Major Changes Introduced To Honduran Industrial Property Law

New Honduran Industrial Property Law

(Legislative Decree 12-99-E)

The Honduran Congress approved major changes to the Honduran Industrial Property Law on 19 December 1999. Due to their scope and magnitude, these changes were treated as a new Law, which was published in the Official Gazette number 29084 of 29 January 2000 and became effective in the whole Honduran Territory from 28 February 2000.

Please always keep in mind, however, that most of the provisions of the previous Honduran Industrial Property Law (Decree 142-93) to which we have previously referred in depth are included in this new statute. In line with the above, you may consider that besides the changes listed and commented hereunder, the new Law is identical to the previous one.

Patents

All patents (including pharmaceutical patents) will be protected for a non-extendable period of 20 years counted from filing date.

Inventions are defined as "any human creation, which allows the transformation of the matter or the energy existing in nature for its use, through the immediate satisfaction of a particular need. An Invention can be of a product or process." In that understanding, new inventions of products or processes, which involve an inventive activity and are susceptible of industrial application, are patentable.

The special right granted by the State with respect to the exploitation of an invention is considered a patent.

Computer programs taken isolatedly cannot be patented. They may be patented, however, if they are part of a system, apparatus, process or any other technical solution that constitutes an invention.

Genetic and biological material and living tissue created by men through genetic engineering or by other technical means may be patented now.

It is now recognized that a patent does not grant the right to prevent the acts referred to in Article 5^ter of the Paris Convention.

It is clarified that when a compulsory license is requested for a patent including a semiconductor technology, such license may only be granted for public, non-commercial use in favor of a public authority or a third party acting on behalf of the said authority, or to rectify a declared practice against honest and free competition.

Trademarks

New maintenance fees have been imposed. These taxes will be paid yearly commencing this year at the anniversary date of a registration. These "annuity taxes" may be paid in advance up to the next renewal date of a registration and their payment is a requisite for obtaining the renewal of a registration. A brief comment is needed here as follows: These annuity taxes were paid until the enactment of the Honduran Industrial Property Law of 1993 (now being reformed) and in that understanding for those trademark owners who paid the annuity taxes up to the years 2000, 2001, 2002 or 2003 there is no need to pay those taxes again.

The term after which a trademark registration may be cancelled on the grounds of non-use has been extended to three (3) years to comply with TRIPS. After that period, the Trademark Owner who is not using its mark in Honduras and wishes to avoid the perils of cancellation of its registration on the above grounds may do so by paying the so-called rehabilitation taxes (as done under the current statute).

• Please note the following important dates:

1. The marks registered before the enactment of this new Law (28 February 2000) may not be cancelled on the grounds of non-use until 28 February 2002. Rehabilitation taxes may be paid after that date as outlined above.
2. Cancellation actions on the grounds of non-use for marks registered after 28 February 2000 can be filed until three years after the respective registration date. E.g. If the mark XXX is registered on 01 March 2000, then this registration cannot be cancelled on the grounds of non-use until: 01 March 2003. Rehabilitation taxes may be paid after that date as outlined above.

• All legends and special remarks included in a mark must now be translated to Spanish. Such translations will be included under the "observations" section of the application filed before the Honduran Trademarks Office.

Slogans

Slogans will now be registered for a ten-year term and may be renewed for indefinite periods of time, as long as the marks with which the slogan is used continues to be a valid registration.

It is necessary to precisely indicate in the application the mark(s) with which the slogan will be used.

Commercial Names

A precise indication of the applicant’s line of business must now be included in a commercial name registration application.

Notorious Marks

To determine the notoriety of a distinctive sign, any relevant circumstance will be taken into consideration, particularly the following aspects:

1. The degree of knowledge of the distinctive sign among the members of the pertinent business sector; the duration, scope and geographical extension of use of the distinctive sign within the territory;
2. The duration, scope and geographical extension of promotion and/or advertisement of the sign, within the country;
3. The publicity and presence in Trade fairs and shows or other events, concerning the establishment, activity, products or services to which the distinctive sign is applied;
4. The existence and antiquity of any trademark registration/trademark application for the distinctive sign in the country;
5. Pertinent actions based on the notoriety of the distinctive sign and judged favorably;
6. The value of any investments made to promote the distinctive sign or to promote the establishment, activity, products or services bearing the sign;

The following will not be taken into account to recognize the notoriety of a distinctive sign:

1. The existence of registrations or pending applications for the sign abroad;
2. The former or current use of the distinctive sign abroad;
3. The declaration of notoriety for the sign in a foreign country.

Please note that the Trademarks Office is requesting that all claimed notoriety must be within the country. We do not agree with this interpretation but must inform that it is the one currently upheld by the said office. The authorities have to issue the bylaws of the new Law within the next 120 days and we will keep you fully informed of all relevant news.

Official Fees

There has been a substantial increase in official fees and some adjustments have been made to our Schedule of Charges.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.