A new Process for Geographical Indications in Venezuela

By Esther Bergel and Ricardo E. Antequera

March, 2021. Through a decision effective as of December 28, 2020, the Venezuelan Trademark Office (SAPI) has formally stated a new procedure for the granting of Geographical Indications in the country.

The legal ground for this new procedure is the TRIPS Agreement, particularly, its Part II – Section 3, related to harmonization of regulations of Geographical Indications.

SAPI stated that this new procedure is available for products from some region or locality within the territory of Venezuelan, and when their characteristics, reputation or quality is sufficiently supported that are due to its geographical origin.

Geographical Indications may be applied either by public or private entities, producer associations, or any other forms of organization recognized in Venezuela. However, independent producers, even if they are not linked to the entity who owns the Geographical Indication, will have the right to use it as long as they comply with the approved regulations and they are authorized by SAPI.

The new procedure can summarized as follow:

An application form must be fulfilled and submitted with the following information:

Name and address of the applicant supporting their legal interest in the protection of the Geographical Indication;
Name of the Geographical Indication;
Description of the product, including the specifications according to national and international quality standards;
Description of the process for production or obtaining the product, along with an indication of the place and the phases of production;
A Project regulating the use of the requested Geographical Indication.
A proposal for the incorporation of a Regulating Entity for the Geographical Indication capable of certifying and verifying that the products being the same identification comply with their minimum standards.

Regarding the project regulating the use of the requested Geographical Indication, it specifies it must contain these elements:

Name of the entity or collective filing the request, including their domicile.
Purpose of the organization.
Full description of the Geographical Indication requested.
Internal approval of the project regulating the use by the requesting party.
Requirements and conditions issued by the organization that producers need to comply with for the approval of the Geographical Indication.
Definition, categorization/classification of the product that will be identified with the Geographical Indication.
General product description of the product, including characteristics and mandatory requirements in order to comply with their quality control regulations.
Precise detail of the link between the geographic origin with quality, reputation or any relevant characteristic which differentiates the product.
Description of the production, manufacture or process required for the final product, including location indication of where all stages will be carried out.
Origin of all raw materials for the product.
Precise delimitation of the geographic zone for production.
Indication of any legal requirement that the product must comply with, method of manufacture, packaging, storage and labeling.
Requirements and any other conditions for the use of Geographical Indication by their holders.
Supervision and verification mechanisms for the use of Geographical Indication.
Penalties for the improper use of Geographical Indication (considering due process rights of any party).
Any other requirement by SAPI.

Additionally, it is also established that since TRIPS does not have a specific procedure for providing these statements, SAPI shall analyze all requests for the protection of Geographical Indication following the procedures for trademark applications established in the current Industrial Property law and the Law for Administrative Procedures, after which, once rejected or approved, it shall be published on the Intellectual Property Gazette.

On the other hand, the product having an approved Geographical Indication shall identify the zone or territory with the phrase “PROTECTED GEOGRAPHICAL INDICATION” or “PGI” next to the SAPI name or logo.

It is also established that costs shall be the same provide for trademarks, but that costs for technical studies in order to verify requirements and conditions for Geographical Indications shall be separate and paid by applicants, according to the public or private entities determined by SAPI for the evaluation of these requirements.

SAPI shall also establish periodical mechanisms for quality control and traceability that allow for verification and guaranteeing the origin of the products and keeping their original qualities.

It is to celebrate that SAPI continues their efforts for harmonizing the Venezuelan Intellectual Property system to international standards, despite having a law dating back to 1955 and that does not conform to international developments in the last 60 years.

In 2016, SAPI had used requirements used in international treaties in order to ratify the validity of geographical indications in Venezuela, and that was highlighted in our blog.

More recently, last October 2020, SAPI itself had declared the applicability of international treaties entered into by the country regarding Intellectual Property, in particular TRIPS and the provisions of Paris Convention for the Protection of Industrial Property.

Finally, we must interpret that even though this resolution contains all the elements which might considered by academics and comparative law to configure a Denomination of Origin, and although neither the Industrial Property Law nor TRIPS establish this particular category, we understand we must formally classify it as a Geographic Indication, which is indeed formally included in TRIPS.