FREQUENTLY ASKED QUESTIONS
 

It takes approximately 5 to 8 days to obtain the results. Design searches are conducted separately.

How long does the trademark registration process take?

Generally, the registration process takes approximately 8 months if the application is filed with all legal requirements and no further delays, such as Office Actions or oppositions, are encountered.
 

What information and documents are necessary to file a trademark application in El Salvador?

The following documentation and information are necessary:
· Name, domicile and nationality/state of incorporation of the applicant.

· A sample of the mark, list of goods/services and/or International class.

· A power of attorney document and correspondent notarial certification legalized at the nearest Salvadoran consulate or via Apostille. One document per applicant is sufficient.

· If priority is claimed under the Paris Convention, a certified copy of the priority application is necessary, which can be filed within the next three months counted from the filing date of the local application. Local law allows the claiming of priority within the following three months from the date of the local filing, if not previously claimed. No legalization of this document is necessary.

Is recording an assignment, change of name or address compulsory?

It is mandatory to register all changes relating to the owner of a trademark after the certificate of registration is obtained. However, pending applications filed under our old law must mature into registration in order to record these changes. Under the 2002 law, such changes may be recorded for applications.

Are Notary Certification and legalization required for recording an assignment, change of name or address and license of use?

Notary Certification and legalization are required. In the alternative, the documents can be submitted via Apostille. It is also necessary to have the assignment, change of name or domicile document and license agreement fully executed in one language. As attorneys of record, we may file an affidavit regarding a change of domicile, which is generally cost and time effective.

What is the term of protection for a trademark?

Registrations granted or renewed prior to April 9, 1989 in former local classes are valid for 20 years, divided into 4 quinquennial periods. The trademark owner is required to pay the taxes for each quinquennial period in order to maintain the registration.

Registrations granted between April 9, 1989 and July 16, 2002 are valid for a 10 year period. The trademark owner is entitled to apply for renewal during the last year of the registration term.

Under current law registrations are for a 10 year period, renewable indefinitely for 10 year terms. However, for all renewals processed under the current law, the goods/services must be reclassified into the appropriate international class. One renewal application per class is filed.

Any registration granted under a former law must first be published for opposition in accordance with specific legal requirements.

What documents and information are necessary to renewal a trademark application in El Salvador?

The following documentation is necessary to file a renewal application in El Salvador:

· A copy of the Certificate of Registration.

· If registered prior to 1989, the certificates of payment of all quinquennial taxes.
Prior to filing a renewal application, it is important to know if the original owner has changed its address or name, or if the trademark has been assigned. If no documentation is available, a search must be conducted to determine the status of registrant in order to avoid any possible delays from the Registry.

When should a renewal application be filed?

We recommend applying for renewal within the last year of the registration. Once a trademark has expired, a six-month extension to file a renewal application can be granted, subject to a surcharge.

Is it possible to modify a trademark registration in El Salvador?

Yes, the current law allows the following modifications to trademark registrations:

· Limiting goods/services under a registration.

· Dividing one registration into two or more registrations by separating goods and services.

Modification does not affect trademark expiration date. A divided registration can be separately licensed, assigned or voluntarily cancelled.

Can the trademark application be opposed and what is the opposition period?

Yes, during the two months following the date of the first publication in the Official Gazette, any person claiming to have a genuine interest can file an opposition against any trademark application. The trademark law and regulations do not provide extensions of time for this type of action. All admitted applications have to be published in a major newspaper for informative rather than opposition purposes.

What does an opposition procedure involve?
Once an opposition is filed, the Registrar verifies that all the requirements under the local law have been satisfied. If so, a resolution admitting the opposition is issued and served upon the applicant; who will have sixty days to answer it. Once the opposition is answered, the Registrar has one month to render the final resolution.

How long does the opposition procedure last?

According to the law, an opposition procedure should last four (4) months. However, since serving the opposition takes longer, the whole procedure normally takes from eight (8) to twelve (12) months, if further delays are not encountered.

What recourse is available in trademark infringement cases?

The following actions are available in El Salvador:

• Revision Recourse: A recourse is filed before the Registrar who issued the resolution. The law provides three days for filing the recourse after the resolution has been served. The recourse writ, including the arguments, is filed at the Registry of Industrial Property. The arguments are discussed in a hearing where the Registrar and all interested parties are present.
• Reverting Petition (Reconsideration): If the revision recourse verdict is not favorable, one may file a reverting petition before the Chief Registrar who issued the resolution. Such a recourse must be filed verbally at the revision hearing. A new hearing will take place before the Chief Registrar, who issues a verdict 8 days following the hearing.
• Appeal: If the verdict of the reverting petition is not favorable, the law provides for an appeal before the Director of the Registry. The appeal must be filed in written form including the arguments. The Director will then provide the parties with a 10-day period for the filing of evidence, following which it will issue its verdict.

Besides trademarks, what other intellectual property rights are capable of protection in El Salvador?

Patents, designs, copyrights and trade secrets are protectible under the laws of El Salvador.

• Patents: For an invention to be patentable it must be a solution to a technical problem, which is also useful; new; and non-obvious to a technician in that particular field. Protection is obtained by filing a patent application with the Registry of Intellectual Property (Registry). Before filing, an examination services agreement between the applicant and the Registry must be made and the examination fees paid. The extract must then be published and the invention, as a whole, examined by either the local examiners at the Registry or by a foreign technical institution of the Registry's choice. Patents last for 20 years from the filing date and are non-renewable. Pharmaceutical patents are granted for 15 years.
• Designs: To be registerable, designs must be two- or three-dimensional forms or shapes that, when incorporated to a product, give it a special appearance and can be used to model or manufacture it. Protection is obtained by filing a patent application with the Registry. Before filing, an examination services agreement between the applicant and the Registry must be made and the examination fees paid. The extract must then be published and the design, as a whole, examined by either the local examiners at the Registry or by a foreign technical institution of the Registry's choice. Protection lasts for five years and is renewable for one further five-year period.
• Copyright: Copyright is provided for artistic, scientific and literary works. Protection is obtained from the moment of creation by its author. However, it can be deposited at the Registry, which will issue a deposit certificate. Protection lasts for the duration of the author's life plus 50 years after his death. If a company is the author, protection lasts for 50 years from the subsequent year to public communication.
• Trade Secrets: Trade secrets are undisclosed information that provides its owner with an advantage over third parties in the market. Trade secrets are protected in the same way as confidential information and industrial secrets. It is not registerable. Protection lasts for as long as the information is kept in a confidential manner, in a safe place and with restricted access. Contractual protection is the best way to safeguard these rights.