Paraguay has revised most of its Intellectual Property laws in accordance with the TRIPS Agreement and other legal bodies of international and regional character. The new Patent Law (2000), Trademark Law (1998) and Copyright Law (1998) have been recently enacted by the National Government. Paraguay has ratified the TRIPS Agreement in 1994.

GENERAL INFORMATION ON INTELLECTUAL PROPERTY IN PARAGUAY 

1. Any filing can be done on behalf of a client before the Industrial Property Office upon presentation of a simple written instruction (letter, facsimile, electronic mail).
2. Power of attorney is not required immediately and may be presented at a later stage, within 60 working days after the pertinent filing. It does not require a consular legalization to be valid in the administrative area of Industrial Property. A notarial certification of the signature of the person granting the power is enough. In the judicial area, consular legalization is always required.
3. Only a broad power is required to perform any type and amount of work on behalf of a client.
4. Please be aware that Paraguay has joined the Paris Convention in January of 1994. Consequently, pertinent priorities can be filed according to such Convention.

SPECIFIC INFORMATION ON INTELLECTUAL PROPERTY

I. TRADEMARKS

1. Name and address of applicant.
2. Specification of products or services.
3. Ten samples of the logotype for each figurative or mixed trademark application. We can prepare them upon request.

4. Priority can be claimed according to the Paris Convention. Paraguay adopted the WIPO International Classification (Nice Agreement). Its 8th edition has entered into force on June, 2002. Trademarks are valid for 10 years and can be renewed indefinitely. Individual applications are required for each class covered. Marks formerly classified according to the 7th edition of the Nice agreement shall be reclassified at the time of renewal. Filings covering a whole class are possible for product classes, not for services, which must be precisely identified. The opposition period is 60 working days after the last publication. In case of routinary processing, it takes approximately from six to ten months to register a trademark. The new Trademark Law has stated the possibility of canceling a trademark based on a non-use period of five years. That can be done only at the request of an interested party. Use of the trademark in at least one product or service is enough to avoid cancellation, not only in such pertinent class but in any number of additional classes. Use in any country is enough to avoid cancellation of such trademark in Paraguay (international approach). No proof of use is required for renewal purposes.

TRADEMARK LICENSE

The pertinent agreements must be recorded before the Industrial Property Office in order to have legal effects vis-a-vis third parties.

1. A copy of the license agreement or an extract of it must be filed. The document must be written in Spanish or translated into Spanish. The version of the license agreement requires consular legalization when it is signed abroad.
2. The recordal may be filed by the licensor or the licensee.
3. A license agreement must contain the quality control responsibility on the side of the licensor over the products or services within the scope of the license.
4. Any clause that creates restrictions to the license not related to the trademark rights will be ruled void.
5. An extract of the license must contain at least the following data: the name of the licensor and the licensee and their respective addresses, the purpose of the contract and the trademarks to be licensed, the clarification whether the license agreement is of exclusive character or not, term of the license agreement and the established quality control.
6. The license agreement must be published for only one day.

CHANGE OF NAME OR MERGER

Change of name or merger must be recorded before de Industrial Property Office. The document evidencing the pertinent change of name or merger must be duly legalized up to the pertinent Paraguayan Consulate.

Recordal of the assignment is compulsory.

1. The assignment document must be registered at the Industrial Property Office to be valid vis-a-vis third parties.

2. The assignment application must be published for only one day.

3. If the assignment takes place abroad, the assignment form must be written in Spanish or translated into Spanish. Both the assignor and the assignee must sign the document and their signatures must be legalized up to the pertinent Paraguayan Consulate.

For the recordal of a change of address, a simple statement must be filed before the Industrial Property Office communicating the pertinent change.

OPPOSITIONS: Oppositions must be filed against a trademark application, within 60 working days after the last publication. It can be based on Intellectual Property rights registered in Paraguay or also on Intellectual Property rights not registered in Paraguay. For example, our Trademark Law states that a foreign trademark can not be registered in Paraguay by a third party without the consent of the foreign owner.

IMPORTANT REMARK: According to our Trademark Law in force since October 1st - 1998, the substantive examination of the pertinent application (absolute and relative grounds) is performed only when the deadline for filing oppositions by third parties is over. Consequently, in cases of identity, it is highly recommended from now on in order to defend the prior registration or application, to file an opposition or a formal objection in the file of the new application in order to safeguard the pertinent interest covered by such identical antecedent. Our office has a service of trademark surveillance in order to prevent registration of trademarks that might be similarly confusing to trademarks owned by our clients.

II. PATENTS

The documentation required for filing a patent application in Paraguay is the following:

1. Applicant’s and Inventor’s data (nationality and domicile).

2. Title of the invention and its description.

3. Drawings, if any.

4. Disclosure of any patent application or patent, filed or granted abroad (as long as the procedure already includes a substantive examination and as long as it is totally or partially related to the pertinent invention).

5. Priority can be claimed according to the Paris Convention. At the time of the filing it is not compulsory to file simultaneously the document evidencing the priority.

Patents are now granted for:

1. Inventions

2. Utility models Patents of inventions are now granted for 20 years to be counted from the application filing date. Patents of utility models are granted for a term of 10 years to be counted from the application filing date. The international classification for patents - Strasbourg Agreement - has been adopted. Notarial certification and consular legalization have been expressly abolished as far as the patent field in the administrative jurisdiction. Payment of patent annuities is now required in order to maintain the validity of the patent or the patent application. The annuities must be paid in advance to avoid penalties. Anyhow, there is a six months grace period with penalties. No power of attorney will be required for the payment. Any Industrial Property Agent can pay the annuities, even if he has not participated in the filing of the pertinent application or patent granted. All the information and documentation related to a patent application must be in Spanish, or a translation must be furnished. Rush publication is possible, but always after a successful formal examination. Observations by third parties are possible. The applicant, once notified, has sixty working days to present its view. Since Paraguay is a member of the TRIPS, the filing of patent for pharmaceutical products has been accepted but the granting has been postponed until January 1 - 2003.

III. INDUSTRIAL MODELS AND DESIGNS

1. Name and address of the applicant.

2. Title and description of the model or design (in four copies).

3. Specification of the class and sub-class based on the Locarno Convention, or specification of product involved.

4. Four graphic or photographic representations.

5. Name, nationality, profession and domicile of the creator.

6. Priority can be claimed according to the Paris Convention. Paraguay has adopted the WIPO classes. Industrial model and design registrations are valid for 5 years to be counted since the application date, and the renewal is possible for two more consecutive periods of 5 years. This category of protection only covers the ornamental aspects, not the technical characteristics. However, novelty is a requirement. In case the applicant and the creator are different persons, no assignment document is required. A maximum of ten variations of the same model or drawing can be claimed in one application, with the condition that the products must belong to the same class and that there must be similarity among them.

IV. DOMAIN NAMES

Domain name registrations are available in Paraguay under .com.py (ccTLD). Paraguay has eliminated the requirement of local presence for registering a domain name. However, the appointment of a local representative is still required for the billing contact. Nowadays, in order to proceed with the registration of a “.py” domain name, all we need is a written instruction with the following data:

1. Domain name to be applied.

2. Name of the company owner of the domain name.

3. Area or field in which the company is active.

4. Name, address, phone, fax and e-mail of the administrative contact of the owner of the domain name.

5. Host name and IP address of primary and secondary domain name servers.

6. Name, address, phone, fax and e-mail of the technical contact.

Our offices are active in the enforcement of Intellectual Property Rights. We have a judicial litigation department, which handles all kinds of Intellectual Property cases. According to our trademark law, when the opposition period has expired, it is possible to file a cancellation action in the civil judicial court. The statute of limitation for filing a cancellation action against a trademark registration is five years from the registration date. If bad faith is involved, the statute of limitation does not apply, according to the Paris Convention (well-known trademarks) as well as according to our new Trademark Law, whether the trademark is well-known or not (all kind of trademarks). Patents are also subject of nullity actions if they infringe third party rights or were unlawfully granted. The Trademark Law was enacted on October-1998. According to such law, the use of a trademark is required. Otherwise, it can be subject of cancellation for non-use. The use of a trademark can be national or international (any country of the world) for the pertinent trademark in order to avoid a cancellation action for non-use. Therefore, as from October 2003 all trademarks registered in Paraguay, which are not in use nationally or internationally (any country of the world), will be subject to a cancellation action for non-use, which can be filed by any interested party.