Frequently Asked Questions

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 two months 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 approximately six (6) 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 of the 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 Chief? Registrar. The appeal must be filed in written form including the arguments. The Chief Registrar 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 into 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.

Copyrights: Copyrights are 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.

What is the average time for a trial to reach the final judgment?   

The average time for a civil or mercantile trial to reach the final judgment is 1 year, calculated from the filing of the judicial complaint, nonetheless this term may vary depending on the complexity of the trial subject.

The term is extended if remedies are filed by the parties, such as appeal, reverting petitions, and appeals before the Supreme Court of Justice.

What type of legal action can a trademark owner take against the illegal registration of a trademark?   

A trademark registration cancellation and annulment action can be initiated before a Mercantile Court. The action is based on the prior ownership of the trademark, its notorious or famous nature.

The plaintiff will have to evidence the ownership over the trademark and its notorious nature. The similarity between the trademarks is evidenced through expert opinion.

Preliminary injunctions are available, and the judge may request the filing of a bail in case damages are made through the execution of the preliminary injunctions.

The complaint is filed before the Mercantile Court, service of the complaint is made to the defendant, granting a 3 day term for its answering. An 8 day term is granted to both parties for the filing of evidence. The judgment is issued.

Are non use based trademark cancellation actions available?   

No, non use based trademark cancellation actions are not available at the moment. Due to a reform in the Salvadorian Trademark Act, in the year 2006, such actions were included in the law, nonetheless, the Trademark Act, granted a 5 year term for any trademark owner to use the trademark, hence the law will be in full force starting from the year 2011.

What actions can a trademark, patent, design patent owner take against an infringement?   

Owners of intellectual property rights may initiate civil or criminal actions against infringers. Criminal complaints are filed before the General Attorney Office, preliminary injunctions can be requested. Once the complaint is filed, the General Attorney Office begins an investigation and files a petition before a Peace Judge. A hearing is made, in order to determine if the minimal requirements for a criminal procedure are present A second hearing takes place before an Instruction Judge in order to examine the evidence, and a final hearing is made in which the a third judge will either condemn or absolve the defendant.

The civil action is filed before a Mercantile Court, preliminary injunctions can be requested with the complaint, the payment of a fine is ordered by the judge. Once the defendant is served of the complaint, a 3 day term is granted for answering, after that the evidence filing term is granted to the parties and finally the judgment is issued. The action is based on unfair competition acts being made through the infringement and the plaintiff may claim damages.

Are there any legal actions that can be taken to prevent the import or export of infringing products?   

A close of borders action can be implemented to prevent the import or export of infringing products. This type of action is filed before a Mercantile Court, which in turn will order the Customs Authorities to detain any products bearing identical or similar trademarks.

Once a product is detained by the Customs Authority, the trademark owner is granted a 15 day term to file either a Criminal or a Civil action against the infringing party.

What are the formal requirements for granting a distribution agreement,
what can be done against a contract breach?   

Salvadorian Law does not establish formal requirements for granting a distribution agreement. The contract can be perfected verbally or in written form.

If any of the parties breaches the contract, the other party is entitled to claim damages by filing a judicial action before a Mercantile Court.

Is there any regulation on mandatory mediation for solving commercial disputes?   

Mediation is not mandatory. The Mediation, Conciliation and Arbitration Act, establishes that the parties must submit their disputes to mediation, conciliation or arbitration freely. However it is recommended to include in contracts an arbitration clause, as the arbitration procedure from the acceptance of the arbiters designation to the issuance of their judgment cannot last more than 3 months.

Can a verdict obtained outside of El Salvador be enforced in the Country?   

Yes, a verdict obtained in a foreign country can be enforced in El Salvador, as long as all the legal requirements set by international treaties are complied with.

What documents are necessary to file a debt collection trial?   

In order to file a trial to collect a debt, the complaint must be based in a document that has executive force, such as a public deed, checks, etc.

The complaint is filed before a Mercantile Court. The judge issues an order to seize goods that belong to the defendant, and after the seizure is made, the complaint is served to the defendant. The defendant may either accept the debt or deny it and file arguments opposing the trial. The Judge grants the parties an evidence filing term, afterwards the judgment is issued and the seized goods are auctioned.

Can a debt be collected when the document it is based on has no executive force?   

If no document with executive force is available, a trial must be initiated, requesting from the defendant to acknowledge the debt. The judgment of the trial serves as an executive document and can be used as the basis of a trial in order to collect the debt.

Are there any new developments in procedural law in El Salvador?   

Recently a new Civil and Mercantile Procedures Act has been issued, which will be in force starting from January 2010. Currently judicial procedures are executed in written form. With the new procedure code, written acts are limited and all the procedure is made through a hearings system.

The term from the filing of the complaint to the issuance of the verdict will be reduced. To ensure compliance with all the terms set by the law, fines are set for the judges who delay the process.

What legal actions are available against an administrative decision?   

The legal actions that can be taken against any government authorities, may vary depending on their governing law, nonetheless, once all remedies are finished, a complaint may be filed before the Supreme Court of Justice.

In the complaint the plaintiff must argue the illegality of the actions being made by the judicial authority.

Another possible action which may be executed is the filing of a complaint before the Ethics Court. The Ethics Court was recently created to protect all citizens against unethical acts made by any government authorities.

Are there any actions that can be taken against anticompetitive behavior in the market?   

Yes. The Competition Superintendence was recently created to sanction anticompetitive acts which may affect the national market.

If the action only affects the competitor and not the market as a whole, an unfair competition action can be attempted before the mercantile court.

Is there environmental regulation and can a complaint be filed based on damage to the environment?   

El Salvador has an Environment Protection Act. Complaints may be filed before the Ministry of Environment and Natural Resources.

Criminal and civil trials may be initiated against actions that may cause damage to the environment.

Can any actions be taken against the use of misleading advertisement?   

Yes, the use of misleading or false advertisement constitutes an unfair competition act. A mercantile action can be initiated against it.

The National Publicity Counsel, is a non governmental entity, established by advertisement agencies, entertainment industry and the private sector, to self regulate publicity. The Permanent Ethics Committee can order the suspension of the advertisement, and as all mass media corporations are members of the Counsel, the enforcement of their decision tends to be very effective.