How to Register a Trademark in Guatemala

In Guatemala, the institution responsible for trademark registration is the Intellectual Property Registry. Before protecting the design and name of a trademark, it's important to identify which type and class it falls under. Registering a trademark can take 8 to 10 months and involves a series of steps, requirements, and expenses, which are detailed below.

STEPS AND REQUIREMENTS TO REGISTER A TRADEMARK IN GUATEMALA:

1. Seek legal advice from lawyers in Guatemala Brand experts.

   During the process, you will need the professional assistance of Lawyers in Guatemala, who will advise and accompany you throughout the trademark registration process.

2. Retrospective search for the existence of the trademark to be registered.

   This search is optional; however, it is important to ensure the brand's registration. That is, investigate whether the brand has not yet been registered by someone else and avoid future contingencies.

3. Publication of Edict.

   It consists of making the trademark registration public with a specific name and design so that any interested party can object to the registration. This means that in this phase, there is a possibility that a third party may file an objection, which allows opposition to the trademark registration if the third party believes they are affected. The opposition has a procedure entirely separate from the trademark registration procedure, which is suspended until the aforementioned opposition is resolved.

4. Trademark registration application.

   Once availability is verified, it is then advisable to apply for its registration. It is important to mention that once the registration application is submitted, you will have priority rights over the trademark. This means that if someone else attempts to register the trademark later, the person who applied first will be preferentially protected. In Guatemala, the entity responsible for registering and inscribing a trademark is the Intellectual Property Registry, located at 7a. Avenida 7-61 zone 4, Guatemala City. The following information and documents will be required for this application.

   • Applicant's general information: Name (can be a Corporation), profession or occupation, nationality, residence, and address.
   • Appointment or DPI: Copy of the applicant's Personal Identification Document (DPI). If the applicant is a Corporation (Sociedad Anónima), a copy of the Legal Representative's appointment is required.
   • Brand Activity: description of the service, activity, or product that supports the brand.
   • Design: (logo, logomark, etc.) of the brand. In PNG format.

5. Title issuance.

   Once the publication has been made, you can request the issuance of the title and its registration in the corresponding book. This title ensures that third parties who do not have the owner's authorization cannot use signs identical or similar to the registered trademark.

   

TYPES OF BRANDS IN GUATEMALA.

Before starting a trademark registration in Guatemala, it is important to frame the type of trademark you intend to register to ensure effective protection. Currently, there are 4 types of trademark registrations in Guatemala:

• 3D Mark

  Distinctive signs composed of a body with volume and therefore occupying the three dimensions of space: height, width, and depth.

• • Examples:

• Mixed

  Composed of figurative and denominative elements. Any drawing or design that may exist on the label, the word or design that may accompany the brand, the brand itself, the design (including colors), the font style, and also the combination of these elements can be protected.
  • Examples:

• Advertising Sign

  Legend, advertisement, phrase, word combination, design, engraving, or any other similar medium, as long as it is original and characteristic, that is used for the purpose of attracting the attention of consumers or users to one or more products, services, companies, or commercial establishments.
  • Examples:

“We love to see you smile

“JUST DO IT

• Word Mark:

  Composed of pronounceable expressions, with or without meaning. This type of mark does not have any distinctive or graphic design.

• Trade Name:

  Denominative or mixed mark, by which a company, a commercial establishment, or an entity is identified and distinguished. Like the previous one, this does not require any distinctive or graphic design.

How to know if a brand is registered in Guatemala?

In Guatemala, it's very common for business owners and entrepreneurs not to prioritize registering a trademark or trade name. As a result, there are multiple cases where after many years of owning a company, the entrepreneur finally decides to register the trademark, and upon requesting registration, they realize that someone else has already registered it. The consequence is that the law prohibits using a trademark that belongs to someone else, and otherwise, you can be sued for damages. If you're still in time to protect your brand, we recommend that you first conduct a retrospective search, which is explained below.

The Retrospective Search.

Retrospective search is an investigation carried out in the Intellectual Property Registry and is recommended before registering a trademark. This is for the purpose of determining whether a brand is available or not for registration, according to the chosen design and name. The results of this search reflect if someone else has already registered that trademark, in which case it can no longer be registered by anyone else. The results of this search also reflect the probability of success that a trademark, trade name, or advertising sign registration may have.

Determinants in a Retroactive SearchOSPECtiva.

In our legislation, specifically in the Industrial Property Law (Decree 57-2000), everything related to the registration of trademarks and intellectual property is regulated. Said regulations contemplate the bases and guidelines, which without a doubt must be taken into account to make a successful trademark registration possible. Therefore, when conducting a retrospective search, it must contain a technical-legal analysis based on the law and take into account the following aspects.

• Based on the products or services to be protected, determine which class the chosen distinctive sign belongs to, according to the Nice Classification, which details the classification of trademarks according to the service or product that the trademark supports.
• Ensure that the name and design of the brand you wish to register are sufficiently distinctive (original) to increase the chances of registration. This means the brand should not be identical or similar to one already registered. Consider that using references to already registered brands should be avoided, as it diminishes the distinctive factor.
• That the trademark you intend to register is not contained within legal prohibitions, such as:
  • That it be contrary to morality or public order.
  • That may cause deception or confusion about the geographical origin or culture,
  • To reproduce or imitate, in whole or in part, the shield, flag, symbol, or emblem of a State. .
  • That it reproduces legal tender coins or bills.
  • Among others...

Recommendation.

Undoubtedly, the logo or design that represents a company's service or product is of utmost importance, as over the years, said product or service gains prestige and represents a strong asset for the company. This is why it is recommended that a trademark registration be done as soon as possible and that, consequently, you perform the corresponding retrospective search to ensure the results of the trademark registration and protection.

SIMILARITIES AND DIFFERENCES BETWEEN BRAND AND TRADE NAME.

Before registering a trademark in Guatemala, it's important to know the difference between it and a trade name, as it's common for them to be confused in the field of intellectual property. Before explaining the difference between one and the other, it's important to describe the definition of a trademark:

«Any sign that is capable of distinguishing the products or services produced, marketed, or provided by one individual or legal entity, from other identical or similar products or services produced, marketed, or provided by another.

The importance of this definition lies in avoiding confusion between a brand and a trade name. Knowing what each protects helps us make a better decision about which of the two to choose. As a first point, it is necessary to indicate the Similarities between brand and trade name

• They are subject to protection and registration in the Intellectual Property Registry.
• They are constituted as industrial property and grant rights to the owner upon registration, protected by a patent (a title granted to a person concerning an invention).
• They are the product of human intellect and the objective is to guarantee the economic activities of industry and commerce against unfair competition.

Regarding the differences Our first point is the concept, because unlike the brand, the trade name aims to identify «a company, business establishment, or entity. However, as stated at the beginning of this article, a trademark is intended to protect products or services produced, marketed, or provided by an individual or legal entity. In this line of reasoning, if what is intended to be protected, for example, is the creative design printed on a popular consumer product or the logo that identifies a restaurant's service, what should be registered is a brand. On the other hand, the Trade Name is limited solely to identifying the name of a company or establishment. In other words, the name that reflects the Business Patent.