 €150 €131

Transfer of rights, license, cancellation, change of name

€100 €40 €25 €70 €20

Opposition n/A n/A n/A n/A n/A

Renewal fee €65 €150 €60 €120 €115

Protection of an AO is acquired with a declaration issued by the relevant national IP Office upon request of the person established by law or any public entity. In Guatemala, if the AO’s registration is required by the Ministry of Agriculture, Livestock and Food or the Ministry of Culture and Sports, no fees will be required.

Generally, and according to the national legislations of these Central American countries, the following cannot be registered as an Appellation of Origin:

• Thosethatdonotcomplywiththedefinitionsprovidedabove

• Whencontrarytomoralandpublicorder

• Whenitcanmisleadregardingthegeographicalorigin,nature,fabrication process, characteristics or qualities of the good. Guatemala adds the possibility of confusion regarding the use or the way to consume the good.

• When the denomination is the generic denomination,understood as the denomination considered as such by insiders and consumers.

• When it isconfusinglysimilaror identical toapre-existingregistered trademark or when the registration application has been filled in good faith

• Whenitincursinoneoftheinadmissibilitycausesestablishedby law for trademarks (confusion, identical, infringing another IP right…).

Take into account that if the AO is accompanied by the generic name, it will be registered, however, protection will not be extended to this generic part.

HOW European GI/AO are registered?

After the entry into force of the EU-Central America Association Agreement, protection of a European GI/AO is often obtained through the following legal means:

• National registration procedure, before the competent national authority, according to national procedural rules, unless they are not protected or no longer protected in their country of origin.

In Panama, foreign GI/AO related to wine and spirits will not be registered if they have been already used for a 10-year period by nationals from Panama in relation to the same goods or services or akin, before April 1994.

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• Multilateral agreement: EU applicants (provided that their countries have signed the relevant international agreement) may obtain protection in the countries of this region by means of a single application filed before the International Bureau.

Thanks to the EU-Central America Association Agreement, since 2013, more than 100 EU GIs were protected in this region, including Champagne, Turron de Alicante, Rioja, Ribera del Duero, Emmental de Savoie; Camembert de Normandie, Brie de Meaux, Prosciutto di Parma, Bayerisches Bier, Cava, Barolo, Prosciutto di Parma, Inländerrum, Zivana, etc.

WHO can register an Appellation of Origin?

The required criteria for registration vary from country to country. However, like Europe, in all these countries, any formally established entity representing a group of producers, manufacturers or craftsmen, as well as any national authority can apply for registration. The application must be submitted through a lawyer before the National IP Office.

HOW LONG does legal protection last?

Validity runs for an indefinite period of time as long as the conditions that prompted the registration still exist.

HOW MUCH does it cost?

GI/AO application fee

Guatemala €458

El Salvador €100

Honduras €200

Nicaragua € 140 (application, publication and certificate)

Panama €215

CENTRAL AMERICA IP COUNTRY FACTSHEET

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4. Using CUSTOMS to block counterfeits

Unlike Europe, laws, processes or penalties are not harmonized at this level. Therefore, bear in mind that each country has a specific set of measures regarding border measures.

Panama has the most developed rules regarding border measures and IP. Panama has a Customs’ Department specialized in IP which that oversees a Centralized Registry of Trademark Holders. Customs also play an active role identifying counterfeit trademarks and blocking merchandises on an ex officio basis. Processes are simple and fast.

In El Salvador, even though there is no specific legislation, Customs Authorities have issued a General Administrative Provision regulating border measure’s process. Customs Authorities will publish on the website of the Ministry of Finance the seized counterfeited goods, for third party actions.

Honduras will soon have rules on Border Measures that should comply with all the TRIPS requirements and clarifying the border measures’ process. Honduras has a specialized IP Prosecuting Office working with a special task force from the police in the fight against piracy and ensuring the application of border measures. “Dragon II” or “Garfio II” are examples of the few operations that have been carried out by the Office against IP infringement.

Guatemala and Nicaragua, despite considerable efforts to improve the protection of IPRs, have not yet tackled key issues, such as the creation of specific enforcement laws or border measures. They do not have an IP Customs Department that could handle

a Trademark registry and they lack a specialized IP Prosecution Office or Interinstitutional Commission to combat Piracy and Counterfeits such as the one created by the IP Office of Honduras in 2016.

In Guatemala, Salvador, Honduras, and Nicaragua the general rule is that the trademark owner plays an active role in customs seizures, even if the authorities have powers to act ex officio. Therefore, the owner has to file a preliminary injunction requesting the postponement of the clearance of the infringed merchandise, then customs will seize the goods for no more than 10 days, during which the trademark owner must file a civil or criminal action.

One of the main common problems in some of these countries, is that customs officials are responsible for damages if the importer can prove negligence or bad faith in the border measure ordered by the official. Therefore, they are reluctant to stop infringements that might entail a loss for them.

If the Customs office detects suspicious counterfeited goods it may notify the right holder and allow him/her to inspect the goods according to the local regulation. Although only Panama has an official Register for IPR holders, in the other countries there is an informal list that some Customs Officers use.

CUSTOMS LIST

CENTRAL AMERICA IP COUNTRY FACTSHEET

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5. ENFORCING your IPRs

Like European legislations, although with a different level of development, Central American legislations offer various alternatives for IPR enforcement: administrative actions before the national authorities (e.g. in the case of unlawful registration), civil actions (when seeking compensation) and criminal actions (only applicable in certain cases, such as trademark violations).

A. Civil Actions

The right-holder of patents, utility models, designs, trademarks and appellations of origin is entitled to request, before the competent court, cessation of the infringing activity, compensation for damages and seizure and/or destruction of the infringing goods and any goods used to commit the infringement (e.g. computers, moulds…)

As for copyright and related rights, the right-holder is entitled to request, before the court of first instance, payment and compensation for damages and seizure and/or destruction of the goods and any goods used to commit the infringement.

B. Criminal Prosecution

In Panama infringers can face up to 6 years of imprisonment. Criminal Law also sanctioned specifically infringements against the collective rights owned by indigenous people and their traditional knowledge.

In Honduras, IP infractions are sanctioned with 3 to 6 years of imprisonment, as well as a fine that goes up to 20 times the minimum wage.

Regarding El Salvador, infringers can face up to 6 years of imprisonment if they fall within the aggravated type of Copyright infringement (impersonation of the author or because the work is of particular economic significance).

In Guatemala, it is for the Attorney General's Office to file the criminal action. The owner of the IP right can either report the infringement to the Office or adhere to the action filed by it. The criminal action can also be filed by any consumer association or organization representative of a production sector affected by the violation. Infringements are sanctioned with up to 6 years of imprisonment and fines can go up to around 84,000 €.

Finally, Nicaragua sanctions with up to 3 years of imprisonment IPR infringers, fines and, a unique addition, disqualification from any function that is related to the infringing behavior.

C. Administrative Actions

Administrative actions are lodged before the competent IP Office and are limited to actions concerning the grant, the existence and the ownership of the IPR, namely cancellation and opposition actions and claims of IPR ownership.

SPECIALISED COURTS

In Guatemala, El Salvador, Honduras and Nicaragua, judges have no specific IP background. Only in Panama can IPR owners benefit from specialized judges.

According to an International US Trade Administration report, the Honduran legal framework provides deterrence against piracy and counterfeiting by, for example, requiring seizure, forfeiture, and destruction of counterfeit and pirated goods and the equipment used to produce them. The law also provides for statutory damages for copyright and trademark infringement.

Another report of the International US Trade Administration indicates that Guatemalan enforcement of IPR laws has been inconsistent. A number of raids, cases, and prosecutions have been pursued, but resource constraints and lack of coordinated government action impede efficient enforcement efforts. Piracy of works protected by copyright and infringement of other forms of intellectual property, such as trademarks remains problematic.

CENTRAL AMERICA IP COUNTRY FACTSHEET

CENTRAL AMERICA IP COUNTRY FACTSHEET

6. RELATED LINKS and Additional Information

For more information, see the following websites:

Intellectual Property Register of Guatemalahttps://www.rpi.gob.gt/

National Registration Center (CNR)http://www.cnr.gob.sv/

Intellectual Property Office http://www.mific.gob.ni/REGISTRODELAPROPIEDADINTELECTUAL/tabid/110/language/es-NI/Default.aspx

Directorate General of Copyrighthttps://www.digerpi.gob.pa/

DG Trade Reports on Central Americahttp://ec.europa.eu/trade/policy/countries-and-regions/regions/central-america/

Highlights of the trade pillar of the Association Agreement between Central America and the European Union http://trade.ec.europa.eu/doclib/docs/2011/june/tradoc_147987.pdf

Observatory of Economic Complexityhttps://atlas.media.mit.edu/en/profile/country/rou/

EU-Central America Association Agreementhttp://trade.ec.europa.eu/doclib/press/index.cfm?id=689

World Intellectual Property Organizationhttp://www.wipo.int/portal/en/index.html

EU-Central America: Trade relations under the association agreementht tp : / / t rade .ec .europa .eu /doc l ib /docs /2012/november /tradoc_150029.pdf

Trade trend estimates Latin America and the Caribbean 2017 editionhttps://publications.iadb.org/bitstream/handle/11319/7984/Trade-Trend-Estimates-Latin-America-and-the-Caribbean-2017-Edition.pdf

Study on specialized Intellectual Property Courts http://iipi.org/wp-content/uploads/2012/05/Study-on-Specialized-IPR-Courts.pdf

Honduras country commercial guidehttps://www.export.gov/article?id=Honduras-Protection-of-Property-Rights

Guatemala country commercial guidehttps://www.export.gov/article?id=Guatemala-Protection-of-Property-Rights

El Salvador country commercial guidehttps://www.export.gov/article?id=El-Salvador-Protection-of-Property-Rights

Nicaragua country commercial guidehttps://www.export.gov/article?id=Nicaragua-Protection-of-Property-Rights

Panama country commercial guidehttps://www.export.gov/article?id=El-Salvador-Protection-of-Property-Rights

7. GLOSSARY

Designated countries: refer to the countries to which the applicant aims to extend his/her international application by means of any of the WIPO international registration systems: PCT, Madrid, Hague and Lisbon.

Right of priority: Whenever a person from any signatory country of the Paris Convention files a national application for a Patent or Industrial Design in any of the 176 members, the date on which the first application was filed is established as the date of priority for any future application in any of the members, provided that subsequent applications are applied for within twelve months of the first application.

Second use patents: Refers to the possibility of patenting a different use of an already known object/product (e.g Use of a chemical composition as a medicine to treat heart diseases when the original patent claims its use as antibiotic). In general, in Europe it is possible to patent such second use subject to the fulfilment of the novelty and Inventive step requirements.

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Disclaimer:The Latin America IPR SME Helpdesk is a free service which provides pract ical , object ive and factual information aimed to help European SMEs understand business tools fo r d e v e l o p i n g I P R v a l u e a n d managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and Medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.

Last update: May 2018

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