Trademark registrations

Requirements to submit a trademark application in Paraguay: 

• Power granted by the applicant, certified by a Notary Public or similar authority. It can be submitted within 60 days of the application date. Legalization is not necessary for administrative purposes. 
• Full name and address of the applicant. 
• Brand name (word) and design, if any. 
• Ten copies of the design (if any) for each application. It can be sent by email. It is requested to be in colors if they must be claimed. 
• Description of the products, products or services to be protected or of the corresponding international class. For service trademarks, it is mandatory to identify precisely the services to be protected. 
• The priority of a trademark application can be claimed in accordance with the Paris Convention. It is not mandatory to present the document that accredits the priority when submitting the trademark application.

  Observations:

• An application or registration must be submitted for each class. 
• A trademark registration is granted in approximately twelve months, if there are no objections or opposition. Registrations are valid for ten years from the granted date and can be renewed indefinitely. 
• A brand renewal is granted in approximately six to eight months. The renewals are valid ten years from the expiration date of the previous registration. The grace period to submit the renewal application is six months after the expiration date. Proof of use is not required for renewal purposes. 
• The new Trademark Law provides for the possibility of canceling a trademark based on a non-use period of five years. The use of the brand in at least one product or service is sufficient to avoid cancellation. The use of the brand in any country is also sufficient to avoid cancellation. 
• Paraguay adopts the eighth edition of the International Classification of Goods and Services established by the Niza Agreement. Trademarks previously classified in accordance with the 7th edition of the Niza Agreement will be reclassified at the time of renewal. It is possible to claim all products covered by a class for product classes without specifying the products. It is not possible to claim all the services of a class, it is mandatory to specify in detail the services to be protected. If the product is mentioned in the denomination or on the label, the application is automatically limited to that product.

  Acts: 

• Prepare and file the application. 
• First form test (for approval of the application). 
• Second form test (to authorize publication). 
• Publication in a local newspaper for three business days. 
• Deadline to submit oppositions: 60 business days after the last publication. 
• If there is no opposition to the trademark application, a thorough examination is carried out by the Trade Mark Examiner. 
• If the Trademark Examiner does not raise objections, the Head of Trademarks will conduct a Third Exam or Control. 
• A fourth and final test is performed by the Secretary of the Trademark Director before granting the registration. 
• The General Secretary of Trademark Office grants a registration number and issues the Certificate. 
• The Director of the Trademark Office signs the Registration Certificate.

Brand License

The owner of a trademark may grant a license to a third party or a local subsidiary to use all or part of the products or services protected by the brand. The agreement must be registered with the Trademark Office to have legal effects against third parties.

  Requirements:

The application for registration with the Trademark Office must be accompanied by a copy of the license agreement or an extract written in Spanish or translated into Spanish. The document must be signed by the licensor and the licensee and must be legalized by the Consulate of Paraguay if it is signed abroad.

• The application for registration can be submitted by the licensor or the licensee and must be published in a local newspaper. 
• The agreement must establish the quality control of the brand owner in relation to the products or services that are licensed. Our Firm can provide License Agreement forms. 
• An excerpt from the license agreement must contain at least the following information: name and address of the licensor and the licensee, purpose of the contract and marks to be licensed, clarification of whether the license agreement is exclusive or not, the term of the license agreement License and quality control established.

Assignments

  The right over all or part of the products or services of a registered or requested trademark may be assigned to a third party. Registration of the assignment is mandatory.

  Requirements:

• The assignment document must be registered with the Trademark Office to be effective against third parties. The assignment request must be published in a local newspaper. 
• The assignment request must be accompanied by a copy of the assignment document written in Spanish or translated into Spanish. The document must be signed by the transferor and the assignee and must be legalized by the Consulate of Paraguay if it is signed abroad. Our Firm can provide assignment forms. 
• The assignment can be done without assigning the goodwill of the brand.

The Change or Merger Name

  The Change or Merger Name must be registered in the Trademark Office.

  Requirements:

• Certificate or document stating the change of name or merger, issued by the competent authority in origin and legalized by the Consulate of Paraguay. 
• Power of the new company, legalized by the Consulate of Paraguay.

Change of address

  For the registration of a change of address with the Trademark Office, a certified promise must be submitted indicating the new address to communicate the change.

Oppositions and cancellation actions

• An opposition may be filed against a trademark within sixty (60) days after the last publication of the application, based on a registered trademark registered in Paraguay. It is also possible to file an opposition on the basis of a trademark registration or a previous application in another country. Under the Paris Convention, protection is also granted to known brands. 
• In case we do not have a power of the opponent, we can present the opposition with a power of fax. The Notary Public Power must be presented within sixty (60) days after the date of presentation of the opposition. 
• If the term for filing the opposition has expired, a cancellation action may be filed with the Civil Court of First Instance against a trademark or registration application. This requires a special Special Power legalized. Our firm can provide the power of attorney form. 
• The requirement to register a cancellation action against a trademark registration is 5 (five) years from the date of grant. However, if registration is obtained in bad faith, the prescription will not apply (Paris Convention).

  Invention patents and utility models

  Requirements: 

• Legal power certified by a Public Notary. 
• Full name, address and nationality of the applicant and of the inventor (s). When the applicant is not the inventor, no assignment document is required. 
• Title, specifications, claims, summary and drawings (if any).

  Observations: 

• The translation of the specifications can be done by us. 
• Priority can be claimed within one year (Paris Convention). 
• No assignment is necessary even if the applicant is not the inventor. 
• Pharmaceutical and medicinal compositions can be patented. 
• The validity is twenty years from the date of application. 
• The validity of the Utility Model Patents is ten (10) years from the date of application.