October 25, 2012
1. Honduras Registry of Cross- Border measures The registry of cross-border measures is a registry created by International Treaties regarding Intellectual Property (IP) and it is currently managed by the Treaty Administration of the Income Executive Department (in Spanish, Administración de Tratados de las Dirección Ejecutiva de Ingresos -DEI). It is operating and has 27 trademarks owners in its data base comprising marks which have been registered previously in the IP General Department. 2. Legal framework: The cross-border registry is based on the following regulations: a) Free Trade Agreement subscribed between Central America Republics, Dominican Republic and United States of America, approved in Honduras by Decree Number 10-2005: In Chapter 15, article 15.2 section 3 the Treaty states that the owner of a trademark is exclusively entitled to prevent that third parties, without his or her consent, use in the course of their commercial operations, identical or similar signs, including geographical indications, for merchandise or services related with the merchandise and protected services by a trademark, when that “use” leads to a probability of confusion. In the case of the use of an identical sign including a geographic indication, for merchandise or identical services, the probability of confusion is a presumption. Furthermore, in article 13 of the Law of Implementation of the mentioned Treaty (Decree Number 16-2006, published in official newspaper La Gaceta on March 24, 2006) it is established the right of the owner of a mark of preventing the use of a mark of his or her own by a third party without his or her consent. b) Unique Central American Customs Code (in Spanish, CAUCA) and its Bylaws (RECAUCA): Article 63 of CAUCA empower the Customs Authority to retain forbidden merchandise and article 75 of the same legal body which refers directly to the Bylaws regarding the IP matters: Article 316 of RECAUCA specifically states about measures in frontier in matters of IP providing that the customs authorities of the Party States will have competence for the execution of measures in frontier in IP matters regarding the merchandise that could be infringing IP rights as set forth in applicable law. Measures in frontier will be those applied by the Customs Authority which seeks for duly observance and defense of the IP rights, copyright and related rights. The Customs authority will act by party solicitude or by duty whenever it is necessary, retaining the merchandise in a precautionary way and giving notice to the owner of the IP rights which in turn will proceed with the legal actions accordingly. c) Agreement of the IP matters related with commerce (Articles 51-60): It states the procedures for the owner of a right which has valid reasons to suspect that the import of factory or commerce trademarks merchandise or counterfeited merchandise is being prepared. It could be filed before competent authorities, administrative or judicial, aiming that the customs authorities suspend the delivery of that merchandise and also set forth other procedures to suspend the export of that merchandise. d) Industrial Property Law (Decree Number 12-99 E) Articles 160, 163, 164 and 165: The owner of a protected right may file a legal claim before the competent court against any person which infringes his or her right. The following precautionary measures may be filed: a. Cease of the acts that infringe rights. b. Damages compensation c. Seizure of the goods that have infringed the rights d. Import and export prohibition e. Withdrawal of merchandise e) Civil Procedure Code (Articles 520, 522-530): Among other measures, the following may be sued: a. Cease of the acts that infringe the right. b. Adopt necessary measures to prevent that the infringement continues. It can also be asked the adoption of the following precautionary measures: a. Immediate cease of the acts that infringe the right of the solicitant. b. Necessary measures to prevent the infringement. c. Seizure of the imported or produced objects infringing the right. As mentioned above, the registry of cross-border measures is practically new and has a data base of 27 trademarks´ owners which have been previously registered in the IP Department. 3. Requirements for registering in the registry cross-border measures: The requirements for registering a trademark in the cross-border measures registry are as follows: a. Power of attorney duly authenticated by a Notary Public and legalized or “Apostilled”. b. Certificate of Registry issued by the IP Department duly authenticated. c. Owner´s engagement to train the customs authorities in detecting false distinctive signs, or that the importer is not the owner or licensee. d. Payment of two hundred Lempiras per trademark (almost US$ 10) *These requirements are filed in a form and must be done per mark owned by the petitioner. It must be filed by a lawyer so legal fees must apply. 4. Requirements for the registration of marks in IP Department in Honduras: The requirements for registering marks in the IP Department in Honduras are as follows: a. Power of attorney b. Class c. Name and logo
*These requirements are filed in a form and must be done per mark owned by the petitioner. It must be filed by a lawyer so legal fees must apply. 5. Conclusion There is no legal body in Honduras which regulates specifically the “cross-border measures”. The current registry is operating due to the enforceability of Treaties in effect in the country. It is expected to be approved soon the bylaws which will regulate procedures, requirements and rates. (*) Claribel Medina CENTRAL LAW Honduras- Medina, Rosenthal & Asociados honduras@central-law.com
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