By: Luis Antonio Jaimes

The Marks Classification System in Venezuela. Analysis of its application in the process of renewal of trademark registrations

Humans have always tried to find the order of things to facilitate our work and from time immemorial one of the ways used has been to classify things. Regarding Industrial Property, it has been established a system of classification of goods and services that is mandatory for purposes of registration of marks.

While this classification system for trademark registrations is required in most countries, we will broadly address the Venezuelan regime, that is complex and with a rather interesting historical evolution.

Historical evolution of the Venezuelan classification system

In 1877, the Trademarks Act was the first Law to regulate the matter of Industrial Property; however, it was not until its Regulatory Resolution in 1920 that it was established the Official Classification of goods, activities or services, setting forth 50 classes. In 1927, the Law was reformed and the said Resolution remained in force until 1929 the Regulation of the Trademarks, Commerce and Agriculture Law (name at the time) was issued, including the Official Classification without any modification. In 1955, the Official Classification obtained a legal rank, upon the entering into force of the Industrial Property Law that repealed the Law of 1927.

In 1973, Venezuela joined the Cartagena Agreement and became part of the Andean Community of Nations (CAN). Several Decisions (85, 311, 313, 344 and 486) arose in the subject of Industrial Property; however, only Decisions 344 and 486, known as the Common Regime on Industrial Property, were effectively applied in Venezuela. These Decisions took precedence over national legislation, so in 1993, when Decision 344 was published, the Industrial Property Law of 1955 became a supplementary law and the National Classification System was repealed by the mandatory use of the International Classification of Nice. This criterion was maintained in decision 486 of the year 2000.

In 2006, Venezuela denounced the Cartagena Agreement, which implied its departure from the CAN. However, the CAN regulations continued to apply until 2008, when the Venezuelan Service of Industrial Property (SAPI) reinstate the application of the Industrial Property Law of 1955 by Official Notice. This position involved several doctrinal discussions about whether the International Classification of Nice should continue to be applied or not; however, the SAPI never ceased to apply it and from that moment on, the standard is the simultaneous application of the international and national classifications.

Even so, we ask ourselves what is the legal basis for continuing its application. In this sense, we can assert that since Venezuela belongs to the Common Market of the South (MERCOSUR) it is bound to apply the International Classification pursuant to MERCOSUR regulations which are directly applicable in accordance with the National Constitution (Article 153).
At the moment, SAPI’s online system (WEBPI) is adapted to carry out trademark registrations in the International Classification and its equivalent in the national class; nevertheless, the certificate of trademark registration issued thereupon only refers to the relevant international class.

It is important to know what these two classification systems include:

1. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification)
It was concluded in 1957 and establishes a classification of goods and services for the purposes of registering trademarks and service marks. This is the main classification system. Venezuela was never a party to the Nice Agreement concerning the international classification of products and services for the purposes of the registration of marks, but its application became mandatory upon Decision 344, Decision 486 and currently, for being a state member of MERCOSUR. In the process of registration of a mark with the SAPI, applicants must indicate the classes including the products and services which registration is sought.

In order to comply with the above, the Nice classification consists of: 45 classes, 1 to 34 for products and 35 to 45 for services. This classification system is constantly updated thanks to the Committee of Experts who decide all the changes that must be made. To date, they have made 11 editions, the last coming into force in January 2017.

2. The national classification:
Established in Chapter XIII of the Industrial Property Law, it includes 50 classes. It is important to note that in 2012, the SAPI published an Official Notice for purposes of complying with the particular Venezuelan classification system (international – national) intending to ease the mark registration process by providing the public with a table that contains the national classification and its equivalence with the Tenth Edition of the Nice Classification, as used by the SAPI staff.

In the process of renewal, what is the implication of the Venezuelan classification system? In the next article, we will address this issue. If in doubt, contact a qualified legal representative.

Sources:

Logo image created by Creativeart – Freepik.com
El Régimen de la Propiedad Industrial, Hildegard Rondón de Sansó, Caracas (1995).
La Situación Actual de la Propiedad Industrial (Venezuela – noviembre de 2008), Hildegard Rondón de Sansó, Caracas (2008).
Avances en la Aplicación de Tratados Internacionales de Propiedad Industrial en Venezuela, Ricardo Enrique Antequera, Caracas (2016).
Articles from the World Intellectual Property Organization website
Summary of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957) http://www.wipo.int/treaties/es/classification/nice/summary_nice.html
About the Nice Classification: http://www.wipo.int/classifications/nice/es/preface.html