Enforcement of national treatment principle

By Mayora IP

The Constitutional Court of Guatemala (CC), the highest court for constitucional law in the country, ensured the effective protection of the "national treatment principle” after an anti-counterfeiting action brought by MAYORA IP. It is a binding decision for future actions in general.

Within an action initiated in 2017, the MAYORA IP litigation team, led by lawyers Santiago Mayora and Hugo Rivas, achieved the effective suspension of the importation and dispatch of a container from Mainland China that carried counterfeited appliances which infringed a client’s registered trademarks in Guatemala. The case began with the filing of a criminal complaint which prevented the local port authority from authorizing the dispatch of the products to the importer.

The defense strategy focused on an unfounded request made to a court of first instance, which sought the owner of the registered trademarks to post a bail (surety bond) of USD 25.000 as a condition to continue its legal action as a “private prosecutor”. Initially, the district court accepted the request based on a national general rule pursuant to which all “foreign-domiciled” parties must post bonds to purse action. This illegal decision also stipulated that the owner of the trademarks lacked the right to be actively involved in the legal process or challenge any decisions related to it.

The first instance decision was held by the court despite MAYORA IP objection that the national treatment principle was disregarded. Such principle, established in article 3 of the TRIPS Agreement and in national legislation, allows foreign and local trademark, copyright and patent owners to be treated equally. Article 3 of the TRIPS Agreement states that each World Trade Organization (WTO) Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property.

After the decision of the district court was held, a constitutional injunction (“Tutela Action”) was filed by MAYORA IP based on the national treatment principle. A first judgment granted protection to the infringed intellectual property rights, thus securing the client to the same legal treatment than any Guatemalan trademark owner.

The CC of Guatemala affirmed such decision through a second appeal judgment, reversing the arbitrary decision held by the court of first instance and ordered such court to issue a new resolution that enforces the national treatment principle to protect intellectual property rights.

The Constitutional Court judgment will now be applicable to all foreigners that seek to protect their intellectual property rights in Guatemala, establishing the same protection that the local legislation grants to Guatemalan trademark owners.