Contributed By De La Gasca & CIA
Salvadoran law provides for different types of trade marks, such as service marks, trade names, design marks, certification marks, collective marks and trade dress. Under Salvadoran law, a trade mark is any sign that differentiates the goods and services of one person from the goods and services of another, and therefore many types of marks are comprised within its definition. The creation of these rights relies on statutory law.
Generally speaking, trade-mark rights are only acquired through registration. In fact, without registration, it is not possible to exercise trade-mark rights fully (ie, criminal infringement actions cannot be filed without a proper registration certificate). However, there are two exceptions to this general rule. The first exception is trade names. According to Salvadoran law, a trade name is a source indicator that distinguishes a commercial establishment and/or company. These rights are acquired through use in commerce. The second exception is well-known trade marks. According to Salvadoran law, well-known trade marks may be protected even with having a registration or even a filed application, which means that, to gain interest over a well-known mark, registration is not required, but, rather, extensive use in commerce. Despite the above, registration remains the best alternative for protection.
The law provides that a trade-mark registration can be obtained, so long as the corresponding registration proceeding is followed, that a valid opposition on the merits is not received and that the application does not fall into any of the statutory legal prohibitions of Articles 8 and 9 of the Trade Mark Act. These articles make reference to third-party rights and/or intrinsic reasons to refuse a mark.
There is a Trade Mark Office in El Salvador. All registrations thereof are publicly available to anybody through their physical files and books. However, there is no relevant internet access to their database for now, which implies that any and all investigations must be done on site. The office is located in San Salvador.
There is only one principal register of trade marks. El Salvador does not have any supplemental register system or the like.
Searching marks prior to their registration is a very common practice in El Salvador. It tends to be less expensive and far quicker than going forward with a full registration proceeding, although conducting it does not secure any prior rights, nor does it secure any filing date whatsoever. One of the best advantages that prior searches offer is that they assess the applicant’s possibilities and risks prior to adopting any new trade mark. Therefore, they constitute a highly advisable practice. The sources that must be consulted for each investigation are the Trade Mark Office’s Official Database, the Registry of Commerce and the internet. Unfortunately the Trade Mark Office’s information can only be obtained through an official report, performed by mark and by class of interest. No self-serving search systems are available on site or online. Official reports must always be obtained.
The requirements to register a mark in El Salvador are the following:
Initially no power of attorney is required to file the application; however, it must be submitted thereafter during the proceeding. Paris Convention priority can be claimed with the application or three months thereafter, but the legalised copy must be submitted no later than three months from the filing date.
A trade mark can be registered by individuals and/or by legal entities, whether foreign or domestic. It may also have more than one owner. There are no restrictions as to who may own a trade mark registration.
Salvadoran law provides a fairly broad scope of signs that can be registered. The most usual are words, characters, shapes and images. Colours may not be individually registered but can be registered when combined with other elements. Individual numbers cannot be registered unless they have something that provides them inherent distinctiveness. Three-dimensional marks are also allowed. Finally, the law also provides for the possibility of registering sound marks and scents; however, this comes with practical difficulties as the registration proceeding is not designed for this type of mark.
The legal system recognises the exclusive right to trade names, acquired through use in commerce. No registration is needed and the protection is provided according to the course of business related with the trade name. Company names only prevent other companies from using the same name, but do not protect against variations thereof. Domain names are protected by the standard ADR proceedings.
The registration procedure begins with the filing of an application. Applications can be multi-class. Once the application is received, the Trade Mark Office makes a formal analysis and, thereafter, a substantive analysis. Through the earlier, it verifies that all formal legal requirements of the application are met. Through the latter, it verifies that no legal prohibition applies to the mark and that it in fact may be registerable according to Salvadoran law. Office actions can be issued at this time, when the application does not meet the necessary requirements. The time to respond to such office actions is four months. Failure to respond in a timely fashion will result in abandonment. If, however, the application is in good order and/or successfully overcomes any issued office action, an edict for publication is issued. This edict must be published three times in the Official Gazette as well as a local newspaper. Oppositions may be instated during the two months following the first publication. If no oppositions are filed, a notice of allowance is issued, followed by the registration certificate, which completes the procedure.
No proof of use is ever required with any kind of application, assignment and/or renewal. In fact, use only creates rights for trade names, but even for those registration procedures, the application will suffice. Unlike other systems, there is no need for a filing basis such as intent to use, etc. Trade mark rights are granted for ten-year periods that may be renewed indefinitely for subsequent ten-year periods. Albeit the law provides for the possibility to file non-use cancellation actions, a renewal application is never subject to prove any kind of use whatsoever and may be filed and obtained even without use. In fact, a trade mark will remain valid and in force until a non-use cancellation action is actually tried and a court of law rules on the issue ordering cancellation. But if that never happens, no government body will ever require proof of use. The downside is that the mark will be vulnerable against third parties if not used, but it will not automatically forfeit any right.
Series marks can be allowed to some extent. The Trade Mark Office will only refuse identical marks belonging to the same owner, but if they differ, even in minimal aspects, they will be allowed and registered thereof.
A registration process will typically take from seven to twelve months. By law, it cannot be less than six months, since Paris Convention priority rights must be assured. If an office action is issued, the registration procedure may take longer. The same occurs in the event of oppositions. An applicant does not need representation when applying on their own personal behalf, but if the application is filed on behalf of another, it must be filed by a licensed attorney. Attorney fees will vary depending on the service-provider but can easily range between USD250 and USD600 for a single-word mark in one class. The official fees and expenses will approximately be USD250.
Article 8 of the Trade Mark Act regulates the absolute grounds for refusal. Prohibitions are based primarily on descriptive character of the mark, lack of distinctiveness, misleading character, public order and bad faith. Reasons are described as descriptive character of the mark; collision with patent rights; isolated colours; isolated letters or digits; being against morale or public order; being offensive against people, ideas, religions, national symbols of any country or international entities; reproducing any official symbol of any country or international entity; reproducing any official guarantee symbol; containing misleading and unearned awards, medals or prices; containing the name of a protected plant variety; and infringing a geographical indication.
Once the office action is received, a response must be submitted within the following four months. Failure to respond produces abandonment. If responded to, the Trade Mark Office must make a final decision on the matter. This decision admits appeal within the same Trade Mark Office.
Part of the substantive examination of the mark includes analysing third-party rights. The grounds for refusal of such rights are contemplated in Article 9 of the Trade Mark Act. They generally respond to the following categories: prior trade-mark application, prior trade-mark registration, prior trade name, well-known mark protection, image rights, geographical indications, copyrights, other industrial rights and using an application as a means to create unfair competition.
Third parties are only allowed to participate through an opposition proceeding. Oppositions can be filed during the next two months following publication of the mark. When an opposition is filed, the opposer has an additional two-month term to file evidence. Thereafter, the opposition is serviced to the applicant, who has a two-month term to respond. A final decision is issued accepting the opposition, or refusing the same and continuing with registration.
It is possible to revoke, change, amend or correct (or otherwise change) an application for a trade mark during the process of registration, but any such modifications can only limit and reduce the scope of protection obtained at the time of filing. Depending on the case, it may be required to republish the application.
It is possible to assign and/or grant licences over applications in process. When assigning an application, the Trade Mark Office accepts the assignment and continues the registration process on behalf of the new owner. Licences can also be granted thereto but will not be recorded until the mark is registered. There is no legal obligation to record a licence agreement but it will have no effect against third parties until it is actually recorded.
Appeals can be filed against trade-mark refusals. Currently there is a system of three possible appeals: the first appeal is with the same examiner, the second appeal is with the chief examiner and the third appeal is with the director of the Trade Mark Office. This may change after 2019 according to current developments in administrative legislation.
There are no use requirements in El Salvador for the registration of marks. Applications can be filed at any time without prior use.
It is possible to divide trade-mark applications. The requirement is to make a formal request at the Trade Mark Office and obtain the approval for such division. Each application creates its own fees and expenses.
Trade marks are obtained for ten-year periods. These periods may be renewed indefinitely for other ten-year periods thereafter. Trade names and slogans are registered indefinitely for as long as they are in use.
A trade mark-owner cannot prevent the bona fide use of a mark in legitimate and original marked products, so long as these products have been introduced in commerce by the trade mark owner, a licensee and/or someone with the owner’s consent, and such products have also not been altered, modified or suffered deterioration.
El Salvador does not participate in the Madrid system.
There are no consequences for providing incorrect information in connection with a trade mark application. In fact, there is no factual information that has to be furnished to the Trade Mark Office other than the scope of protection required.
A design mark can be updated or refreshed at any time. The most recommendable thing to do is refresh as soon as any relevant changes occur. As the only prohibition is on identical marks, it is best to file a new application with each update.
The symbol that a mark is registered is ®. However, there is no legal obligation to use such sign, nor are there any consequences to its lack of use.
Assignments of a trade mark must be in writing and recorded with the Trade Mark Office. Applications can be assigned while in the process of registration.
An application is filed and a decision is made by the Trade Mark Office whether it approves it or not.
Assignments have to be recorded to have validity against third parties, which means that a non-recorded owner will not be able to prove title to the mark, or exercise its rights in any administrative or judicial proceeding, until such assignment is recorded. It is also an important way to protect the mark against any creditors that the assignor may have.
A trade mark can be given as a security, can be subject to rights in rem and can be levied in execution by creditors.
The only requirement for a licence is to be in writing. Registration is not compulsory but it is generally required to exercise any judicial rights thereof. There are no specific requirements or restrictions to licensing other than those determined by applicable contract law.
An agreement will be furnished and executed by the parties, containing the conditions and terms thereof. The document must be as exhaustive as possible, since the licence contract is not a typical commercial contract and does not have subsidiary provisions in the law that may apply.
Recordal of licence agreements is not compulsory, but it is generally required when exercising contentious rights by the licensee.
There is no reason why a trade mark-owner cannot grant a perpetual licence, although its existence will ultimately depend on the validity of the licensed mark.
There are no formalities implied in the assignment of marks, other than making a deed in writing. The only case where additional requirements apply is in the case of trade names. In these cases, the deed must be made by a notary public and a part of the business using the trade name must be assigned altogether.
The timeframe to file an opposition is two months counted from the first date of publication in the Official Gazette. There are currently no time-extensions available, but late filing can occur if it can be proven (and it generally is) that the Official Gazette came to circulation to the public on a different date than the one printed in such Gazette. The grounds for opposition are generally based on Articles 8 and 9 of the Trade Mark Act (see 1.15 Refusal of the Registration of a Trade Mark and 1.17 Existence of Prior Rights) and generally respond to the infringement of IP rights of the opposer.
An opposer must prove legitimate interest or standing in order to file an opposition. This implies proving the existence of a right that is infringed by the application, or the existence of some kind of potential harm that may occur upon its registration. Individuals may file oppositions on their own behalf, but only licensed attorneys can file on behalf of others. The official fees are USD30 per opposition. The average office fees will depend upon the service-provider, ranging from USD500 to USD1,200.
Once an opposition is filed, the opposer has a two-month term to file supporting evidence. Thereafter, the opposition is serviced to the applicant, who has a two-month term to respond. A final decision is issued on the merits of the case. The discovery process is limited to written evidence only. As there are no hearings, there is also no opportunity to submit expert or witness testimony. Motion practice generally does not apply to opposition proceedings.
The final decision can be appealed with the director of the Trade Mark Office. Appeals may take many years until reaching a final decision (two to eight years). Once this stage is reached, the conflict can be taken into an administrative court, in order to review the legality of the same.
Civil and criminal actions are available to a trade mark-owner to pursue infringement. Civil actions can be pursued without registration but are somewhat limited in their scope and represent major practical difficulties at court. Criminal actions can only be instated having a valid registration.
Civil actions are promoted with the Civil and Commercial Courts. Criminal actions must be instated at the district attorney’s office, who subsequently prosecutes the matter with the Criminal Courts (Peace Court, Instruction Court and Trial Court). All criminal prosecutions must be performed jointly with the district attorney’s office.
Legally speaking, Trade Mark Office decisions should have no effect and are not binding upon the judiciary. But, from a practical standpoint, they may affect the opinion of a judge.
Salvadoran Law does not contemplate declaratory judgements as an alternative. A real conflict must occur to activate the judicial system.
In civil actions the first instance is tried by the Civil and Commercial Court, and the second instance by the corresponding Civil Circuit Appellate Court. In criminal actions, the first instance is tried by three different courts in the following order: Peace Court, Instruction Court and Trial Court. The second instance is tried by the corresponding Criminal Circuit Appellate Court. There is no third instance in El Salvador's legal system, but the Supreme Court can rule on certiorari issues (casación) in both matters, through its Civil or Criminal Department. Both departments are comprised of three justices each.
There are no prerequisites to filing a law suit when it comes to civil actions for trade-mark infringement. For criminal actions, the only prerequisite is to have a registered trade mark.
Attorney representation is compulsory in all judicial proceedings.
Interim or preliminary injunctions are available according to Salvadoran law. In order to obtain a preliminary injunction, the plaintiff must show a likelihood of success on the merits of his or her case (fumus boni iuris), as well as a threat of irreparable damage (periculum in mora). If both standards are met, a preliminary injunction is granted; otherwise it is not. There are plenty of options for preliminary injunctions, the most common being seizure of infringing goods, order to cease in the illegal activity and posting a bond.
A potential defendant can challenge at any time interim or preliminary injunctions during a trial, since they are not definite decisions. Usually, providing a guarantee that the purpose of the preliminary injunctions will be met may help a defendant to revert such remedies. Furthermore, it may be required that the plaintiff posts a bond proportional to the damages caused by the injunction. Finally, if the injunction is before the trial, the plaintiff has a limited amount of days to file a lawsuit. If he or she does not file within such timeframe, the injunction will be automatically cancelled.
Salvadoran law contemplates mechanisms through which plaintiffs may seek and obtain relevant information and evidence from the third parties or opposing party. These measures are usually the seizure of infringing goods and/or the request of exhibiting relevant legal documentation (accounting books, financial statements, banking information, etc). These mechanisms are more aggressive in a criminal action, where search orders may be obtained to make them effective.
The initial claim is the basis for any civil action. There are no opening arguments and therefore it must be as exhaustive as possible. Furthermore, all documentary evidence must be filed ab initio, along with the claim, as failing to do so will make such evidence inadmissible. There are no relevant special provisions for trade-mark lawsuits that differ from non-IP proceedings. Generally speaking, the rules of procedure are much the same. A pleading can be supplemented with additional arguments, but only prior to receiving a response from the defendant. Once a response has been filed, no more modifications are allowed. When responding, a defendant can countersuit the initial plaintiff. Usually countersuits are focused on cancelling or nullifying the trade mark that is serving as the basis for the infringement.
El Salvador's legal system allows the promotion of representative or collective actions. However, it is not a common practice in relation to trade mark law and is currently only being promoted for environmental cases. Under current law, this firm sees no possibility that an action of this sort would be successfully enforced. Most likely it would be dismissed on the merits for lack of standing to sue.
A trade mark-owner may be restricted from asserting its rights through several means. Initially, upon the threat of suit, a potential defendant may go to court and seek an injunction forcing the owner to suit, or to disregard the claim for ever. If the owner does not file suit within the specified timeframe, he or she will be banned from bringing that claim to court. Furthermore, the fact of having a trade-mark registration/application does not necessarily mean that the same is absolutely legal. One of the grounds for cancellation is that the mark is an instrumentality for unfair competition. Finally, competition law is always a fact to consider for every commercial entity, including trade mark-owners.
The necessary parties for an infringement action are the right-holder (trade mark-owner or licensee) and the infringer. The right-holder or plaintiff may be the owner of the mark directly, a licensee, or any successor thereof. Licensees may bring a lawsuit, depending on the provisions contained in their licence agreement. Moreover, they can bring an action upon the inactivity of the trade mark-owner to act upon the occurrence of infringement. There are not many effective actions available to owners of unregistered marks.
The factors in determining infringement are:
Case law has not yet developed a uniform test on how to assess confusing similarity but a generally accepted mechanism when making this analysis is the following:
The degree of distinctiveness should be given more weight in El Salvador's courts but does not yet count as a significant factor. This is only taken into consideration when the older mark is deemed as descriptive.
Use of the mark will only be relevant for the purposes of responding to a non-use cancellation action. Otherwise, the only factor that determines the strength of the mark is how it was granted by the Trade Mark Office.
Defences against infringement are non-use, acquisition of an older mark as an act of unfair competition, nullity of the older mark, descriptive use of the mark, inherent weakness of the mark, statute of limitations and statutory fair use (parody and comparative advertising are not considered fair use). Furthermore, there is always procedural motion practice that may be used as a defence (lack of standing to sue, lack of evidence, etc).
Surveys are usually a good way of proving consumer confusion and/or well-known status of a mark. Expert testimony as to likelihood of confusion has not been given much weight by the Appellate Courts, although in some cases it has been very useful with First Instance Courts. Currently the issue is yet to be decided by the Supreme Court.
Trade mark infringement is not considered an administrative offence in El Salvador's legal system. However, it may be enforced through criminal actions as it constitutes a felony with sanctions of between two and four years of imprisonment. Criminal actions tend to be more invasive and aggressive, but are not suitable for all types of infringement. They are mostly for piracy cases, where it can be proven that the infringer is fully knowledgeable of the illegitimacy of his action.
Salvadoran law provides for Customs seizure as an administrative control of piracy. When a shipment is flagged, the Customs authorities retain the infringing goods and publish the notice of suspected infringement. The offended party may take actions thereto, including civil and/or criminal actions. The district attorney’s office is also informed in some instances to prosecute the case.
A mark can be cancelled on the basis of non-use and on the basis of nullity. A non-use cancellation action may be instated for the lack of use of a mark for more than five years. A nullity action can be based on absolute and relative grounds for refusal, as well as for other administrative reasons that affect the legality of the procedure.
Cancellation actions are only tried with courts of law. Generally speaking, a Civil and Commercial Court would be competent to try the case. However, if the proceeding has administrative illegalities, it may also be tried in an Administrative Court of Law.
Generally, the statute of limitations for cancellation based on nullity is of five years counted from the registration date. However, there is no statute of limitations for marks registered in bad faith.
There are no general requirements to determine a plaintiff’s standing to sue. They are determined on a case-by-case basis. The standard determined by law is a legitimate interest and/or an infringed right.
Partial cancellation is possible in non-use cancellation actions. If out of the list of covered goods only some of them are in use, a partial cancellation may be requested only in relation to such goods.
Amendment of a trade mark is possible during the course of a cancellation proceeding; however, it would most likely have to be approved by both parties and the judge as part of a settlement.
Such actions can be accumulated in one sole process, particularly when the defendant of an infringement case countersuits the plaintiff with a cancellation action as its defence. In this case, both actions would be tried, heard and ruled together.
There are special procedural provisions for trade-mark proceedings, but only in relation to preliminary injunctions, border measures and non-use cancellation actions. Other than that, general rules of civil and commercial procedure apply.
Civil and criminal infringement cases are decided in bench trials. No jury trials are available for these kinds of cases. The parties do not have any influence on who the decision-maker will be.
Settlement is always an alternative in civil procedures. There is a mandatory settlement hearing at the beginning of the trial, which is almost never used by the parties. Usually settlements are made out of court and almost never at the beginning of a case. In criminal actions, settlement is a bit more difficult, since the conditions to settle are usually accompanied by other criminal measures such as the imposition of rules of conduct, period of probation, etc. However, it can also be done.
The Salvadoran Code of Civil and Commercial Procedures contemplates a defence for prejudicial issues. If the main action relies on the results of a previously instated trial, its prosecution is temporarily suspended until the previous trial is decided. This, however, only applies to matters being tried in Salvadoran courts and not foreign jurisdictions.
Salvadoran law contemplates remedies such as compensatory damages, recovery of attorney fees and injunctive relief. Destruction and/or donation of the infringing goods is also available. The judge has discretion in ordering remedies; however, from a practical standpoint, they usually do not order something not expressly provided for in the law. In relation to damages, the form of calculation is chosen by the plaintiff out of the three possibilities offered by law (actual damages caused to the owner, lost profits or unpaid royalties). The plaintiff can also seek the payment of profits attributable to the infringement. Attorney fees are also awarded in some instances but their calculation, rather than being determined by the actual cost of the services, is through a very old law that does not respond to market reality. Therefore, this remedy is quite ineffective.
A prevailing defendant may obtain attorney fees, but, as mentioned above, the calculation of attorney fees, rather than being determined by the actual cost of the service, is through a very old law that does not respond to market reality. Therefore, this remedy is quite ineffective. The most significant remedy obtained by a prevailing defendant is the declaration of non-infringement. This declaration, however, may serve as a basis for seeking compensatory damages to the plaintiff in a future trial.
There are no different types of remedies for different types of trade marks. They are all the same.
There are no special provisions concerning the appellate procedure for trade-mark proceedings.
Appeals can review legal and factual issues, but only within the boundaries of what is actually appealed. When filing an appeal, all the arguments and allegations must be submitted upfront and in writing, and must contain the legal filing basis, which can be:
An Appellate Court can order a mistrial and repeat the whole proceeding and/or a portion thereof.
An appeal usually takes from two to six months in being decided.
Salvadoran law recognises the right of a trade mark-owner to prevent dilution of his or her mark (Article 26 of the Trade Mark Act) and recognises the infringement of industrial property rights as a ground for opposition. Although it does not expressly mention the possibility to oppose on the grounds of dilution, it may be interpreted as such within the law.
El Salvador has conferred protection to marks that are internationally famous and are not yet in use in the country. The law recognises this possibility within the concept of well-known and/or famous marks.
Salvadoran trade-mark law contemplates a complete chapter on geographical indications, having a sui generis registration proceeding.
Salvadoran trade-mark law contemplates a complete chapter on certification marks, having a sui generis registration proceeding.
There are no special rules provided for the use of one’s own surname as a mark. Trade-mark law allows the use of names and surnames as trade marks. Case law has awarded trade-mark protection to a common surname, based on the well-known status of the prior mark.
Pre-trial costs will depend on the service-provider, but can easily range from USD300 to USD3,000 in the preparation of warning letters, notarisations, certifications, etc.
Trial costs will depend on the service-provider, but can easily range from USD6,000 to USD20,000.
Generally, each party covers their own attorney fees and expenses (also see 8.1 Remedies for the Trade Mark Owner and 8.2 Rights and Remedies for the Prevailing Defendant).
ADR is not a common way to settle a trade-mark case. Unfortunately the system is not designed towards favouring this option, particularly considering that preliminary injunctions are essential to trade-mark disputes.
Trade marks can also be protected as copyrights and/or patents. There is no conflict from one category to the other. On the contrary, some patents cannot be protected as trade marks due to public domain issues.