Laws of Amendments to the Nicaraguan Trademark and Patent Laws

By Guy José Bendaña-Guerrero & Asociados

Laws of Amendments to the Nicaraguan Trademark and Patent Laws
Dear Clients and Associates:

We advise you that the Nicaraguan Trademark Law (Law No. 380) has been amended by Law No. 1024, which has now entered into force since the date of its publication on April 03, 2020. The relevant changes are comprised by the reduction of the terms, creation of new official fees and an increase in most of the existing official fees.

Please note below a brief summary of the relevant aspects included in such amendments:

1. Official fees for all trademark matters must be paid upfront along with the respective filing application. Prior to said amendments, the law allowed in some cases, such as new filings and renewals, to pay the official fees within the following two months from the filing date.

2. The opposition term is reduced from the previous term of two (2) months to thirty (30) business days counted from the publication date. Furthermore, there is a new applicable official fee of US$52 that must be submitted along with the opposition brief. Such term can be extended one time only for an additional fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of US$20. The request of extension must be filed prior to the expiration of the opposition term.

3. The term for the opposed party to file a response is also reduced from the previous term of two (2) months to thirty (30) business days counted from the date of the official notification of the opposition. Additionally, if the opposed party does not file a response, the application will be declared as abandoned and the file will be closed.

4. The term to file evidence in opposition cases is reduced from thirty (30) business days to fifteen (15) business days, counted from the date of filing of the applicable matter (opposition or reply to opposition). Such term can be extended one time only for an additional fifteen (15) business days by filing an extension request and paying the respective extension official fee of US$20. The request of extension must be filed prior to the expiration of the term to file evidence.

5. The term to file a response to an objection raised by Trademark Office is reduced from the previous term of two (2) months to thirty (30) business days counted from the official notification of the objection. Furthermore, such term can be extended one time only for an additional fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of US$20. The request of extension must be requested prior to the expiration of the term to file the response. Lastly, all evidence must be filed along with the reply to the objection.

6. For urgent cases filed locally without a Power of Attorney through the rendering of a bond, the term to file the required Power of Attorney is also reduced from the previous term of two (2) months to thirty (30) business days counted from the date of the filing. Furthermore, such term can be extended one time only for fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of US$20. The request of extension must be filed prior to the expiration of the term.

7. Most of the official fees increased and new fees were created as well.

We also want to advise you that the Nicaraguan Law of Patent of Invention, Utility Models and Industrial Designs (Law No. 354) has been amended by Law No. 1025, which has now entered into force since the date of its publication on April 03, 2020. The relevant changes are comprised by the creation of new official fees and an increase in most of the existing official fees.

Please find here a comparative list of prior and current fees.

If you need additional information or have any questions, please feel free to contact us.

Very truly yours,


GUY JOSE BENDAÑA-GUERRERO & ASOCIADOS  
Guy José Bendaña-Guerrero & Asociados

GUY JOSE BENDAÑA GUERRERO & ASOCIADOS has a long and prosperous tradition in the field of intellectual property (IP) in Nicaragua, with roots that go back to more than 100 years, resulting on long-term relationships with renowned clients and attorneys worldwide.

The firm has its origins in the law firm Henry Caldera & Henry Caldera-Pallais, founded in 1907 by Mr. Henry Caldera. That same year of 1907, through the efforts of Mr. Caldera, Nicaragua had its first Trademark Law. In the late 1930’s, Mr. Caldera’s oldest son, Dr. Henry Caldera-Pallais, after studying law in Nicaragua, attended the University of Michigan, where he graduated as a Registered U.S. Patent Attorney. Dr. Caldera-Pallais in 1964 was a founding member of the Interamerican Association of Intellectual Property (ASIPI), the first regional intellectual property organization in the Americas. The firm continued to grow during the administration of Dr. Franklin Caldera, son of Dr. Caldera-Pallais, who obtained his doctoral degree in law from the Universidad Centroamericana in 1973.

Since 1985 the current partners, Dr. Guy José Bendaña Guerrero and Mrs. Blanca Aragón de Bendaña, took over the management of the firm. Dr. Bendaña Guerrero, Director of the firm, has distinguished himself as one of the most respected authorities in Central America in the field of intellectual property and law in general, being the author of several books such as “Course of Industrial Property Law”, “Study of the new Laws of Industrial Property” and “New Study of Contracts “, among others. Mrs. Aragón de Bendaña has served as the firm’s general manager and, thanks to her excellent management, the firm has been in constant growth, with a highly qualified staff committed to excellence. Since 1996, partner Julián José Bendaña Aragón joined the firm, and has been standing out as one of the most recognized attorneys in the field of intellectual property.

We have adapted to the constant change of the business world, supporting our clients in finding the most appropriate legal solutions for each moment. The firm distinguishes itself by understanding the needs of its clients, offering personalized service and adding value to its activities.

Nowadays we continue to be the leading firm in Nicaragua in the area of intellectual property, and at the same time, we have been consolidating other areas of service within the civil, commercial and labor fields, as well as litigation and consulting in general. The firm is well positioned to guarantee a pragmatic service that meets the requirements of the most demanding clients.

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