Changes in Trademark Law coming to Guatemala

By Mayora IP

The Republic of Guatemala acceded to the Trademark Law Treaty, which entered into force, with respect to Guatemala, on December 12, 2016. The Treaty shall apply to marks consisting of visible signs, including three-dimensional marks, which relate to products or services, or to both products and services.  However, it does not apply to holograms, sound or scent marks, or collective and certification marks. Accession was one of the commitments Guatemala acquired through the Free Trade Agreement between Dominican Republic, Central America and the United States of America (DR-CAFTA) and the EU-Central America Association Agreement. On 29 May 2017, the Ministry of Foreign Affairs published the instrument of accession for the Trademark Law Treaty, and the TLT’s text, its regulations and forms in the Official Gazette.

Guatemala’s legal services community has contributed to the discussion on how current legislation would have to be amended as well as how the practice of trademark law will be affected. Change is positive and will give fresh air to local practices that were not in tune with international standards. Life will be easier for both intellectual property law practitioners and right holders, both international and local. New legislation or regulation should make it easier to protect trademark rights in Guatemala, specially issues such as powers of attorney and a multiclass application. Changes in the Industrial Property Law have not been yet presented to Congress, and some aspects of the treaty can surely be addressed through a change in the current regulation without having to change the law.

One of the most hotly debated points is the use of power of attorneys, since there are now forms which will have to be used instead of the power of attorneys the law in force currently demands. Yet it is important to mention that the Apostille Convention will enter into force for Guatemala on 18 September 2017, since Guatemala acceded to the convention in January 2017. The designated competent authority will be the Ministry of Foreign Affairs, namely the Department of Authentication of the Directorate of Legal Affairs of the General Directorate of Legal Affairs, International Treaties and Translations. Guatemala was the last country in Central America to accede to this fundamental treaty, which will make it easier to legalize documents from abroad, including power of attorney. Guatemala is also signatory of Inter-American Convention on the Legal Regime of Powers of Attorney to be Used Abroad (Panama Convention), which should be considered when drafting these contracts.

One of the most exciting changes will be that soon Guatemala will have multiclass applications. These applications will make it easier for right holders, especially small enterprises to protect their trademark rights at a lower cost. There is debate on whether we should apply the principles incorporated in the Singapore Treaty on the Law of Trademarks when the law is amended. Guatemala should seriously consider relief measures are provided for cases in which a time limit has been missed for an office action such as extension of time limits, continued processing and reinstatement of rights. These changes will make the process more user friendly and protect trademarks rights better.