Important Reforms to Intellectual Property Laws in Nicaragua

Posted by: Francisco Jose Alvarado | Senior Associate at Alvarado y Asociados

In the Official Gazette No. 65 of April 3rd, 2020, Laws No. 1024, Law on Reforms and Additions to Law No. 380, Law on Trademarks and Other Distinctive Signs and Law 1025, Law on Reforms and Additions to Law 354, Law of Patents of Invention, Utility Models and Industrial Designs, were published.

The main objective of these reforms was precisely to update the official fees for the services offered by the Registry of Intellectual Property in matters of Patents, Trademarks and other Distinctive Signs, as well as the creation of new ones.

In general, Law 1025, Law of reforms and additions to the Law of Patents of Invention, Utility Models and Industrial Designs focuses mainly on the increase of fees, however, the Reform to the Law of trademarks  and Other Distinctive signs in addition of the modifications to the official rates of the Registry,  also includes some new topics, among which we can highlight the following:

  • Payment in advance: One of the main modifications is the filing of the payment of the official fees together with the applications for registration, renewal, transfer or any other modification to the registration of trademarks, when previously, the Law granted a period of two months for the filing of the payment when it had not been presented with the request.
  • Searches: With this reform we can now apply for searches consisting in sound, smell or other perceptible signs.
  • Filing of Power of Attorney: An official fee payment is established for the registration and/or update of Power of Attorney’s, in addition there is an official fee payment for the late filing of the Power of Attorney or to act as agent, in cases where the Power of Attorney is not attached with the application. The Power of Attorney must be filed within a period of 30 business days, when previously two months were granted. Additionally, there is now a fee for the modification of the Legal Representative.
  • Reduction in deadlines: The deadlines have a significant reduction, including a reduction in the periods to correct errors or omissions, for examination, opposition, defense and objection, late presentation of the Power of Attorney to 30 business days, even to manage the publication of the notice in the Official Gazette, for which a period of 15 working days has been assigned from its delivery.
  • Granting of protection to geographical indications through its inclusion in subparagraph g) of article 8 "Trademarks inadmissible for third party’s reasons”, previously this article only included designations of origin.
  • Creation of Auxiliary Registrants: The previous law established that the Registrant could have a maximum of two auxiliary Registrants, who would only exercise their functions in the event that the Registrant experiences illness, or temporary absences; however, the current reform has introduced the term, of “Auxiliary Registrant”, who can act together with the Registrant and not only in his absence, this will make the processes faster, as they have the power to sign notices, registration entries, certifications, resolutions and documents, including any other task that is designated by the Registrant, within the powers contemplated in the Law. Since the Law came into force, it is the Alternate Registrants who assumed the duties of Auxiliary Registrants.
  • Electronic notifications: For the first time, the Law recognizes the possibility of being notified electronically. The applicant or his attorney, can now designate an email to which he can receive all the notifications, officially issued by the Intellectual Property Registry.
  • Increase in official fees: Official fees have an increase of approximately 30%, modifying rates related to registrations, renewal, certificates and searches; creating also new fees related to application forms, oppositions, informal procedures, extensions and photocopies, such as:

- To act as agent: U$ 10.00

- Reissuing of notices: U$ 25.00

- Request for Extension of deadlines: U$ 20.00

- Registration or update of Power of Attorney: U$ 20.00

- Modification of Registration of Legal Representative: U$ 40.00

- Filing of Opposition to the registration application: U$ 50.00

- Request for registration of a voluntary cancellation ordered by the competent authority: U$ 40.00

- Simple photocopy. U$ 1

-  Application Form: U$ 2

Although the background of the Law, despite the increase in tariffs, is generally positive, since it focuses on speeding up administrative procedures, which in the day to day practice has always exceeded the terms provided by the Law; it is important to highlight that it is mainly the reductions to the deadlines of the terms of  applicants and owners of trademarks that must be observed since surveillance of the trademarks is essential to protect the interest of our clients.

 

 Please contact Francisco Alvarado falvarado@alvaradoyasociadoslegal.com if you have any questions.

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