|October 25, 2012|
In Honduras, according to article 84 of the Intellectual Property Law (Industrial Property Law) an opposition can be filed even if the applicant has not used the mark in the country, as long as the mark has been used and promoted extensively in other countries.
Article 84 section 2 of the Honduran IP Law states that the mark intended to be registered must be for the same products or services or for different services, if it is associated or related with those that the used mark distinguishes.
Thus, if the mark either distinguishes the same products or services or if it distinguishes different services, which are evidently associated or related with those that the used mark distinguishes, an applicant that has not used the mark in the country is entitled to oppose the use of mark which is undergoing the registration process.
In order to file the opposition, the client must provide the law firm the following information:
a) Which products or services are distinguished by the mark
b) Power of attorney
c) Trademark certificate /s ( of all the countries in which the mark has been registered)
d) Documents that confirm the existence of the owner of the trademark (ID or passport if an individual or articles of incorporation or certificate of existence of company if it is a company)
It is also important to be acknowledged that if the trademarks used abroad have been registered within a period of 6 months prior to the current opposition process, the mark may be registered invoking “priority status”. If that is the case, the registry of the other mark will be denied. Thus, the law provides an alternative way to oppose the other party’s intention to register the mark.
Clients must be aware that all documents coming from abroad must come duly authenticated or with Apostille of the Hague Convention and translated to Spanish in order to be filed effectively in Honduras.-