SAPI takes controversial action to tackle trademark backlog

The Venezuelan IP Agency (SAPI) has officially requested that trademark owners and applicants with pending trademark decisions confirm their interest in continuing proceedings

Despite the questionable legality of this procedure, the SAPI has justified this by claiming that it will optimise the registration process

It is hoped that the action will help alleviate the backlog of cases awaiting a decision

On 12 November 2018 and for the second time, the Venezuelan Intellectual Property Agency (SAPI) published an official request that trademark owners and applicants with pending trademark decisions confirm their interest in continuing proceedings. This ratification must be filed in connection with pending appeals, cancellation and annulment actions only. Over 20,000 cases are pending, some for over 20 years. The SAPI made the same request in 2016 for opposition proceedings, with the aim of reducing the well-documented backlog of contentious decisions with regard to trademarks and patents.
The legality of this procedure is questionable, although the SAPI justifies it by claiming that its intention is to optimise and streamline its backlog of pending cases. The action came into force on 14 November 2018. Interested parties have two months in which to file a written statement reafirming their interest in proceedings in order to obtain a 􀂡rst decision (or second, in the case of pending appeals).
This opportunity will expire on 14 January 2019 without any extension or grace period. Despite the arguable validity of this action, the SAPI published a list of pending proceedings. Interested parties must file a written statement in order to avoid an ex officio dismissal of their case. This action has the potential to cause confusion, as:

it is a unique process with no international reference for comparison;

many of the trademark portfolios involved could have changed ownership over time, making it difficult to obtain timely answers; and

changes in law firms handling trademark portfolios complicate the reporting of relevant events.

However, it is hoped that this action will lead to positive results and improve the level of trust throughout the IP community with regard to improving the SAPI’s services. In Bulletin 589 published on 30 November 2018, the SAPI referred to its publication of opposition decisions in cases that were ratified in 2016. Further, it carries out a registrability test in regard to proceedings that were not ratified. It can be concluded that the process could bring positive results in the mid-term.

This article first appeared on WTR Daily, part of World Trademark Review, in December 2018. For further information, please go to www.worldtrademarkreview.com.