Every business desires to become renowned and continuously grow. During the technological era, social media advertising and other means which are easily accessible and affordable become effective tools for small, medium and large businesses to gain acknowledgement. Now, for a business to successfully achieve its goal of becoming well-known, having an identifiable trademark¹ is key.
In this sense, it is essential to register the trademark of the business in order to ensure its legal protection.
Trademark registration in Paraguay is done before the National Direction of Intellectual Property (DINAPI). Even though the process is not short, the business’s rights are protected from the moment the filing process commences. The priority of the right to obtain the trademark registration is determined in accordance with the date and time of the filing before the DINAPI².
What are the benefits a business gets from protecting their trademark?
The filing and concession of a trademark grants the title holder the exclusive right over the trademark, along with the power to bring legal action against whoever attempts to damage or prejudice the trademark (ie.: whoever intends to register a similar trademark which may cause confusion to the public). In addition, being the owner of a protected trademark allows the business to oppose to any use or filing of any other trademark and/or symbol which may be related to the trademark or which may induce the public to confusion³. By having a trademark registered, the business may also transfer partially or in the totality of the trademark in question⁴ to another party. Such transfer is also effective for third parties, once it is registered in the DINAPI⁵.
A trademark registration once granted is valid for 10 years, and can be renewed indefinitely⁶. If the renovation process is not performed, then the title owner’s rights over the trademark are extinguished⁷.
¹ LAW N° 1.294 – OF TRADEMARKS: Article 1.- A trademark is every symbol which serves to distinguish products or services. Trademarks may consist of one or more words, mottos, emblems, monograms, stamps, vignettes, reliefs; fictitious names, letters, numbers with forms or different combinations; the combination and disposition of colors, tags, packages and wraps. Trademarks may also consist in the way a product or its packaging is presented, conditioned, or the means or retail locations of the corresponding products or services. This list is not exhaustive but merely illustrative.
² LAW N° 1.294 – OF TRADEMARKS: Article 12.- Priority of the right to obtain the trademark registration shall be determined by the date and time of the filing before the National Direction of Industrial Property.
³ LAW N°1.294 – OF TRADEMARKS – Article 15: The registration of a trademark performed in conformity with this law, grants the title owner the right to the exclusive use of the trademark and to exercise before the jurisdictional authority the measures and actions which correspond in case its rights are being harmed. Likewise, the registration grants the right of opposition to the use and registration of any other sigh which could induce direct or indirectly to confusion or association between the products or services in any of the classes the trademark is protected.
⁴ LAW N°1.294 – OF TRADEMARKS – Article 39: The rights inherent to a registered trademark, or the trademark request which has been filed, can be transferred or assigned partially or totally, in regards to the products or services for which the filing or registration of the trademark has been made.
⁵ LAW N°1.294 – OF TRADEMARKS – Article 44: The transmission or assignment of a trademark shall have legal effects towards third parties once registered before the National Direction of Industrial Property. Such request shall be published conforming what is established in the Rules. Once the request is filed and the duties and taxes are paid, the inscription of the transmission will be ordered. A certificate of transmission will be provided by request of the interested party.
⁶ LAW N°1.294 – OF TRADEMARKS – Article 19: The trademark registration is valid for ten years, and can be renewed indefinitely for periods of ten years when the renewal is requested during the last year prior to its expiration and when the formalities are complied with. The new period of validity will be counted starting on the expiration date of the previous registration. The renewal may also be requested within a grace period of six months following the expiration date, performing payment of the corresponding costs, taxes and an additional fee for the delay.
⁷ LAW N°1.294 – OF TRADEMARKS – Article 53: Property rights over a trademark extinguish with: a) renouncement by the title holder; b) expiration of the validity period without renewal; and c) judicial declaration of nullity or expiration for non-use of the trademark.