INTELLECTUAL PROPERTY RIGHTS IN GUATEMALA
First Renewal Term
Subsequent Renewal Term
Apart from the Paris Convention and TRIPS, the legal framework for trademark registration and protection is primarily comprised by the Industrial Property Law (Decree of Congress 57-2000 and amendments), which came into effect November 1, 2000, and the executive regulations to such Law (Executive Accord 89-2002 and amendments). Amendments to the IP Law were last made in June 2013, arising from an Association Agreement entered with the European Union.
Recently the Trademark Law Treaty (TLT) was approved and came into force; however, the trademark office is waiting for change to implement this treaty.
Trademark protection is obtained by registration (‘first-to-file’ system). Prior use in Guatemala is only required for the registration of trade names. In such case, registration is only declarative (an exception to the ‘first-to-file’ system).
Guatemala has a multi-class filing system since Article 6 of the TLT makes the same permissible.
For the purposes of the classification of products and services for which the registration of a trademark is requested, the 10th Edition of Nice Classification applies by express reference of the current trademark law, even though Guatemala is not a party to the Nice Agreement.
The registration of trademarks in Guatemala is done through the Register of Intellectual Property of Guatemala (RPI).
Any interested party may file opposition against a trademark application within two (02) months, counted from the date of the publication and based on relative grounds (i.e., third-party rights) or absolute grounds (prohibitions for registration, non-distinctiveness).
Guatemala is a party to the General Inter-American Convention for Trademark and Commercial Protection, which provides for the protection of signs registered or in use in other member states, even if such are not registered in Guatemala.
Trademark registration is granted for ten (10) years from the date of grant; registration may be renewed indefinitely for equal and consecutive periods of ten (10) years each. Use of the trademark is not required for its maintenance or for renewal purposes.
Renewal may be filed within one (01) year prior to the expiration of the term of ten (10) years, subject to the payment of the renewal fee. However, if the term elapsed without having filed for renewal, the law provides for a grace period of six (06) months, during which one can file for a late renewal upon payment of an increased official fee.
If a trademark is not used by its owner for straight periods of five (05) years, third parties may present cancellation actions against its registration.
A patent can be registered in Guatemala pursuant to the Industrial Property Law Decree No. 57-2000 (November 1, 2000), its Modification Decree No. 11-2006 and Decree No. 3-2013, and the Regulations to the Industrial Property Law No. 89-2002 (March 18, 2002).
Guatemala has been a contracting party to the Paris Convention for the Protection of Industrial Property since August 18, 1998. Additionally, it is a party to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
The application for patent grant is to be filed with the Guatemalan Patents and Trademark Office.
In Guatemala, an invention that satisfies the conditions of originality, novelty, inventive step, and industrial applicability, subjects to patentability. Process patent and product patent are the two types of patents that can be protected.
The types of patent applications that can be filed include Non-Convention Application and Convention Application.
It usually takes about three (03) to five (05) years for the Registrar of Industrial Property at the Registry of Industrial Property in the Ministry of Economic Affairs to process an application for registration. Paris Convention priority can be claimed.
Guatemala is signatory to the Patent Cooperation Treaty (PCT), and accordingly, national phase filing of a PCT patent is possible. The same is encouraged if the applicant is seeking coverage in another domicile. A PCT application can simplify the process of seeking a patent in countries that are parties to the PCT.
There is no procedure to oppose a patent application in the nation. However, it does provide a mechanism for filing non-binding observations. The applicant does have the right to file a response in writing against third-party observations, although the applicant is not obliged to do so.
A patent registration is valid for twenty (20) years. Once the registration has expired, it cannot be renewed.
Once a patent has been registered in Guatemala, there is an annuity payable to the Guatemalan Government each year. The first fee is due before the end of the second year of filing and the subsequent fees on the anniversary of the application date. Annuities for a PCT issued patent are due on the same dates. Failure to pay an annuity will result in the rights protected by the registration being placed in abeyance. The same will effectively prevent any enforcement action from being taken.
The Industrial Property Law No. 57 of 18/09/2000 and the Regulations under the Industrial Property Law deal with the mechanism of registration of industrial designs in Guatemala.
The application for registering an industrial design has to be made at the Registry.
All persons may comment on the registration of an industrial design within three (03) months of its publishing date. There is no possibility to file an opposition.
The industrial design protection period is ten (10) years from the date of the application. An industrial design may enjoy protection for a period of three (03) years from the date of the first dissemination, if not registered.
The registration of an industrial design may be renewed once only for a period of five (05) years, counted as of the expiry of the original period.
The annual fee must be paid in advance before each anniversary of the filing date of the application. Two or more annuities may be paid in advance. The first annuity is paid before the beginning of the third year, counted as of the filing date of the application, if the industrial design is already registered. If not, the annuities will be accumulated and have to be paid with the registration fees of the industrial design.
There is a grace period of six (06) months with surcharge for the late renewal of a registered industrial design.
Decree No. 33-98, Law on Copyrights and Related Rights - is the basic legislation governing copyright protection in Guatemala.
Guatemala is a member of WIPO (World Intellectual Property Organization) and has ratified the WIPO Copyright Treaty (WCT), as well as the WPPT, Performances and Phonograms Treaty. It is also a member of the WTO. It has signed the Paris convention, the Berne Convention, the Rome Convention, and the Nairobi Treaty.
The registration of works and productions protected by the law is declaratory and not establishing rights; consequently, the lack or failure to register does not prejudge the protection of them or the rights established by this law.
The economic rights protect the works throughout the life of the author plus seventy-five (75) years after his death. In the case of works created by two or more authors, the period shall start after the death of the last co-author.
In the case of computer programs and collective works, the term of protection shall be seventy-five (75) years from the first publication or, default, the completion of the work.
In the case of audio-visual works, the period is counted from the first authorized publication of the work, provided that such publication occurs within seventy-five (75) years after execution. Otherwise, the period is counted from the date of performance.