Trade and Service Marks
Legal Basis
– Law of January 15, 1918. See also Bolivian Decree of May 6, 1960 (No. 05470).
– Law of July 21, 1965.
– Commerce Code Decree No. 14379 of February 25, 1977.
– Decision 486 of the Andean Community (Cartagena Agreement), in force since December 1, 2000.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since July 6, 1993.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since November 4, 1993.
– WTO’s TRIPS Agreement, since July 5, 1995.
– Andean Community Decision No. 486, since December 1, 2000.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since May 7, 2018.
Filing
Applicant: anyone.
Foreigners and nationals not living in the country: must have an appointee.
Novelty: the trademark applied for must not conflict with a trademark already registered.
Exceptions to protection: (1) generic marks; (2) descriptive marks; (3) misleading marks; (4) letters, words, names, or emblems having reference to national symbols or states; (5) diluted words.
Service marks: are registrable.
Classification: international. A separate application must be filed for each class.
Filing requirements for an application (to be sent to resident agent):
1. Apostilled power of attorney;
2. Representation of the mark;
3. List of goods or services to be protected.
For renewal: apostilled power of attorney.
For assignment: a valid apostilled power of attorney and the legalized assignment document.
For change of name or address:
1. Apostilled document that attests to the change, i.e. an extract from a Commerce Registry;
2. Apostilled power of attorney.
Filing without one or more requirements: possible for certain requirements but the missing documents have to be submitted within sixty days of filing.
Filing without power of attorney: possible but the same has to be submitted within sixty days.
Consular legalization: not required, only apostilled.
Electronic filing: not available.
Electronic signatures: are not accepted (only wet signatures).
Examination, Protection
Examination is conducted at two levels: the first is the pro-forma examination to determine if the application meets all the requirements and if so it gets sent to publication. Also, there is a subject matter examination to see that the application meets the registrability criteria.
Rights of prior user: use does not lead to any rights in trademarks so a prior user cannot invoke prior use rights. Regarding commercial names, a prior user can acquire rights if he has been using the commercial name continuously prior to the registration of a trademark.
Disclaimers: not available.
Letters of consent: may be accepted, must be apostilled.
Opposition: may be filed within thirty working days from publication in the Official Gazette.
Cancellation: possible if the targeted mark has not been in use during the prior three consecutive years. The first three years of registration, a mark is not vulnerable to cancellation.
Beginning of protection: upon registration.
Delivery of document: the registration certificate is issued in paper format.
Duration: ten years.
Renewal: every ten years; application for renewal can be made six months before or after the deadline. Grace period: six months.
Marking of registered goods: no provision.
Assignment: possible. Requirements: assignment deed and power of attorney, signed by assignor and assignee, apostilled.
License: it is possible to license a mark under condition that the same is registered. Registration is not compulsory but highly advisable as non-registration will prevent enforcement against third parties.
Use of trademarks: not mandatory but lack of use may lead to ex-parte cancellation.
Particularities: the registration of the mark is mandatory for chemical and pharmaceutical products.