WIPO Lex

Ley de Marcas y otros Signos Distintivos, la cual fue promulgada mediante Decreto Legislativo N° 868, de fecha 6 de junio de 2002, publicado en el Diario Oficial N° 125, Tomo 356, de fecha 8 de julio de 2002

DECREE No. 868

THELEGISLATIVEASSEMBLYOFTHEREPUBLICOFELSALVADOR,

WHEREAS:

I. The Constitution of the Republic recognizes the right to intellectual and artistic property as a

human right, in the time frame and form laid down by the law and the international treaties to

which the Republic of El Salvador is a signatory;

II. Our country, faithful to its commitments to the World Trade Organization, must guarantee that the

regulations of its intellectual property legislation include the protection standards laid down by the

Agreement on the Trade-Related Aspects of Intellectual Property, in conformity with Annex 1C of the

Marrakech Agreement setting up the World Trade Organization;

III. The Central American Agreement for the Protection of Industrial Property is no longer

suitable in view of the changes stemming from industrial development, international

trade and new technologies, which is why the Republics of El Salvador, Guatemala,

Nicaragua and Costa Rica signed, in the city of San José, Republic of Costa Rica, on

the seventeenth of September nineteen hundred and ninety-nine, a Protocol repealing

the said Agreement, which must be ratified by means of a national legal system

replacing the same, in order to ensure that industrial property rights are truly and

effectively recognized and protected, in accordance with present needs, thereby

stimulating intellectual creativity and investment in trade and industry, consistent with

the commitments undertaken by virtue of the Agreement on the Trade-Related

Aspects of Intellectual Property;

THEREFORE:

Exercising its constitutional powers and at the initiative of the President of the Republic, through the Minister

of the Economy and Deputies Ciro Cruz Zepeda Peña, Walter René Araujo Morales, Julio Antonio Gamero

Quintanilla, René Napoleón Aguiluz Carranza, Carmen Elena Calderón de Escalón, José Rafael Machuca

Zelaya, William Rizziery Pichinte, Rosario del Carmen Acosta, Ernesto Iraheta, José Antonio Almendáriz

Rivas, Rafael Edgardo Arévalo Pérez, José Orlando Arévalo Pineda, Rodrigo Avila Avilés, Juan

Miguel Bolaños Torres, Carlos Antonio Borja Letona, Isidro Antonio Caballero Caballero, Louis

Agustín Calderón Cáceres, Rafael Hernán Contreras Rodríguez, Roberto José d’ Aubuisson Munguía,

Agustín Díaz Saravia, Juan Duch Martínez, Juan Mauricio Estrada Linares, Hermes Alcides Flores

Molina, José Amílcar Arévalo, Guillermo Antonio Gallegos Navarrete, Elizardo González Lovo, Noé

Orlando González, Jesús Grande, Manuel Durán, Carlos Walter Guzmán Coto, Mauricio Hernández

Pérez, Mariela Peña Pinto, Francisco Alberto Jovel Urquilla, Osmín López Escalante, Mauricio López

Paker, Alejandro Dagoberto Marroquín, Juan Ramón Medrano Guzmán, William Eliú Martínez, José

Francisco Merino López, Julio Eduardo Moreno Niños, Renato Antonio Pérez, Mario Antonio Ponce

López, Norman Noel Quijano González, José Mauricio Quinteros Cubías, Carlos Armando Reyes Ramos,

Horacio Humberto Ríos Orellana, Héctor Nazario Salaverría Mathies, Gerardo Antonio Suvillaga García,

Hugo Antonio Fuentes, Enrique Valdés Soto, Alba Teresa de Dueñas, Vinicio Peñate, Manuel Vicente

Menjívar, Fernando de Jesús Gutiérrez, Juana Isolina Alas de Marín, Héctor Guzmán and Juan José

Francisco Guerrero Chacón.

DECREES as follows:

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LAW ON TRADEMARKS AND OTHER DISTINCTIVE SIGNS

TITLE I

PRELIMINARY PROVISIONS

Subject matter of the Law

Article 1.- The purpose of the present Law shall be the acquisition, maintenance, protection, amendment or licensing of trademarks, expressions or signs of commercial advertising, trade

names, emblems, geographical indications and appellations of origin, as well as the prohibition of

unfair competition in such areas.

Concepts used

Article 2.- For the purposes of this Law, the following definitions shall be deemed to apply:

Distinctive sign: Any sign composed of a trademark, an expression or signal of commercial advertising, a trade name, an emblem or an appellation of origin;

Well-known distinctive sign: A distinctive sign known to the appropriate sector of the public, or in related business circles, as belonging to a third party, which has acquired the said quality through its

use in the country or as a consequence of the promotion thereof;

Famous distinctive sign: Any distinctive sign that is known to the public in general, inside or outside the country;

Trademark: Any sign or combination of visually perceptible signs which, by means of their special characters, serve to distinguish clearly the goods or services of a natural person or legal entity, from

goods or services in the same class or of the same nature but offered by a different owner;

Collective trademark: A trademark owned by a legal entity grouping together persons authorized by the owner to use the trademark on the basis of a set of regulations;

Expression or sign of commercial advertising: Any word, caption, advertisement, slogan, sentence, phrase, combination of words, design, engraving or other similar means, provided that it is original and

characteristic, which is employed with a view to drawing the attention of consumers or users to one or more

goods, services, firms or establishments;

Business name: A designating or mixed sign used by a firm or its establishments for purposes of identification;

Emblem: A figurative, symbolic or allegorical sign which identifies and distinguishes a firm or establishment;

Geographical indication: Any geographical name, designation, picture or sign which designates or evokes a particular country, group of countries, region, locality or place;

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Appellation of origin: A geographical indication consisting of the denomination of a particular country, region or place, used to designate a product originating from there, whose qualities or characteristics are

due exclusively or primarily to the geographical setting in which it is produced, including natural and

human factors; the constituent elements of an appellation which, without being from a particular country,

region or place, refers to a particular geographical area when used in conjunction with products

originating from the said area, shall also be deemed to be an appellation of origin;

Paris Convention: The Paris Convention for the Protection of Industrial Property, signed on March 20, 1883, revised on July 14, 1967 and amended on September 28, 1979;

Registry: Department for the Registration of Intellectual Property of the Commercial Registry.

Persons who may avail themselves of the Law.

Article 3.- Any natural person or legal entity, regardless of his nationality or domicile, may acquire or enjoy the rights granted under this Law.

There shall be no requirements relating to nationality, domicile or establishment in the Republic to

enjoy the rights laid down by this Law.

TITLE II TRADEMARKS

CHAPTER I TRADEMARKS IN GENERAL

Signs that may constitute a trademark

Article. 4.- Trademarks may consist, inter alia, of words or series of words, including the names of persons, letters, numbers, monograms, figures, portraits, labels, coats of arms, patterns, emblems,

borders, lines and margins, or color combinations and arrangements. Likewise, they may consist, inter

alia, of the form, presentation or get-up of products, or of their packaging or wrapping, or of the means or

premises used to market the corresponding goods or services.

Without prejudice to the provisions relating to the geographical indications contained in this Law,

trademarks may consist of national or foreign geographical names, provided they are sufficiently

arbitrary in respect of the goods or services to which they apply and their use is not likely to create

confusion with regard to the origin, source, qualities or characteristics of the goods or services for which

the trademarks are used.

The nature of the good or service to which the trademark is to apply shall in no way be hindered by the

registration thereof.

Acquisition of the right in the trademark

Article 5.- Ownership of trademarks and the right to their exclusive use shall be acquired through their registration in conformity with this Law.

Questions which arise with regard to the order of priority in the filing of two or more applications for the

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registration of a trademark shall be settled according to the date and time of filing of each application.

Ownership of a trademark and the right to its exclusive use shall be acquired only in relation to the

goods or services which have been registered, without prejudice to the right of objection in the cases

governed by this Law.

The owner of a trademark protected in a foreign country shall enjoy the rights and guarantees granted

by this Law, provided that the trademark has been registered in El Salvador, without prejudice to the

protection of well-known or famous signs.

The use of a trademark to market a good or service or registering the trademark used in business shall

be optional.

Right of priority

Article 6.- Any party who has filed in due form an application to register a trademark in a State signatory to the Paris Convention or in another country which grants reciprocity for this purpose to persons who

hold Salvadorian nationality, who actually or effectively have their domicile or place of business in one of

them, as well as to the assignee of such person, shall enjoy a right of priority to file, in El Salvador, one or

more applications to register the same trademark, with regard to the same goods or services.

This right of priority may be exercised during a period of six months, starting the day after the priority

application was filed. An application to register a trademark that has already been filed and which invokes the

right of priority shall not be refused, revoked or cancelled as a result of acts performed by the applicant

himself or a third party during the term of validity of the right of priority. Such acts shall not give rise to the

acquisition of any third party right in relation to the trademark.

The right of priority shall be invoked by means of an express declaration, which must either accompany

the application for registration or be made within three months of the date of filing.

In the three months following filing, it shall be necessary to attach a copy of the priority application

certified by the industrial property office that has received the said application. This document shall not

be subject to any authentication requirement and a simple translation may be attached, as necessary.

Joint ownership

Article 7.- Joint ownership of the right in a trademark application or registration shall be governed by the following standards unless otherwise provided:

(a) The amendment, limitation or withdrawal of an application being processed must be

done jointly;

(b) Each joint owner may personally use the distinctive sign that forms the subject matter of

the application or registration, but must provide fair compensation to the joint owners

who do not exploit or use the sign and have not licensed the use of the same; failing such

agreement, the amount of compensation shall be set by the competent court;

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joint owner may assign his share separately, also enjoying a right of pre-emption

during a period of three months from the date on which the joint owner notifies them

of his intention to assign his share;

(d) Each joint owner may grant to third parties a non-exclusive license to use the

distinctive sign which forms the subject matter of the application or registration, but

must provide fair compensation to the joint owners who do not use the sign and have

not licensed the use of the same; failing such agreement, the amount of compensation

shall be set by the competent court;

(e) An exclusive license for exploitation or use may be granted only by mutual consent;

(f) Total or partial voluntary limitation or cancellation of a registration shall be by mutual

consent;

(g) Any joint owner may notify the other joint owners that he waives for their benefit his share

of the application or registration, remaining free from any obligation to the other joint

owners once the waiver has been entered in the corresponding Registry or, in the case

of an application, once notification of such waiver has been provided to the Registry; the

waived share shall be divided up among the remaining joint owners proportionate to their

respective rights in the application or registration; and

(h) Any joint owner may take appropriate action in the event that this right has been infringed.

The provisions of common law relating to joint ownership shall apply to any points not covered by

this Article.

Trademarks that are inadmissible for intrinsic reasons

Article 8.- A sign covered by any of the following cases may not be registered or used as a trademark or a part thereof:

(a) It consists of the customary or common form of the good to which it applies or to its wrapping,

or of a form that is necessary or imposed by the nature of the good or service in question;

(b) It consists of a form which confers a functional or technical advantage on the good or service

to which it applies;

in customary business practices in the country, is a common or customary designation of the good

or service in question;

(d) It consists exclusively of a sign or indication which can be used in business to qualify or

describe a characteristic of the good or service in question;

(e) It consists of a simple color considered in isolation;

(f) It consists of a letter or digit considered in isolation, unless it is present in a special, distinctive

form;

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(g) It is contrary to morality or public policy;

(h) It contains an element which offends or ridicules persons, ideas, religions or national

symbols of any country or international entity;

(i) It can cause deliberate misrepresentation or confusion as to the geographical source, nature,

mode of production, qualities, suitability for use or consumption, quantity or other characteristic of

the good or service in question;

(j) It consists of a geographical indication that contravenes the provisions of Article 4, subsection

(k) It reproduces or imitates, either completely or partially, the coat of arms, flag or other emblem,

acronym, name or abbreviated name of any State or international organization, without express

authorization from the competent authority of the State or international organization in question;

(l) It reproduces or imitates, either completely or partially, an official sign of control or guarantee

adopted by a State or public entity, without express authorization from the competent authority

of that State;

(m) It reproduces coins or banknotes which have legal tender in the country, securities or other

commercial documents, stamps, postage stamps, fiscal stamps or fiscal instruments in

general;

(n) It includes or reproduces medals, prizes, diplomas or other elements which presuppose the

obtainment of awards with regard to the corresponding good or service, unless such awards

were actually granted to the registration applicant or his assignee and proof is provided when

the application for registration is filed; and,

(o) It consists of the name of a plant variety which is protected in the country or abroad, if the sign is

to be used for goods or services relating to such a variety.

Trademarks that are inadmissible owing to third party rights

Article 9.- Any sign that affects a third party right may not be registered or used as a trademark or element thereof in the following cases:

(a) It is identical to a trademark or other distinctive sign already registered or applied for by a

third party at a prior date, which distinguishes goods or services included in the same

class;

(b) Owing to its graphic, phonetic or ideological similarity, it may mislead or cause confusion

with other trademarks and other distinctive signs already registered or applied for by a

third party, if it is to be used to distinguish goods or services included in the same class;

used in the country by a third party from a prior date, provided that the trading practices

or activities are similar;

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(d) It constitutes a total or partial reproduction, imitation, translation or transcription of a

well-known distinctive sign belonging to a third party, when its use is liable to cause

confusion or a risk of association with the third party, or unfair exploitation of the notoriety

of the sign, in relation to goods included in the same class;

(e) It constitutes a total or partial reproduction, imitation, translation or transcription of a

well-known distinctive sign belonging to a third party, when its use is liable to cause

confusion or a risk of association with the third party, regardless of the goods or services

to which the sign applies;

(f) It affects the right of personality of a third party, or consists partially or completely of the

name, signature, title, pseudonym, picture or portrait of a person different from the one

filing for registration, unless express authorization has been granted by the third party or

his heirs;

(g) It affects the right to the name, image or prestige of a local, regional or national

community, unless express authorization has been granted by the competent authority

of such community;

(h) It is liable to cause confusion with a protected appellation of origin;

(i) It is liable to infringe a copyright or industrial property right held by a third party, unless he

grants his express authorization; and,

(j) The application filed to register the sign was made to perpetrate or consolidate an act

of unfair competition.

CHAPTER II

PROCEDURE FOR TRADEMARK REGISTRATION

Filing for registration

Article 10.- Applications for trademark registration shall be filed with the Registry and must contain the following:

(a) The designation of the authority to which it is addressed;

(b) The name, company name or trade name, nationality, domicile and other particulars concerning

the applicant and the name, occupation and domicile of the legal representative or agent if the

application is filed by the latter;

filed. If the trademark consists solely of a design, the applicant shall assign it a form of

identification. If the trademark is constituted by any denominative element with a meaning in a

language other than Spanish, a simple translation of the same shall be included;

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(d) A list containing the name of the goods or services that will be distinguished by the trademark, in

conformity with the classification laid down in Article 85 of this Law, with an indication of the class to

which they correspond;

(e) Reservations expressed with regard to the type of font, color or combination of colors, designs or

characteristics of the trademark, as they appear in the model, as the case may be. Reservations

expressed with regard to elements which do not appear in the model shall be deemed invalid;

(f) A specific statement of what is requested;

(g) The exact address to which notifications should be sent; and

(h) The place and date of the application and the signature of the applicant, agent or legal

representative.

The application referred to in the previous subsection shall be accompanied by the following:

(a) A certified photocopy of the lawfully granted power of attorney, if the application is filed

by an agent, unless the latter is already accredited with the Registry, in which case the

application shall indicate the date and number of registration. If the interested party

presents the original of the power of attorney, he may ask that it be officially recorded

and returned to him;

(b) Fifteen models or examples of the trademark; and,

Law, as appropriate.

Applicants may deal directly with the Registry, with the signature and seal of the chief attorney or through

an agent who is a registered attorney and does not fall under any of the cases of disqualification referred to

in Article 99 of the Code of Civil Procedure.

Application filing date

Article. 11.- Once the application has been filed, the Registry shall note the date and time of filing, assign a file number and send the applicant a receipt for the application and the documents submitted.

The filing date of the application shall be deemed to be the date of its receipt by the Registry,

provided that at least the following requirements are met upon receipt:

(a) Information making it possible to identify the applicant or his representative and the address for

receiving notifications in the country;

(b) The trademark for which an application for registration has been filed as stipulated in Article 10(c)

of this Law; and

Amendments to an application

Article 12.- The applicant may amend or correct his application at any point during processing. An

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amendment or correction shall not be accepted if it implies a fundamental change in the trademark or a

broadening of the list of goods or services submitted in the initial application, but the said list may be

reduced or limited.

Examination of form

Article 13.- The Registry shall verify whether the application complies with the provisions of Article 10 of this Law.

In the event of non-compliance with one of the requirements laid down in Article 10 of this Law, the

Registry shall issue a decision and shall notify the applicant accordingly so that the latter may, within a

period of four months, correct the error or omission, failing which the application shall be deemed to

have been abandoned.

Examination of substance

Article 14.- The Registry shall verify whether the trademark falls under any of the prohibitions laid down in Articles 8 and 9 of this Law, on the basis of the information and elements at its disposal.

If the trademark for which registration is sought falls under any of the prohibitions laid down in the

articles mentioned in the previous subsection, the Registry shall issue a decision and inform the

applicant accordingly, indicating the objections which prevent registration and setting a period of

four months for answering. If this deadline passes without a response from the applicant or if the

Registry nevertheless considers that the objections raised remain, the registration shall be refused

by means of a reasoned decision.

If the trademark applied for is identical or similar to another which is being processed for registration, in

conformity with the provisions of Article 9 (a) and (b) of this Law, the Registry shall issue a ruling, leaving

the trademark applied for in abeyance until the application being processed has been resolved. If the

application being processed is refused, causing it to lapse, the application declared in abeyance shall be

processed in conformity with this Law and the priority referred to in the second subsection of Article 5 of

this Law shall be recognized.

Similar trademarks may coexist if there is a written agreement between the interested parties, unless

such coexistence would cause confusion in the minds of the public.

For purposes of examination of the trademark, the latter shall be analyzed as a whole without

separating its constituent elements.

Publication of the application

Article 15.- Once the examinations to verify compliance with Articles 13 and 14 of this Law have been carried out and if there are no obstacles to the application or any such obstacles have been overcome,

the Registry shall order that notification of the application be provided through publication of an

announcement in the Official Gazette and in one of the daily newspapers with the biggest nationwide

circulation, three times, within 15 days, at the interested party’s expense.

The announcement published shall contain the following:

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(a) the name, company name or trade name of the applicant and his nationality;

(b) the name of the agent or legal representative, as appropriate;

(d) the number of the application;

(e) the trademark, as filed; and,

(f) an indication of the corresponding class.

Opposition to registration

Article 16.- In the two months following the date of first publication in the Official Gazette of the announcement referred to in the previous article, any party claiming a legitimate interest may object

to the application and oppose its registration:

(a) If he considers that the sign which is to be registered falls under the prohibitions laid down in

Articles 8 and 9 of this Law;

(b) If he considers that the sign for which registration is sought is equal or similar to another sign

that is already registered or being processed, which protects goods or services that, even

though they are in a different class from the goods or services protected by the sign that is

already registered or being processed for registration, are of the same nature, as a result of

which the public can be misled;

The opposing party may appear on his own, with the signature and seal of the chief attorney or by an

agent who must also be a registered attorney who is not subject to any of the disqualifications

referred to in Article 99 of the Code of Civil Procedure.

Requirements and procedures for opposition to registration

Article 17.- The opposition shall be submitted in writing to the Registry and contain the following:

(a) The exact designation of the authority to which it is addressed;

(b) The name, company name or trade name, nationality, domicile and other particulars of

the opposing party and the name, occupation and domicile of the agent or legal

representative, as the case may be;

has been filed;

(d) The de facto and de jure grounds on which the opposition is based;

(e) A clear and concrete expression of what is sought; and,

(f) The place and date of the text and the signature of the opposing party.

The opposing party shall provide and offer relevant evidence. If the evidence is not attached to the text of

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opposition, it shall be submitted within two months after the opposition has been filed.

Once the opposition has been answered, the opposing party may only submit additional evidence if it

relates to new facts.

The Registry may reject the text of opposition ex officio if it does not comply with the provisions of this

Article and the previous one, and shall specify in the corresponding intermediate order the defect from

which it suffers.

If the opposition is accepted, the Registry shall notify the trademark applicant accordingly, who shall

have two months to reply as from the date of notification. Once this deadline has expired, the Registry

shall decide on the application, even if the opposition has not been answered.

Final decision

Article 18.- If one or more oppositions have been filed, they shall be decided together with the main thrust of the application in a single act, within 30 days following the date of expiry of the deadline to

answer the opposition or the last of the oppositions, by means of a reasoned decision.

If the opposition is accepted and no appeal is lodged, the application shall be archived without further

processing and the Registry shall refund the cash deposit for opposition.

If the decision rejecting the opposition is upheld, the registration of the trademark shall be granted and

the cash deposit for opposition shall revert to the Registry.

If no opposition is filed within the deadline set, the Registry shall proceed to register the trademark. For

this purpose, the interested party shall provide the Registry with a copy of the first publication of the

announcement of application for registration in the Official Gazette.

In the event that registration is granted, the applicant shall be notified of the corresponding decision so

that he may submit a receipt for payment of the prescribed fee. If, within three months following the date

of notification of the decision, the applicant has not provided proof that he has paid the fee, the decision

shall remain without effect, as a result of which the application shall be deemed to be abandoned and the

file shall be archived without further processing.

Withdrawal of application or opposition

Article 19.- Any person who has filed an application or opposition with the Registry may withdraw the same regardless of the stage reached in the proceedings. If this is the case, the application or

opposition shall be deemed not to have been filed. Withdrawal of the application or opposition shall

not warrant reimbursement of the fee paid or the cash deposit, and the latter shall revert to the

Registry.

Certificate of registration

Article 20.- If the Registry has proceeded with the registration of the trademark, it shall send the owner a certificate in no more than 30 days following the date of registration, which shall contain the

following information:

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(a) the complete name of the Registry;

(b) the name, company name or trade name, nationality and domicile of the owner of the trademark;

which it is entered;

(d) a model of the trademark, which must bear the stamp of the Registry;

(e) a complete list of the goods or services distinguished by the trademark, with an indication of

the corresponding class;

(f) any reservations that may have been expressed;

(g) the date of registration and the corresponding date of expiration;

(h) the place and date of preparation of the certificate; and,

(i) the Registrar’s seal and signature.

The certificate of registration referred to in the previous subsection shall be prepared using the form

employed by the Registry for this purpose.

The respective file shall contain a copy of the certificate of registration.

CHAPTER III.

TERM, RENEWAL AND AMENDMENT OF REGISTRATION

Term of registration and renewal

Article 21.- The registration of a trademark shall be valid for ten years starting from the date on which it was granted. It may be renewed indefinitely for successive terms of ten years, calculated

from the last expiration date.

Procedure for renewal of registration

Article 22.- An application for the renewal of a trademark registration shall be filed with the Registry in the year leading up to the date of expiration of the registration to be renewed. It may also be filed

during a grace period of six months after the date of expiration, subject to the payment of a

surcharge over and above the prescribed fee for renewal. During the grace period, the registration

shall remain fully in force.

Applications for renewal shall contain the following:

(a) the designation of the authority to which it is addressed;

(b) the name, company name or trade name, nationality and other particulars of the owner

of the mark and the name, occupation and domicile of the legal representative or agent,

if the application has been filed by the latter;

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(d) if the owner wishes to reduce or limit the goods or services covered by the

registration that is being renewed, a list of the goods or services corresponding to the

desired reduction or limitation;

(e) a specific statement of what is requested;

(f) the exact address to which notifications are to be sent; and,

(g) the place and date of the application and signature of the applicant, his agent or his

legal representative.

The application referred to in the previous subsection should be accompanied by the following:

(a) a certified photocopy of the legally granted power of attorney, if the application is filed by

an agent, unless the latter is already accredited with the Registry, in which case the

application shall indicate the date and number of registration. If the interested party

submits the original of the power of attorney, he may ask that it be officially recorded and

returned to him;

(b) a receipt for payment of the prescribed fee.

The renewal of a trademark registration shall start to take effect from the date of expiration of the prior

registration, even if an application for renewal is filed during the grace period.

Once the conditions laid down in this Article have been met, the Registry shall enter the renewal

without further processing and order that the renewal be recorded in the margin of the entry

corresponding to the trademark.

The above-mentioned annotation in the margin shall contain the following:

(a) an express indication that the entry for the trademark has been renewed;

(b) the date on which renewal was effected;

and

(d) the seal and signature of the Registrar.

The owner shall be given a certificate providing proof of renewal, which shall contain the following:

(a) the full name of the Registry;

(b) the name, company name or trade name, nationality and domicile of the owner of the trademark;

(d) an express statement that the entry was renewed;

(e) the date of renewal and the date of its expiration; and,

(f) the place and date made out on the certificate, the seal and signature of the Registrar.

Amendment of renewal

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Article 23.- At the time of renewal, no changes may be made to the trademark; nor may the list of goods and services covered by the registration be broadened.

The entry for the renewal shall mention any reduction or limitation made to the list of goods or services

distinguished by the mark.

Correction and limitation of registration

Article 24.- The owner of a registration may ask at any time to amend the same in order to correct any errors and comply with the procedure established for its registration. The correction shall not be

accepted if it entails an essential change in the trademark or a broadening of the list of goods or services

covered by registration.

The owner of a registration may ask at any time to reduce or limit the list of goods or services

covered by registration. If any third party right has been entered in relation to the trademark, the

reduction or limitation may only be entered once a duly legalized sworn statement before a notary

obtained from the third party has been presented, giving his consent to such a reduction or

limitation.

Any requests for correction, reduction or limitation of the registration shall be subject to payment of

the prescribed fee, except in cases where the correction is due to a mistake in the Registry, in

conformity with the provisions of Article 108 of this Law.

Division of trademark registration

Article 25.- The owner of a registration may at any time request a division of the trademark registration in order to separate the goods or services contained in the list of the initial registration into two or more

registrations. Each divided registration shall retain the date of initial registration.

Requests for division shall be subject to payment of the prescribed fee.

CHAPTER IV

RIGHTS, OBLIGATIONS AND LIMITATIONS RELATING TO REGISTRATION Rights conferred by registration

Article 26.- Registration of a trademark shall entitle its owner to bring suit against any third party who, without his consent, has done one of the following:

(a) reproduced, applied, stuck or affixed in any way a distinctive sign that is identical or

similar to the registered trademark to goods including those for which the trademark

has been registered, or to the packing, wrapping, packaging or get-up of such

goods, or to goods that have been produced, altered or processed by means of

services including those for which the trademark has been registered;

(b) eliminated or altered the trademark for commercial purposes after its owner or a

person authorized by him has applied, stuck or affixed it to the goods referred to in the

previous subsection;

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reproduce or contain the trademark, as well as marketed or held such materials;

(d) refilled or reused for commercial purposes packing, wrapping or packaging bearing the

trademark;

(e) used in business a sign identical or similar to the trademark for any goods or services if

such use is liable to cause confusion or a risk of association with the owner of the

registration, it being understood that in the case of the use of an identical sign for

identical goods or services, it can be assumed that there is a likelihood of confusion;

(f) used publicly a sign identical or similar to the trademark, even for non-commercial

purposes, if this is liable to lead to the dilution of the distinctive power or commercial or

advertising value of the trademark, or misappropriation of its prestige;

(g) in the case of licensed products, allowed the use by third parties of licensed products or

signs of licensed trademarks for purposes of commercial, advertising or promotional

association, linking them to the trademarks or establishments of others; and,

(h) engaged in any act of a similar nature that affects the rights conferred on the owner of

the trademark.

The following acts, inter alia, shall be deemed to constitute use of a sign in business:

(a) placing on the market, selling, offering for sale or distributing goods or services bearing the sign

or making reference thereto;

(b) importing, exporting, storing or transporting goods bearing the sign or referring thereto; and

regardless of the medium in which this is done, without prejudice to applicable advertising

standards.

Limitations on the right in a trademark

Article 27.- Registration of a trademark shall not confer the right to prohibit a third party from using, in relation to goods or services on the market:

(a) his name or address, or that of his trading establishments;

(b) indications or information on the characteristics of the goods or services he produces or

distributes, inter alia references to their quantity, quality, use, geographical origin or price; and,

services he produces or distributes, particularly in relation to spare parts or accessories.

The above limitations shall apply provided that use is made in good faith in the exercise of lawful industrial

or commercial activities and is not liable to cause confusion as to the corporate origin of the goods or

services.

Lapse

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Article 28.- Registration of the trademark shall not permit the owner to prohibit the use of the trademark in relation to legitimately branded products which are placed on the market, in the country, by the said

owner, by the licensee or by another person with the consent of the owner or economically related to

the same, provided that such products and the wrapping and packaging which were in immediate

contact therewith have not suffered any modification, alteration or deterioration.

For the purposes of the above paragraph, two persons shall be deemed to be economically related

where one person can exercise a decisive influence on the other, either directly or indirectly, with respect

to the use of the rights in the trademark, or where a third party may exercise such an influence on both

persons.

Non-protected elements in complex trademarks

Article 29.- When the trademark consists of a label or other sign composed of a body of elements, protection shall not extend to the elements contained therein which are in everyday use or necessary in

business.

Indication of product origin

Article 30.- All products marketed in the country must indicate clearly the place where the product was produced or manufactured, the name of the producer or manufacturer and the connection or relationship

between the said producer or manufacturer and the owner of the trademark used in the product, if this it not

the same person, without prejudice to applicable labeling and consumer information standards.

CHAPTER V

ASSIGNMENT, LICENSING OF USE,

CHANGE IN THE NAME OR DOMICILE

OF THE OWNER OF THE TRADEMARK

Assignment of the trademark

Article 31.- The right in a trademark that is already registered or being processed may be assigned inter vivos or by succession. For the said assignment to be enforceable against third parties, it must

be put in writing and entered in the Register. The said entry shall be subject to the payment of the

prescribed fee.

Procedure for assigning the trademark

Article 32.- To enter the assignment of the right in a trademark that is already registered or being processed, an application containing the following shall be filed with the Registry:

(a) a designation of the authority to which it is addressed;

(b) the name of the owner of the trademark and the name of the acquirer, his nationality and

domicile; and the name, occupation and domicile of the agent or legal representative, as the

case may be;

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and an identification of the trademark being assigned;

(d) the title by means of which the assignment is verified;

(e) a specific statement of what is requested;

(f) the exact address to which notifications should be sent; and

(g) the place and date of the application and the signature of the applicant.

The following should be attached to the application:

(a) a certified photocopy of the lawfully granted power of attorney, if the application is filed through

an agent, unless this person is already accredited with the Registry, in which case the

application shall indicate the registration number and date. If the interested party presents the

original of the power of attorney, he may ask that it be officially recorded and returned to him;

(b) the document attesting to the assignment of the mark;

Once the above requirements have been met, the Registry shall enter the assignment without further

processing, and order that an entry providing proof of the assignment be made in the margin of the

entry corresponding to the trademark.

The assignment shall not give rise to publication.

The owner shall be given a certificate attesting to the assignment, identical to the one stipulated in

Article 20 of this Law.

The application for assigning a trademark may be filed simultaneously by the assignor and the assignee,

by only one of the parties.

Free assignment of the trademark

Article 33.- Assignment of the right in a trademark may take place independently of the company or part of the company of the owner of the right with regard to one, some or all of the goods or services for which

the trademark has been registered. If the assignment is limited to one or more of the goods or services,

the registration shall be divided, with a new registration opened up on behalf of the acquirer.

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Assignment of trademarks together with the company

Article 34.- The assignment of a company shall include assignment of the right in any trademark that is an element of the company, unless specifically agreed otherwise.

License for use of the trademark

Article 35.- The owner of the right in a registered trademark may grant a license for the use of the trademark. The licensing contract for use shall be entered in the Registry and shall only be

enforceable against third parties starting from the date of the corresponding registration.

Unless otherwise stipulated in a licensing contract, the following requirements shall apply:

(a) the licensee shall be entitled to use the trademark throughout the term of the

registration, including all renewals thereof, on the territory of the country with regard to

the goods or services for which the trademark was registered;

(b) the licensee may not assign the license or grant sublicenses; and

same goods or services and may use for himself the trademark in the country with regard

to these goods or services.

If so stipulated in a licensing contract for a foreign trademark, duly recorded in the Registry, the

licensee may block imports of goods for which, under the protection of the trademark that forms the

subject matter of the license, an attempt is made to introduce them into the country for commercial

purposes.

Similarly, the owner of the trademark may block the sale of any goods which, owing to their condition of

sale goods or irregular production qualities of exports ordered solely by firms outside the area, are sold

on the Salvadorian market without the respective authorization of the owner of the trademark.

Procedure for registration of a license for use

Article 36.- An application containing the following shall be filed with the Registry to record a license for use of a registered trademark:

(a) the designation of the authority to which it is addressed;

(b) the name, company name or trade name, nationality and domicile of the owner of the

trademark and the licensee; and the name, occupation and domicile of the agent or legal

representative, as the case may be;

made available for use;

(d) the type of license, its term and the territory covered;

(e) A specific statement of what is sought;

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(f) the exact address to which notifications should be sent; and

(g) the place and date of the application, with the signature of the

applicant.

The following should be attached to the application:

(a) a certified photocopy of the lawfully granted power of attorney, if the application is filed through

an agent, unless this person is already accredited with the Registry, in which case the

application shall indicate the date and number of registration. If the interested party submits the

original of the power of attorney, he may ask that it be officially recorded and returned to him;

(b) the document in which the license is recorded; and,

The application referred to in this Article may be filed jointly by the licensor and licensee, or by

only one of the parties.

Once the above requirements have been met, the Registry shall enter the license for use without

further processing, and order that an entry providing proof of the license for use be made in the margin

of the file.

The license for use shall not give rise to publication.

The licensee shall be given a certificate attesting to the license for use, which should contain the following:

(a) the full name of the Registry;

(b) the name, company name or trade name, nationality and domicile of the owner of the trademark;

(d) a specific indication of the trademark which contains the license and the number of registration,

the sheet and the Registry Book;

(e) a mention of whether or not the license is exclusive in relation to a particular territory or zone;

(f) the term of the license; and,

(g) the place and date the certificate was made out, along with the stamp and signature of the

Registrar.

As appropriate, franchise contracts shall be governed by the provisions of licenses for use.

Change in the name or domicile of the owner

Article 37.- Natural persons or legal entities who have changed or modified their name, company name or trade name, in accordance with the law, or their domicile, shall have the Registry make a note of the

change or amendment in the margin of each of the files corresponding to the trademarks in their

possession.

Procedure for a change in name or domicile

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Article 38.- To enter a change in the name or domicile of the owner of a registered trademark, an application containing the following shall be filed with the Registry:

(a) The designation of the authority to which it is addressed;

(b) The name, company name or trade name, nationality and domicile of the applicant

and the name, occupation and domicile of the agent or legal representative, as the

case may be;

number of registration, sheet and volume of the Registry Book;

(d) A specific statement of what is requested;

(e) The exact address to which notifications should be sent; and

(f) The place and date of the application, signed by the applicant or agent or legal

representative, as the case may be.

The following should be attached to the application:

(a) The lawfully granted power of attorney, if the application is filed through an agent,

unless this person is already accredited with the Registry, in which case the application

shall indicate the date and number of registration. If the interested party submits the

original of the power of attorney, he may ask that it be officially recorded and returned

to him;

(b) In case of a change of domicile, the owner or agent may submit a sworn statement

showing the change of domicile;

(d) The receipt for payment of the prescribed fee.

Once the above requirements have been met, the Registry shall proceed without further processing to

make an entry in the margin of the file corresponding to the trademark concerning the change in name,

company name or trade name or domicile, which shall not give rise to publication.

The owner of the trademark shall receive certification of the corresponding entry in the margin within

30 days calculated from the day after the application was filed.

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CHAPTER VI

TERMINATION OF TRADEMARK REGISTRATION

Invalidation of registration

Article 39.- At the request of any interested party and subject to a hearing of the owner of the trademark registration, the competent legal authority shall declare invalid the registration of a trademark if it has

been made in contravention of any of the prohibitions laid down in Articles 8 and 9 of this Law. In the

case of non-compliance with Article 8, the Public Prosecutor’s Office may also petition for invalidity.

A trademark registration may not be declared invalid for reasons that had ceased to apply by the

time the petition for invalidation was lodged.

A petition for invalidity based on an infringement of Article 9 shall be lodged within five years of the date

of registration. An action for invalidity shall not be barred if the impugned registration was made in bad

faith.

A petition for invalidity may be lodged as a defense or as a cross-action in any proceedings for

infringement of a registered trademark.

An action for invalidity based on the best right of a third party to secure registration of a trademark may

only be lodged by the person claiming such a right.

Cancellation of registration at the owner’s request

Article 40.- The owner of a trademark may ask the Registry at any time to cancel the registration. Requests for cancellation shall be subject to payment of the prescribed fee.

If an entry concerning a right in favor of a third party appears in relation to the trademark, cancellation may

only proceed once a sworn statement, duly legalized before a notary and granted by the third party,

whereby he gives his consent to such cancellation, has been presented.

Procedure for obtaining the cancellation of a registration

Article 41.- To secure the cancellation of a trademark registration, an application containing the following shall be filed with the Registry:

(a) the designation of the authority to which it is addressed;

(b) the name, company name or trade name, nationality and domicile of the applicant, and the

name, occupation and domicile of the agent or legal representative, as the case may be;

matter of the application;

(d) a specific statement of what is requested;

(e) the exact address to which notifications should be sent; and

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(f) the place and date of the application, with the signature of the

applicant.

The following should be attached to the application:

(a) the lawfully granted power of attorney, if the application is filed through an agent,

unless this person is already accredited with the Registry, in which case the application

shall indicate the place and number of registration. If the interested party submits the

original of the power of attorney, he may ask that it be officially recorded and returned to

him;

(b) A receipt for payment of the prescribed fee;

previous Article.

Once the requirements set out in the aforegoing subsections have been met, the Registry shall order

that the registration be cancelled, that the grounds be entered in the margin of the corresponding file and

that a single announcement be published, at the applicant’s expense, which must contain the following:

(a) The name, company name or trade name, nationality and domicile of the person

cancelling the registration;

(b) A precise indication of the trademark for which the registration has been cancelled;

Lapse of a trademark registration

Article 42.- The right of ownership to a trademark shall lapse if the period referred to in the first subsection of Article 22 of the present Law expires and no application for renewal of registration has

been filed.

TITLE III

COLLECTIVE TRADEMARKS

Applicable provisions

Article 43.- The provisions of Title II shall apply to collective trademarks, subject to the special provisions contained in this Title.

Application for registration of a collective trademark

Article 44.- An application to register a collective trademark shall indicate that its subject matter is a collective trademark and include three copies of the regulations for the use of the same.

The rules for the use of the collective trademark shall specify the common characteristics or qualities

that will be common to the goods or services for which the mark shall be used, the conditions and

arrangements under which the trademark may be used and the persons who shall be entitled to use it.

They shall also contain provisions aimed at ensuring and verifying that the trademark is used in

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accordance with the rules for its use and provide for sanctions in case of non-compliance therewith.

Examination of applications for a collective trademark

Article 45.- Examination of applications for a collective trademark shall include verification of compliance with the conditions of Article 44 of this Law.

Registration of a collective trademark

Article 46.- Collective trademarks shall be recorded at the Registry and registration shall also include a copy of the rules of use for the trademark.

Changes to rules of use for a collective trademark

Article 47.- The owner of a collective trademark shall inform the Registry of any changes to the rules of use for a collective trademark.

Changes to the rules of use for a trademark shall be recorded at the Registry, subject to payment of the

prescribed fee.

Licensing of a collective trademark

Article 48.- A collective trademark may not be licensed for use by persons other than those authorized to use the trademark in accordance with the rules for use of the same.

Use of a collective trademark

Article 49.- The owner of a collective trademark may use the trademark himself, provided that it is also used by the persons authorized to do so in accordance with the rules for use of the trademark.

Use of a collective trademark by the persons authorized to do so shall be considered as use by the

owner.

Invalidity of registration of a collective trademark

Article 50.- At the request of any interested party and provided that the owner of the collective trademark registration is heard, the competent judicial authority shall declare the registration of a

collective trademark invalid in any of the following cases:

(a) The trademark was registered in contravention of Articles 8, 9 or 44 of this Law;

(b) The rules for the use of the trademark are contrary to morality or public policy.

Cancellation of registration of a collective trademark

Article 51.- At the request of any interested party and provided that the owner of the trademark registration is heard, the competent judicial authority shall cancel a collective trademark registration in

any of the following cases:

(a) the collective trademark has been used for more than a year solely by its owner but not

by the persons authorized in accordance with the rules of use for the trademark; and,

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(b) the owner of the collective trademark uses or allows use of the trademark in a way that

violates the provisions of its rules of use, or in a way that is likely to deceive business circles

or the public as to the origin or any other characteristic of the goods or services covered by

the trademark.

TITLE IV

EXPRESSIONS OR SIGNS OF COMMERCIAL ADVERTISING Application of the provisions regarding trademarks

Article 52.- Barring the provisions of this Title, the provisions regarding trademarks contained in this Law shall apply to expressions or signs of commercial advertising.

Prohibitions on registration

Art. 53.- The following may not be registered as an expression or sign of commercial advertising:

(a) Elements that fall under any of the prohibitions laid down in Article 8 (c), (d), (g), (h), (i), (j),

(k), (l), (m) or (n) of this Law;

(b) Elements that are similar to or liable to cause confusion with trademarks that are

already registered or being processed;

(d) Elements whose use in business is liable to cause confusion with regard to the goods,

services or establishment of a third party; and,

(e) Elements that fall under any of the prohibitions laid down in Article 9 (d), (e), (f), (g),

(h), (i) and (j) of this Law.

Scope of protection

Article 54.- The protection conferred by the registration of an expression or sign of commercial advertising shall extend to the expression or sign as a whole but not to its parts or components taken

separately.

Trademarks or trade names may form part of an expression or sign of commercial advertising, provided

that they have been or are being registered for the benefit of the same owner.

Once an expression or sign of commercial advertising has been registered, it shall enjoy protection

for an indefinite period; however, its existence shall depend, as the case may be, on the trademark

or trade name to which it refers.

Procedure for registering expressions or signs of commercial advertising

Article 55.- Registration of an expression or sign of commercial advertising, its amendment, assignment, licensing or cancellation shall be effected in accordance with the procedures established

for trademark registration, subject to payment of the prescribed fee. The Registry shall determine

whether the expression or sign of commercial advertising contravenes the provisions of Article 53 of

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this Law.

TITLE V

TRADE NAMES AND EMBLEMS CHAPTER I

TRADE NAMES

Application of the provisions regarding trademarks

Article 56.- Apart from the contents of this Title, the trademark standards contained in this Law shall apply to trade names, as appropriate.

Acquisition of the right in a trade name

Article 57.- Exclusive rights in a trade name shall be acquired by its first public user in business, solely in relation to the trading practice or activity of the firm or establishment it identifies.

The exclusive right in a trade name shall end with the liquidation of the firm or establishment using

such name.

If a firm has more than one establishment, it may identify them by means of its trade name.

Irreceivable trade names

Article 58.- A trade name may not consist, in full or in part, of a designation or other sign that is contrary to morality or public policy, or liable to cause confusion in business circles or the mind of the public with

regard to the identity, nature, activities, trading activity or any other aspect relating to the firm or

establishment identified by means of this trade name, or the corporate source, origin or other

characteristics of the goods or services produced or marketed by the firm.

Protection of a trade name

Article 59.- The owner of a trade name shall be entitled to bring actions against any third parties who have used in business, without his consent, a distinctive sign that is identical to the protected trade

name or a similar distinctive sign if it is liable to cause confusion or a risk of association with the owner’s

firm or with its goods or services.

The provisions of Articles 27 and 28 of this Law shall apply to the trade name, as appropriate.

Registration of the trade name

Article 60.- The owner of a trade name may request its recordal in the Registry. Registration shall be of a declaratory nature.

The term of registration of a trade name shall be indefinite and shall lapse with the firm or establishment

that uses the trade name. Registration may be cancelled at any time at the owner’s request.

Entry of a trade name in the Registry shall be effected without prejudice to the provisions relating to the

registration of traders and companies in the Register of Commerce, without prejudice to the rights

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stemming from such registration.

Procedure for registration of a trade name

Article 61.- The registration, amendment or cancellation of a trade name shall be effected in accordance with the procedures laid down by the Registry of Trademarks, as appropriate, subject to

payment of the prescribed fee. The Registry shall determine whether or not the trade name

contravenes the provisions of Article 58 of this Law.

The classification of goods and services used for trademarks shall not apply to the registration of a trade

name.

Assignment of a trade name

Article 62.- A trade name may only be assigned together with the firm or establishment which uses the trade name, or with the part of the firm or establishment that uses it.

Assignment of a trade name that is already registered or being processed shall be recorded in the

Registry, in accordance with the procedure applicable to the assignment of trademarks, as

appropriate, and shall be subject to payment of the same fee.

CHAPTER II EMBLEMS

Protection of the emblem

Article 63.- The protection and registration of emblems shall be governed by the provisions relating to trade names.

TITLE VI

GEOGRAPHICAL INDICATIONS

CHAPTER I. GEOGRAPHICAL INDICATIONS IN GENERAL

Use of geographical indications

Article 64.- A geographical indication may not be used in trade to designate a good or service if such indication is false or misleading with regard to the geographical origin of the good or service, or if its use

is liable to create confusion among the public with respect to the origin, source, characteristics and

qualities of the good or service.

Use in advertising

Article 65.- A geographical indication liable to mislead or cause confusion as to the geographical origin of such goods or services may not be used in advertising or in business literature relating to the

sale, display or offer for sale of goods or services.

Indications relating to the trader

Article 66.- Any trader may indicate his name or domicile on the goods he sells, even if these come

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from a different country, provided that the name or domicile is accompanied by a precise indication, in

sufficiently prominent characters, of the country or place the goods were manufactured or produced,

or another indication which is sufficient to avoid any error as to the true origin of the same.

CHAPTER II

APPELLATIONS OF ORIGIN

Registration of appellations of origin

Article 67.- The State of El Salvador shall be the owner of national appellations of origin, which shall be recorded in the Registry.

National appellations of origin shall be registered at the request of one or more producers,

manufacturers or craftsmen who have their production or manufacturing facility in the region or

locality corresponding to the appellation of origin, or at the request of any competent public

authority.

Foreign producers, manufacturers or craftsmen, as well as the competent public authorities of foreign

countries, may register the corresponding foreign appellations of origin, if this is provided for in any

agreement or treaty to which El Salvador is a party, or if the corresponding foreign country grants a

reciprocal agreement for appellations of origin from El Salvador.

Prohibitions on registration

Article 68.- A sign may not be registered as an appellation of origin:

(a) if it does not fit the definition of appellation of origin contained in Article 2 of this Law;

(b) if it is contrary to good customs, morality or public policy, or is liable to mislead the

public with regard to the geographical origin, nature, method of manufacturing,

characteristics or qualities, or the suitability for use or consumption of the respective

goods; and,

should be deemed common or generic if it is viewed as such, by both those familiar with

that type of good and by the general public.

It shall be possible to register an appellation of origin accompanied by the generic name of the

respective good or an expression related to that good, but protection shall not extend to the generic

name or expression used.

Registration of applications

Article 69.- Applications for the registration of an appellation of origin shall indicate the following:

(a) the designation of the authority to which it is addressed;

(b) the name, nationality and domicile of the applicant or applicants, with an indication of the

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place in which his/their production or manufacturing facilities are located;

(d) the geographical area of production to which the appellation of origin refers;

(e) the goods for which the appellation of origin is used;

(f) a brief description of the essential qualities or characteristics of the goods for which the

appellation of origin is used;

(g) a specific statement of what is requested;

(h) the exact address to which notifications are to be sent; and,

(i) the place and date of the application signed by the applicant or applicants.

Applications for the registration of an appellation of origin shall be subject to payment of the prescribed

fee, unless registration is sought by a public authority.

Procedure for registration

Article 70.- Applications for the registration of an appellation of origin shall be examined with a view to determining that:

(a) the conditions of Article 69 of this Law are met; and,

(b) the appellation for which registration is sought does not fall under any of the prohibitions

laid down in Article 68.1 of this Law.

The procedure for the examination and registration of the appellation of origin shall be governed by the

provisions regarding the registration of trademarks, the only difference being that in this case no title shall be

issued.

Granting of registration

Article 71.- The decision granting the registration of an appellation of origin and the corresponding entry shall indicate the following:

(a) the delimited geographical area of production whose producers, manufacturers or

craftsmen shall be entitled to use the appellation;

(b) the goods to which the appellation of origin shall apply; and,

shall apply, except in cases where, given the nature of the good or any other

circumstance, it is not possible to specify such characteristics.

The decision referred to in the previous subsection shall be published once only in the Official Gazette,

and the appellation of origin shall remain protected from the day after such publication.

Within a period of not more than six months from the date of publication referred to in the previous

paragraph, the applicants shall draw up and submit to the Registry the corresponding rules for the use

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and administration of the appellation of origin in question. The Ministry of Agriculture and Livestock and

the Ministry of Education shall form part of the body for administering each appellation of origin. No

authorization for the use of an appellation of origin may be granted until the said rules have been

approved by the Registry and published once in the Official Gazette.

Term and amendment of registration

Article 72.- The term of registration of an appellation of origin shall be indefinite, and shall be determined by the subsistence of the conditions giving rise thereto.

Registration of an appellation of origin may be amended at any time if there is a change in any of the

points referred to in Article 71.1 and shall be subject to the procedure laid down for the registration

of appellations of origin, as appropriate.

Amendment of registration shall be subject to payment of the prescribed fee.

Right to use the appellation

Article 73.- Use of an appellation of origin shall be subject to the granting of the corresponding authorization by the administering body, in accordance with the rules approved by the same. Such

authorization for use shall be granted if, after examination of the request and the reports or opinions

it may be necessary to obtain, it has been established that there is compliance with the requirements

stipulated by this Law, those determining its regulations, the conditions with regard to the use of the

appellation of origin in question, and in particular the following:

(a) the applicant deals directly with the production, manufacturing or craft activity

concerning the goods protected by the appellation of origin;

(b) the applicant carries out such activity within the territory covered by the appellation, in

accordance with the corresponding decision of the Registry; and,

in question in the region or locality covered by the appellation of origin for at least two

years prior to his application.

Only producers, manufacturers or craftsmen authorized to make commercial use of a registered

appellation of origin may employ in such connection the expression “APPELLATION OF ORIGIN”. The

appellation of origin shall be independent of the trademark identifying the good in question.

Authorization to use an appellation of origin shall be valid for ten years from the date on which it was

granted and may be renewed for equal terms. The user of an appellation of origin shall be obliged to use

it as it appears protected, complying with all of the regulations applicable to the same and in such a way

that there is no risk of tarnishing the appellation of origin in question; otherwise, the Registry, after a

hearing with the interested party and the body administering the appellation of origin, in accordance with

the respective regulations that must be followed as per the provisions of this Law, shall decide whether

or not to revoke the authorization.

Actions relating to the right to use a registered appellation of origin shall be brought before the

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competent courts.

The provisions of Articles 27 and 66 shall apply to registered appellations of origin, as appropriate.

Cancellation of registration

Article 74.- At the request of any interested party, the competent judicial authority shall declare the registration of an appellation of origin invalid, if it can be proven that it falls under any of the

prohibitions laid down in Article 68 of this Law.

At the request of any interested party, the competent judicial authority shall cancel the registration of

an appellation of origin if it can be proven that the appellation is used in trade in a way that does not

correspond to that which is indicated in the respective registration, in accordance with Article 71.1 of

this Law.

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TITLE VII

COMMON STANDARDS CHAPTER I

PROCEDURES

Representation

Article 75.- If the applicant or owner of an industrial property right has his domicile outside the country, he must be represented by an agent who is a registered attorney and is not subject to any of the

disqualifications referred to in Article 99 of the Code of Civil Procedure.

It shall not be necessary to present the power of attorney, designation or credential that was registered

previously when proceedings are filed with the Registry, if the respective request mentions the Registry

entry of the document accrediting the attorney.

In serious and urgent cases, so qualified by the Registrar, one option shall be the representation of an

unofficial supervisor, who is an attorney in accordance with the provisions of the last subsection of

Article 10 of this Law, provided that he gives sufficient guarantees, as certified by the said official, to

respond with the case findings if the interested party does not endorse what has been done on his

behalf.

Grouping of requests

Article 76.- A request may be made via a single petition for the recording of assignments of ownership for two or more applications being processed or two or more registrations if the assignor and the

assignee are the same in all cases. This provision shall apply, as appropriate, to the recording of

licenses for the use of the distinctive signs already registered or being processed, as with changes in

the name, company name or trade name and domicile.

Requests for the amendment or correction of two or more registrations or registration applications being

processed may be made in a single request, provided that the amendment or correction is the same in

all cases.

For the purposes of the provisions contained in the previous paragraphs, the petitioner shall identify

each of the applications or registrations to be amended, corrected or recorded.

The prescribed fees shall be paid depending on the number of applications or registrations involved.

Notifications

Article 77.- The interested parties shall be notified of all decisions and rulings issued by the Registry, albeit on a personal basis, by means of an announcement sent to the address indicated or by means of

a notice which must be sent by registered mail with acknowledgement of receipt. The deadlines shall

run from the working day following the day on which the interested party was notified.

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Intervention of interested third parties

Article 78.- Any licensee or beneficiary registered in relation to the industrial property right that forms the subject matter of the action may come forward in any proceedings relating to the

renunciation, invalidation or revocation of a registered right.

Effects of a declaration of invalidity

Article 79.- A declaration of invalidity for a registration shall be backdated to the respective registration, without prejudice to the conditions or exceptions laid down in the decision declaring the

invalidity.

If a registration for which a license for use had been granted is declared invalid, the licensor shall not be

obliged to reimburse the fees paid by the licensee, unless the latter has not benefited from the license.

Abandonment of management

Article 80.- In the absence of other deadlines specifically stipulated by this Law, applications for registration and actions taken within the purview of this Law shall be deemed abandoned and shall lapse

ipso jure if they do not follow their course within six months after the last notification made to the

interested party/parties, unless fortuitous circumstances or force majeure can be proven.

Remedies

Article 81.- The appeals specified by domestic legislation may be lodged against any decision issued by the Registry.

CHAPTER II

REGISTRIES AND PUBLICITY

Recording and publishing of decisions

Article 82.- The Registry shall record decisions relating to the invalidity, renunciation or revocation of any registration.

Consultation of registries

Article 83.- The registries of the distinctive signs referred to in this Law shall be public. Anyone may request certification from them, against payment of the prescribed fee.

Consultation of files

Article 84.- Anyone may consult the file of a registration application at the Registry Office.

Anyone may obtain certifications, records or copies of the documents contained in an application file

subject to payment of the prescribed fee.

CHAPTER III

CLASSIFICATIONS

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Classification of goods and services

Article 85.- Classification of the goods and services for which the marks are registered shall be regulated by the International Classification of Goods and Services for the Purposes of the

Registration of Marks, established by the Nice Agreement of 1957, with its revisions and updates

in force, which shall be deemed to be incorporated in this Law.

A single application or a single registration may not contain goods or services belonging to different

classes.

In the case of doubt as to the class in which a good or service should be placed, the matter shall be

decided by the Registry.

CHAPTER IV

PREVENTIVE ANNOTATIONS Request for preventive annotation

Article 86.- The following may request preventive annotation:

(a) A party who files suit for the invalidity of a registration or the ownership or license for use

of a trademark, or the ownership of a trade name, emblem or expression or sign of

commercial advertising. The competent legal authority shall issue the corresponding

communication, provided that the title whereby the petitioner claims to justify his right has

been officially recorded; and,

(b) Someone who has been assigned title or granted a license for use of a trademark, or

assigned title to a trade name, emblem or expression or sign of commercial

advertising, if the instrument by virtue of which the assignment is made or the license for

use is granted lacks a rectifiable legal formality which prevents final registration of the

right.

In both cases, the Registrar shall place in the margin of the corresponding entry an indication of the

volume and sheet from the Book of Preventive Annotations in which the annotation is recorded.

The said entry shall be subject to payment of the prescribed fee.

Effects of preventive annotation

Article 87.- Preventive annotative of the request, as stipulated in subsection (a) of the previous Article, shall invalidate any transfer subsequent to annotation, and its effects shall last until revocation is ordered

by means of a decision or enforceable judgment by the competent authority.

A preventive annotation made because of formalities lacking in the instrument shall be valid for two

months.

A preventive annotation shall be equivalent in law to registration, during the period specified in the

previous paragraph.

A preventive annotation shall become a registration if the party for whom it has been made definitely

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acquires the annotated right. In this case, the registration shall be valid from the date on which the

document was submitted.

Preventive annotation shall be invalid in the same cases as final registration.

TITLE VIII

ACTIONS AND SANCTIONS FOR INFRINGEMENT OF RIGHTS

Civil action for infringement

Article 88.- The owner of a right protected by virtue of this Law may bring civil proceedings in the competent court against any party who infringes such right. He may also take action against any party

who engages in acts that point clearly to an imminent infringement.

In the case of joint ownership of a right, any of the joint owners may bring proceedings for infringement

without securing the consent of the other joint owners, unless otherwise agreed.

Active legitimization of licensees

Article 89.- A licensee whose license has been registered may take action against any third party who commits an infringement of the right that forms the subject matter of the license. For this purpose, a

licensee who is not authorized by the owner of the right to take action shall at the outset, in order for his

action to be accredited, have asked the owner to take action and have waited for more than one month

without the owner having taken such action.

Even before this time limit has expired, the licensee may ask that precautionary measures be taken in

accordance with Articles 92 and 93 of this Law.

The owner of the right that forms the subject matter of the infringement may be officially summoned at

any time.

Any parties whose rights appear registered in relation to the infringed right shall be notified of the request.

Such parties may be officially summoned at any time.

Means of action for infringement

Article 90.- An action for infringement of the rights protected in accordance with this Law may take the form of one or more of the following measures:

(a) Seizure of the infringing goods, including the wrapping, packaging, labels, printed or

advertising matter or other materials resulting from the infringement, and the main means,

instruments and materials used to commit the infringement;

(b) Prohibition of the import of the goods, materials or means referred to in subparagraph

(a);

subparagraph (a), in which case the value of property shall be set against the amount

of the compensation for damages and harm;

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(d) The adoption of the necessary measures to ensure that the infringement does not

continue or recur, including destruction of the goods, instruments or materials referred to

in subparagraph (a);

(e) The cessation of the acts constituting the infringement;

(f) Compensation for the damages and harm suffered; and,

(g) Publication of the sentence handed down against the infringer and notification thereof, at

the latter’s expense, to all interested parties.

The competent court may order the infringer to provide information at his disposal on the persons

who participated in the production or marketing of the goods or services which form the subject

matter of the infringement and on the channels of distribution for those goods or services.

Calculation of compensation for damages

Article 91.- Compensation for damages shall be assessed on the basis of the following criteria, inter alia:

(a) the loss of earnings suffered by the owner of the right as a consequence of the

infringement;

(b) the profits that the infringer earned as a result of the infringement; and,

consideration the commercial value of the infringed right and any contractual licenses that

would have been granted.

Precautionary measures

Article 92.- Any person who institutes or intends to institute proceedings for infringement of the rights flowing from registration may ask the competent authority to take immediate precautionary measures

with a view to preventing the infringement from being committed, avoiding its consequences, securing

or preserving evidence or ensuring the effectiveness of the action and the recovery of damages and

harm.

The precautionary measures may be requested before the action for infringement is brought, in

conjunction with it or after it has been brought. If the measures are executed before the action is

brought, they shall automatically become invalid if the action is not brought within 15 working days

starting from the execution of the measures.

The precautionary measures may only be ordered if it has been established that the infringement has

been committed or is imminent by means of proof which the competent authority deems sufficient. The

authority may ask the person requesting the precautionary measures to provide sufficient security.

The following precautionary measures, inter alia, may be ordered:

(a) the immediate cessation of the acts constituting the alleged infringement;

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(b) the seizure with inventory, description or deposit of the goods, packaging, labels or

other materials bearing the sign that is the subject matter of the infringement and of

the main instruments or materials used to commit the infringement;

in subparagraph (b);

(d) the provision of a security or another guarantee of payment in the case of possible

compensation of damages and harm by the alleged infringer; and,

(e) the communication by the alleged infringer of the information in his possession on the

persons who participated in the production or marketing of the goods or services

which form the subject matter of the presumed infringement and on the distribution

channels for those goods or services.

Confiscation of the goods and instruments of the infringement

Article 93.- The precautionary measures that must be taken at the border shall be executed by the customs authorities when the goods, instruments or materials that form the subject matter of the

infringement are imported or exported.

Goods bearing illicit distinctive signs, advertising material referring to such signs and the instruments or

materials used to commit an infringement shall be detained or seized by the competent customs

authorities or the police pending the outcome of the corresponding proceedings.

Actions against undue use of geographical indications

Article 94.- Any competent authority or interested party and in particular producers, manufacturers, craftsmen and consumers may take action, individually or jointly, for any effect relating to compliance

with the provisions of Articles 64 and 65 of this Law.

Prescription of an action

Article 95.- Any civil action against an infringement of the rights conferred by this Law shall be barred two years after the owner was informed of the infringement, or five years after the last infringement, whichever

comes first.

Suspension or imports or exports

Article 96.- The owner of a right protected by this Law who has reasonable grounds for supposing that the import or export of goods infringing this right is imminent may ask the competent judge to order

without delay the customs authorities to suspend such imports or exports at the time of their dispatching,

where appropriate. The conditions and guarantees applicable to precautionary measures shall apply to

this request and to any order issued.

Once the applicable conditions and guarantees have been met, the judge shall order or refuse the

suspension and shall notify the petitioner accordingly.

Any person requesting border measures shall provide the customs authorities with the necessary information

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and a description of the goods to which the alleged infringement relates that is sufficiently detailed and

accurate for them to be easily identified and recognized.

Once suspension has been executed, the customs authority shall immediately notify the importer or

exporter of the goods and the requesting party of the measure.

Term of suspension

Article 97.- If the action is not brought within 10 working days following the imposition of the measure contained in the previous paragraph, it shall automatically become invalid, leaving the party subject to

the provisions of the last subparagraph of this Article. If due justification is provided, that period may be

extended by ten additional working days.

When the suspension is ordered as a provisional measure, the deadline laid down for such measures

shall apply.

Once the substantive stage of the legal proceedings has begun, the party affected by the suspension

may petition the judge to review the suspension that has been ordered and shall be heard for this

purpose. The competent judge may amend, revoke or confirm the suspension.

The party requesting border measures shall be liable for any damages and harm stemming from

their execution if the measures are lifted or revoked owing to an action or omission by the applicant,

or at a later date if it is established that no infringement of an industrial property right was committed

or was imminent.

Right of inspection and information

Article 98.- Without prejudice to the protection granted to confidential information, the competent judge who orders the border measure may give the party requesting the measure free access to the

merchandise or goods detained so that he may inspect them and obtain additional evidence to

substantiate his allegations. The importer or exporter shall have the same right. This measure shall be

taken in the presence of the respective competent judge, and the opposing party shall also be

summoned.

If it can be established that an infringement has occurred, the plaintiff shall be given the name and address of

the shipper, importer or exporter and the consignee of the merchandise and the quantity of goods covered by

the suspension.

Measures to combat counterfeit goods

Article 99.- Goods bearing counterfeit trademarks which have been impounded by customs authorities may not, barring exceptional circumstances, be re-exported in the same state or subjected to a different

customs procedure.

TITLE IX

UNFAIR COMPETITION

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General clause

Article 100.- Any act performed in the course of business activity or for that purpose, that is contrary to proper usage and practice, shall be considered unfair.

For the purposes of this Law, an act shall be considered to have effects on the market regardless of

the means employed to realize it, including electronic communication and business media.

The application of the provisions of this Law shall not depend on the existence of a competitive

relationship between the person committing the act deemed unfair and the person affected by that act.

Acts of unfair competition involving industrial property

Article 101.- The acts or behavior defined by this Law shall not be deemed exhaustive, and any act or behavior which, even though it is not included in this Law, is deemed unfair in accordance with the

previous Article shall be prohibited.

The following shall inter alia constitute acts of unfair competition:

(a) acts capable of creating confusion or a risk of association as to the goods,

services, firm or establishments of a competitor;

(b) the use or spreading of false assertions or allegations capable of denigrating or

discrediting the goods, services, firm or establishments of a competitor;

when this is liable to be misleading as to the origin, nature, method of manufacture,

suitability for use or consumption, quantity or other characteristics of one’s own goods

or services or those of a competitor;

(d) use of a good marketed by a third party to mould, trace, copy or slavishly reproduce this

good in some other way with a view to exploiting for commercial purposes the results of

the competitor’s strength or prestige;

(e) use as a trademark of a sign whose registration is prohibited under Article 8 (g), (h), (i),

(j), (k), (l), (m), (n), or (o) of this Law;

(f) use of a sign in business whose registration is prohibited under Article 9 of this Law;

and,

(g) use of the appearance, packages, containers, wrapping or decoration of goods and

establishments when these are characteristic and liable to create confusion with those of

a competitor.

Action against an act of unfair competition

Article 102.- Without prejudice to the provisions of the following subsection, any interested party may ask the competent court to determine and declare the unlawful nature of an alleged act of unfair

competition.

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Any interested party may bring an action for an act of unfair competition. In addition to the person

directly harmed by the act, any association or organization representing a professional or corporate

sector or consumers may bring an action if the interests of their members are affected.

The provisions of Articles 88, 89, 90, 91, 92 y 94 shall apply, as appropriate, to commercial or criminal

actions brought for acts of unfair competition. The relevant provisions of common law relating to the

unlawful act shall also apply.

Prescription of action for unfair competition

Article 103.- Actions for unfair competition shall be barred two years after the act of unfair competition was brought to the owner’s attention, or five years from the last instance of unfair competition,

whichever comes first.

TITLE Х

INDUSTRIAL PROPERTY REGISTRY

CHAPTER I GENERAL PROVISIONS

Powers of the Registry

Article 104.- The administration of industrial property for the purposes of this Law shall be the responsibility of the Intellectual Property Registry, which is a branch of the National Registry Centre. The

Intellectual Property Registry shall be headed by a Director who is an attorney and notary, and shall also

be staffed by auxiliary Registrars who are also attorneys and notaries.

Conflicts of interest

Article 105.- Neither the Director for Intellectual Property nor the staff under his orders may deal directly or indirectly with the Registry on their own behalf or on behalf of third parties.

Registry officials and employees shall observe strict impartiality in all of their dealings.

Any breach of the provisions of this Article shall be punishable in accordance with the law.

CHAPTER II

REGISTRY MANAGEMENT

Books

Article 106.- The Registry of distinctive signs shall be kept in the form of books or in any known or future electronic form.

Access to Registry documents

Article 107.- The books or other media in which entries are made may not for any reason be removed

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from the Registry offices and any judicial or administrative enquiry shall take place there, in the

presence of an official designated by the Registrar. The aforegoing shall be without prejudice to the

provisions of Article 48 of the Law on the Jurisdiction for Administrative Disputes.

At the request of an interested party, the Registrar may return to the same a document that the person

submitted to the Registry if it is not necessary to retain the document for the proceedings in question.

Before the document is returned, the corresponding photocopy shall be made at the interested party’s

expense, duly compared with the document to be returned, and placed on file.

CHAPTER III

CORRECTION OF REGISTRY ENTRIES

Corrections

Article 108.- The Registrar may correct or cause to be corrected under his responsibility any omissions or material errors committed in the entries made in the Registry Books, if the documents on which the

respective registration was based are still to be found in the office.

A material error shall be deemed to have been committed if certain words are written in the stead

of others, or if mistakes have been made with regard to proper names, company names or trade

names, or quantities.

If the Registrar notices the material error or omission after the documents or titles have been returned to

the interested party, he may only make the correction if he summons the party to present the documents or

titles at the Registry in order to determine that they have not been altered in any way. Such corrections

may also be requested by the interested party.

The correction shall be made by means of a new entry or an annotation and shall not entail any costs

for the interested party.

TITLE XI

FEE SCHEDULE

Industrial property fees

Article 109.-

a. Application for registering a trademark $CA. 100.00

b. Application for registering a trade name, emblem, commercial advertising expression or sign, or

appellation of origin $CA. 75.00

c. Renewal of a trademark registration, in each class: $CA. 100.00

d. Surcharge for renewal during the grace period in the first month: 30 per cent

- after the first month: 100 per cent

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e. Application for recording a cancellation of registration or a reduction or voluntary limitation of

the list of goods or services: $CA. 20.00

f. Application for entering a correction or change in the rules of the trademark, transfer,

license for use, change in name or domicile: $CA. 30.00

g. Dispatching of a duplicate registration certificate: $CA. 15.00

h. Replacement of a sign:

- if the error or loss cannot be attributed to the Registry $CA. 15.00

i. Entering of a preventive annotation: $CA. 5.00

j. Literal certification of an entry: $CA. 10.00

k. For every proof or certification of a document: $CA. 10.00

l. Copy of a document: $CA. 5.00

m. Request for division of registration: $CA 20.00

n. Literal certification of a file: $CA. 30.00

o. Search for owners of trademarks and other distinctive commercial signs already registered or

being processed: $CA. 100.00

p. Prior art search for trademarks and other distinctive commercial signs already registered or being

processed: $CA. 20.00

All of the services provided by the Registry shall be subject to payment of the prescribed fee. The State

and the municipalities shall be exempted from paying registration fees.

TITLE XII

COMMON AND TRANSITIONAL PROVISIONS AND TERMS

Applications and actions being processed relating to distinctive signs

Article 110.- -Any application or proceedings pending in the Registry and actions already brought by the date this Law went into force shall continue to be processed in accordance with the legal system in force

prior to this Law.

Registrations in force Article 111.- Well-known distinctive sign: any distinctive sign that is known to the general public, either inside or outside the country;

Objections to renewal of registration

Article 112.- Before granting the renewal of the registration of a trademark registered before this Law went into effect, the Registrar shall publish a notice in the Official Gazette, three times over a period of

30 days and at the applicant’s expense, so that any interested party may, during the two months

following the date of the first publication, object to the said renewal, based on the grounds set out in

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Article 8 (g), (h) and (k), and Article 9 (d), (e) and (f). This shall also cover the case where the opponent

filed an application before the request for registration of the said trademark, in any country, in which it

has moreover become famous. If proof of the above can be provided, the application for renewing the

registration shall be rejected.

Such actions shall take the form of summary proceedings before the competent courts.

For such purposes, the interested party shall provide proof of the presentation of the request by means of

a stamped and dated copy of the same, which he shall submit to the Registry in the 15 days following the

filing of the objection.

Competent courts

Article 113.- Whereas no special courts with jurisdiction in intellectual property matters have been set up, the competent courts referred to in this Law are those that have jurisdiction in commercial matters,

which shall be dealt with by means of summary proceedings.

Rules

Article 114.- The General Rules of this Law shall be issued by the President of the Republic in the 90 days following its entry into force.

Purpose of the headings

Article 115.- The headings introducing the articles of this Law shall be solely indicative in nature, and shall therefore have no effect with regard to the interpretation of the provisions of this Law.

Repeal

Article 116.- This Law repeals:

(a) sections “B” y “C” of Chapter II, Title I, Book Three of the Code of Commerce; and,

(b) any provision which is contrary to this Law.

Entry into force

Article 117.- This Law shall enter into force eight days after its publication in the Official Gazette.

DONE AT THE LEGISLATIVE PALACE, San Salvador, on the sixth day of the month of June of the year

two thousand two.

El Salvador

SV020

Law on Trademarks and other Distinctive Signs