Título II Capítulo I. De las marcas

Marks may consist of words or sets of words, letters, numerals, monograms, figures, portraits, labels, shields, prints, engravings, vignettes, borders, lines and stripes, and combinations and arrangements of colors, as well as any combination of these signs. They may also consist of sounds and smells, in the shape, presentation or conditioning of products, their wrappers or packaging, in the means of sale of the products or the corresponding services and others which, in the opinion of the Registry, have or have acquired distinctive character.

Marks may consist of national or foreign geographical indications, provided that they are distinctive with respect to the products or services to which they are applied, and that their use is not liable to create confusion or association with respect to the origin, qualities or characteristics of the products or services for which the marks are used.

In the case of collective marks or certification marks, where the geographical indication identifies a product or service as originating from a country or from a region or locality of such country and a quality, reputation or other characteristic of the product or service may be essentially attributable to its geographical origin, such geographical indication may qualify for protection as a mark.

The nature of the product or service to which the mark is to be applied shall in no case be an obstacle to registration of the mark.

Use of a mark to market a product or service shall be optional and it shall not be necessary to prove prior use to apply for or obtain registration of a mark.

Where the mark consists of a label or other sign composed of a set of elements and the name of a product or service is expressed therein, registration shall only be granted for that product or service.

Any requirement relating to the use, in a given proportion, of the common or generic name of the product or service covered by a mark shall not impair the distinctive character thereof. *

Amended by Article 35 of Congressional Decree Number 11-2006 of 30-05-2006; it shall enter into force two years after the entry into force of the FTA. *Amended by Article 2 of Decree 3-2013 Number 3-2013 of 226-06-2013.

Trademarks have the status of movable property, ownership thereof is acquired by their registration in accordance with this law and is proved by the certificate issued by the Registry.

Priority in the right to obtain the registration of a trademark is governed by the date and time of filing of the application for registration with the Registry.

Without prejudice to the right to oppose in the cases regulated by this law, ownership of the trademark and the right to its exclusive use are acquired only with respect to the products or services for which it has been registered.

The owner of a trademark protected in a foreign country shall enjoy the rights and guarantees granted by this law provided that it has been registered in Guatemala, except in the case of well-known marks and as provided in any treaty or convention to which Guatemala is a party.

The applicant to register a mark may invoke priority based on a prior application to register, filed in due form in any State that is party to a treaty or agreement to which Guatemala is bound. Such priority shall be invoked in writing, indicating the date and the country of filing of the first application.

For the same application, multiple priorities or partial priorities may be invoked, which may originate from applications filed in two or more different States; in such case the priority time limit shall be counted from the date of the earliest priority.

The right of priority shall have a validity of six months counted from the day following the filing of the priority application.

The right of priority may be invoked upon filing the new application or at any time up to within a time limit not exceeding three months from the date of expiry of the priority. To prove priority, a copy of the priority application, certified by the office or competent authority that received said application, shall be attached, which shall be exempt from any legalization and shall have attached a translation if it is not drawn up in Spanish. The certification referred to in this paragraph shall be filed within a time limit not exceeding three months from the date of expiry of the priority.

An application to register a mark for which the right of priority is invoked shall not be denied, revoked or annulled by reason of acts occurring during the priority time limit, performed by the applicant itself or by a third party, and such acts shall not give rise to the acquisition of any third-party right with respect to the mark and for the products or services contained in the first application.

The priority invoked shall be governed in all other respects by the provisions of the corresponding agreement or treaty.

Except for the special provisions contained in this Law, co-ownership of applications or registrations relating to trademarks shall be governed, in the absence of agreement to the contrary, by the provisions of the Civil Code on co-ownership.

No sign falling within any of the following cases may be registered as a mark, nor as an element thereof:

a)That lacks sufficient distinctive aptitude with respect to the product or service to which it is applied;

b)That consists of the usual or common form of the product or of the container to which it is applied or of a form necessary or imposed by the nature of the product or service in question;

c)That consists of a form that gives a functional or technical advantage to the product or service to which it is applied;

d)That consists exclusively of a sign or an indication that, in current, technical or scientific language, or in the commercial usages of the country, is a common or usual designation of the product or service in question;

e)That consists exclusively of a sign, an indication or an adjective that may serve in commerce to qualify or describe any characteristic of the product or service in question, its translation into another language, its orthographic variation or the artificial construction of non-registrable words;

f)That consists of a simple color considered in isolation;

g)That consists of a letter or a digit considered in isolation, unless presented in a special and distinctive form;

h)That is contrary to morals or to public order;

i)That comprises an element that offends or ridicules persons, ideas, religions or national symbols of any country or of an international entity;

j)That may cause deception or confusion regarding the geographic or cultural origin, the nature, the method of manufacture, the qualities, the fitness for use or consumption, the quantity or any other characteristic of the product or service in question;

k)That consists of a geographical indication that does not comply with the provisions of Article 16 second paragraph of this law;

l)That reproduces or imitates, totally or partially, the coat of arms, flag, symbol, emblem, acronym, name or abbreviation of the name of any State or international organization, without authorization from the competent authority of the State or international organization in question;

m)That reproduces or imitates, totally or partially, an official sign of control or guarantee adopted by a State or a public entity, without authorization from the competent authority of that State;

n)That reproduces coins or banknotes of legal tender in the territory of any country, securities or other commercial documents, seals, stamps, revenue stamps or fiscal species in general;

ñ)That includes or reproduces medals, prizes, diplomas or other elements that suggest the obtaining of awards with respect to the corresponding product or service, unless such awards were truly granted to the applicant for registration or to his predecessor in title and this is proved at the time of requesting registration;

o)That consists of the denomination of a plant variety, protected in the country or in any foreign country, and in relation to the products identified by the variety in question; and

p)That is or has been a certification mark whose registration was cancelled, or which has ceased to be used due to dissolution or disappearance of its holder, unless at least ten years have elapsed since the cancellation, dissolution or disappearance, as the case may be.

Without prejudice to the provisions of subparagraphs a), d), e), f) and g) of the preceding paragraph, the registration of the mark may be admitted for processing, or one already registered may be renewed, when in the opinion of the Register and in accordance with the evidence submitted in this regard by the applicant, it is established that a sign falling within those cases has acquired sufficient aptitude or distinctive character with respect to the products or services to which it is applied derived from the continuous use thereof in commerce.

A sign may not be registered as a mark, nor as an element thereof, where it affects any right of a third party. By way of purely illustrative enumeration, the following cases are mentioned:

a)If the sign is identical or similar to a mark or a commercial advertising expression registered or applied for previously by a third party, for the same or similar products or services, or for different products or services where they could cause confusion or create a risk of association with that mark or commercial advertising expression;

b)If the sign may cause confusion by being identical or similar to a trade name or an emblem used in the country by a third party since an earlier date, in an enterprise or establishment that normally trades in merchandise or provides services identical or similar to those intended to be identified with the mark, or that may weaken or affect its distinctiveness;

c)If the sign constitutes a total or partial reproduction, imitation, translation or transcription of a well-known mark of a third party, even if not registered in the country, whatever the products or services to which the sign is applied, if its use and registration would be likely to cause confusion or a risk of association with that third party, or an unfair exploitation of the notoriety of the sign, or would weaken or affect its distinctive force;

d)If the sign affects the personality rights of a third party, especially in the case of the name, signature, title, hypocoristic, pseudonym, image or portrait of a person other than the person requesting registration, unless authorization of that person is proved or, if such person has died, that of those who have been legally declared their heirs;

e)If the sign affects the name, image or prestige of a local, regional or national community, unless express authorization of the competent authority of that community is proved;

f)If the sign constitutes a total or partial reproduction or imitation of a protected certification mark;

g)If the sign is identical, similar or constitutes a translation of a geographical indication or appellation of origin protected in the Country and may cause confusion or a risk of association;

h)If the sign infringes a copyright or an industrial property right of a third party; and,

i)If the sign could serve to perpetrate or consolidate an act of unfair competition.

For purposes of the provisions of subsection c) of this article, the regulation shall establish the criteria that, inter alia, may be considered to determine the notoriety of a sign, which shall apply both in administrative procedures and in judicial proceedings. *Subparagraphs g), h) amended, subparagraph i) and final paragraph added by Article 3 of Decree 3-2013 Number 3-2013 of 226-06-2013.

The application for registration of a mark shall contain:

a)General information on the applicant or their legal representative, evidencing such representation;

b)Place of incorporation, when the applicant is a legal person;

c)The mark for which registration is requested and a reproduction thereof, in the case of word marks with special script, form or color, or of figurative, mixed or three-dimensional marks with or without color; in the case of a sound or olfactory mark, a sufficiently clear, intelligible and objective description thereof;

d)A simple translation of the mark, where it is composed of any word element and such element has meaning in a language other than Spanish;

e)An enumeration of the goods or services which the mark will distinguish, indicating the class number; and

f)Special reservations or disclaimers; and

g)The country of origin of the sign.

If the applicant claims priority it shall indicate:

1)The name of the country or regional office in which the priority application was filed;

2)The filing date of the priority application;

3)The number of the priority application, if one had been assigned to it. *Amended by Article 36 of Decree of Congress Number 11-2006 of 30-05-2006; shall enter into force two years after the entry into force of the FTA. *Amended subparagraphs c), f), g) and repealed h) and i) by Article 4 of Decree 3-2013 Number 3-2013 of 26-06-2013.

With the application for registration the following shall be filed:

a)The documents or authorizations required in the cases provided for in subparagraphs l), m) and ñ) of paragraph one of Article 20, and in subparagraphs d) and e) of Article 21, both of this law, where applicable;

b)Proof of payment of the prescribed fee;

c)Four reproductions of the mark in an attached envelope, if it is one of those mentioned in subparagraph c) of paragraph one of Article 22 of this law;

d)Three copies of the material medium where it is a sound mark. *Amended by Article 37 of Decree of Congress Number 11-2006 of 30-05-2006; subparagraphs d) and e) shall enter into force two years after the entry into force of the TLC. * *Amended by Article 3 of Decree Number 3-2013 of 26-06-2013.

Upon filing of the application, the Registry shall record the date and time of its filing, assign a file number and deliver to the applicant a receipt for the application and the documents submitted.

The date of receipt by the Registry shall be deemed the filing date of the application, provided that, at the time of receipt, it contained at least the following requirements:

a)That it contain information permitting identification of the applicant or its representative and indicate an address for receiving notifications in the country;

b)That it indicate the mark for which registration is requested or,

1)in the case of denominative marks with special lettering, form or color, or of figurative, mixed or three-dimensional marks with or without color, it is accompanied by a reproduction of the mark;

2)in the case of sound or auditory marks, it shall be accompanied by a copy of its reproduction on supporting material; and

3)in the case of olfactory marks, it must be accompanied by supporting material which may include a copy of the chemical formula or procedure.

c)That it indicate the names of the products or services for which the mark is used or will be used; and

d)That it be accompanied by proof of payment of the established fee. *Amended by Article 38 of Decree of Congress Number 11-2006 of 30-05-2006, numerals 2 and 3 of literal b) shall enter into force two years after the entry into force of the TLC.

The Registry shall first examine whether the application complies with the requirements established in Articles 5, 22 and 23 of this Law and, then, whether the applied-for mark falls within any of the grounds of inadmissibility covered in Articles 20 and 21 thereof.

If, by reason of the examination referred to in the preceding paragraph, the Registry establishes that the application does not comply with any of the requirements established in Articles 5, 22 and 23 of this Law, it shall suspend it and shall require the applicant to remedy the error or omission within a time limit of one month, under warning that if he fails to do so the application shall be deemed abandoned.

If, upon conducting the examination pursuant to Articles 20 and 21, which shall be carried out jointly, the Registry finds that the applied-for mark is covered by one or more of the grounds of inadmissibility provided for in said Articles, it shall notify the applicant of the objections precluding admission and shall grant him a time limit of two months to state his position in that regard. Upon expiry of said time limit without the applicant having responded, the application shall be deemed abandoned and its archiving shall be ordered. If the applicant responds and the Registry considers that the objections raised persist, it shall issue a reasoned decision rejecting the application. *Amended by Article 6 of Decree 3-2013 Number 3-2013 of 26-06-2013.

Once the examination referred to in the preceding article has been carried out, with no obstacle to the application having been found, or once such obstacle has been overcome, the Registry shall issue the corresponding edict, which shall be published in the official gazette three times within a time limit of fifteen days, at the expense of the interested party.

The edict shall contain:

a)The name and domicile of the applicant;

b)The name of the applicant's representative, where there is one;

c)The date of filing of the application;

d)The number of the application or file;

e)The mark as applied for, and in the case of a sound or olfactory mark, such nature shall be specified together with the description provided by the applicant, stating that the Registry has the material medium available for consultation by interested persons, in the case of the former. The class corresponding to the goods or services which the mark will distinguish;

f)An enumeration of the goods or services, by their names, which the corresponding mark will distinguish:

g)The class corresponding to the goods or services which the mark will distinguish; and

h)The date and signature of the Registrar or the public official of the Registry whom the Registrar designates for such purpose.

From the day following the effective and complete publication of the edict or notice in the BORPI, the time limit provided for filing oppositions to the application shall be computed.

Any interested person may file an opposition against the application for registration of a trademark within a time limit of two months counted from the date of the first publication of the edict. The opponent shall indicate the factual and legal grounds on which they rely, accompanying or offering the means of evidence on which they base their claim and, in addition, comply with the provisions established in Article 5 of this Law.

The applicant for the trademark shall be given a hearing on the opposition for a time limit of two months. The answer to the opposition shall satisfy the same requirements mentioned in the preceding paragraph.

If it is necessary to receive means of evidence offered by the opponent or the applicant, the opening to evidence in the procedure shall be decreed for a common time limit of two months for both parties.

The Registry, upon request and at the expense of the interested party, shall collate the certifications and issue the reports that are offered as evidence of the opposition or of the answer thereto for inclusion in the file.

Once the time limit for filing an opposition has elapsed without any opposition having been filed, the Registry shall order that, upon prior payment of the respective fee, the mark be registered and the certificate of its registration be issued.

If an opposition has been filed within the month following the expiry of the time limits established in Article 27 of this Law, the Registry shall decide it in a reasoned manner, assessing the evidence submitted. If more than one opposition has been filed, the Registry shall decide them jointly. If the decision is favorable to the application and is final, the Registry shall proceed in accordance with the provisions of the first paragraph.

If within the month following the date on which the decision had been notified to the applicant, the decision shall be without effect and the abandonment of the application shall operate by operation of law. *Amended by Article 40 of Decree of Congress Number 11-2006 of 30-05-2006.

Both for conducting the substantive examination and for the decision on oppositions, nullities and/or cancellations, the rules indicated below shall be taken into account, among others:

a)In all cases, preference shall be given to the sign already protected over the one that is not;

b)The conflicting signs must be examined on the basis of the graphic, phonetic and/or ideological impression they produce as a whole, as if the examiner or the adjudicator were in the position of the ordinary consumer of the product or service in question;

c)In the case of marks that have generic or commonly used radicals, the comparative examination must be made with emphasis on the non-generic or distinctive elements;

d)Greater importance must be given to the similarities than to the differences between the signs;

e)The signs must be examined in the mode and form in which the products are normally sold, the services are rendered or they are presented to the consumer, taking into account distribution channels, points of sale and type of consumer for which they are intended;

f)For a likelihood of confusion to exist, it is not sufficient that the signs be similar, but in addition the products or services they identify must be of the same nature or that there may exist the possibility of association or relation between them;

g)It is not necessary that confusion or error on the part of the consumer has occurred, but the possibility that such confusion or error may occur is sufficient, taking into account the characteristics, culture and idiosyncrasy of the ordinary consumer of the products or services; and

h)If one of the conflicting marks is well-known, the other must be clear and easily distinguishable from it, in order to avoid any possibility of undue exploitation of the prestige or fame thereof.

The registration of a mark may be carried out manually or by any suitable mechanical, electronic or computer means and shall contain:

a)Name, domicile and nationality of the holder and place of incorporation, if it is a legal person;

b)Name of the representative of the holder, where applicable;

c)The registered mark where it is:

1.Purely denominative and in the case of denominative marks with special script, form or colours, a reproduction thereof;

2.In the case of a figurative mark, mixed or three-dimensional marks with or without colour, a reproduction thereof shall be affixed;

3.In the case of sound marks, a description thereof shall be included; and,

4.In the case of olfactory marks, a description thereof shall be included.

d)A list of the products or services distinguished by the mark, indicating the class number;

e)Special reservations or disclaimers concerning letter types, colours and combinations thereof;

f)The dates on which the edict was published in the official gazette;

g)If priority has been claimed, the name of the country or regional office in which the priority application was filed, its filing date and number, if one was assigned; and

h)The register number, date and signature of the Registrar.

The Registry shall deliver to the holder the certificate of register of the mark, which may be a certified photocopy of the registration and which, in any event, shall contain the particulars appearing in the corresponding registration. A copy of the certificate of register shall be added to the respective file.

The registration of a mark shall be made without prejudice to the better right of a third party and under the exclusive liability of the applicant therefor. *Amended by Article 41 of Decree of the Congress Number 11-2006 of 30-05-2006; numerals 3 and 4 of literal c) shall enter into force two years after the entry into force of the FTA. *Numerals 1, 3, 4 of literal c) amended by Article 8 of Decree Number 3-2013 of 26-06-2013

The registration of a mark shall remain in force for ten years, counted from the date of registration. It may be renewed indefinitely for equal and successive periods of ten years, counted from the date of the preceding expiry.

The renewal of the registration of a trademark shall be requested from the Registry within the year preceding the expiry of each period. It may also be filed within a grace period of six months following the expiry date, in which case, in addition to the applicable renewal fee, the established surcharge shall be paid. During the grace period the registration shall remain in full force and effect.

The renewal application shall contain:

(a) Name of the holder and name of their representative in the country, where applicable; and

(b) Registration number and identification of the mark covered by such registration.

Together with the renewal application, the document evidencing representation, proof of payment of the respective fee and of the surcharges, if applicable, shall be filed.

Upon compliance with the requirements provided for in the preceding paragraphs, the Registry shall record the renewal without further proceedings, by means of a notation made in the registration thereof. The renewal shall not be subject to substantive examination or publication and shall have effect from the date of the last expiry, even where the renewal was requested within the grace period. A certificate evidencing the renewal shall be delivered to the holder.

The holder of a register may at any time request that it be divided, in order to separate into two or more registers the products or services covered by the initial register, even if they correspond to the same class. Each fractional register shall retain the date of the initial register, as well as the validity of the register subject to division.

The division request shall be favorably resolved by the Registry if it is filed by the holder or his representative, with signature legalized by a notary, specifically detailing the products or services covered by each fractional register and attaching the proofs of payment of the respective fees.

By virtue of the division, the Registry shall proceed to cancel the original registration and to make as many new registrations as fractional registers result therefrom, in which the third-party rights appearing in the original registration shall be transcribed. Each of the fractional registers shall be identified with a different number, but in the registration reference shall be made to the original register. The Registry shall issue to the holder of the mark a certificate for each of the fractional registers.

The holder of a registration may at any time request that their registration be modified to correct any error. No correction shall be admitted if it implies an expansion of the list of products or services covered by the registration, or a change in the mark, unless they are necessary to rectify an error attributable to the Registry, in which case no payment of any fee shall be required.

The holder of a registration may at any time request that the list of products or services covered by the registration be reduced or limited, the request having to contain their signature legalized by a notary. Where any right in favor of a third party appears recorded with respect to the mark, the reduction or limitation shall only be recorded if the written consent of such third party is evidenced, with signature legalized by a notary.

The correction or restriction shall be recorded in the respective registration, by means of a notation signed and sealed by the Registrar, of which certification shall be delivered to the applicant.

The registration of a trademark shall grant its holder the exclusive right to use it and the rights to:

a)To prevent all third parties who do not have the consent of the owner from employing in the course of trade identical or similar signs, including geographical indications, for products and services that relate to the products and services for which the holder's trademark is registered, in cases where such use would result in likelihood of confusion. In the case of use of an identical sign, including a geographical indication to identify identical products or services, likelihood of confusion shall be presumed;

b)To oppose the registration of an identical or similar trademark to identify products identical or similar to those for which the trademark was registered, or for different products or services, even if covered in another class of the applicable classification of products and services, provided that they could cause risk of confusion or involve undue exploitation of a well-known trademark or could cause risk of association or weakening of its distinctive force, whatever the manner or means by which the trademark has become known;

c)To judicially cause cessation of the use, application or affixing of the identical or similar trademark, including geographical indications by an unauthorized third party, in the following cases:

1.to identify products or services identical or similar to those for which the trademark has been registered, or for different products or services when they could cause confusion and also with respect to products or services that relate to the products or services for which the trademark has been registered or used, on the understanding that in the case of use of an identical trademark for identical products or services, confusion shall be presumed;

2.with respect to wrappers, packages, packings, bottles, cans, boxes or the presentation of such products, when this could cause confusion, the risk of association of the trademark with that other product or the weakening of its distinctive force; or,

3.To identify products and services identical or similar to those identified with a well-known trademark whether registered or not, when such use could cause confusion, or, in the case of different products or services, when such use could indicate an association between such products or services and the holder of the trademark that could erode the interest of the holder of the well-known trademark.

d)That the competent authorities prohibit or suspend the importation or entry of products covered by the situations provided for in preceding subsection c);

e)Compensation for the damage and losses caused to the holder by improper employment, use, application, affixing, importation or introduction;

f)To report the crimes committed to the detriment of its rights and to criminally accuse the responsible persons;

g)To request and obtain the precautionary measures provided for in this Law, in the cases mentioned in subsections c) and d) of this article and also against those who:

1.Remove or modify the trademark for commercial purposes, after it has been legitimately applied or affixed to the products;

2.Without authorization from the holder manufacture labels, containers, wrappers, packings or other analogous materials that reproduce or contain the trademark;

3.Fill or reuse for commercial purposes containers, wrappers or packings bearing the trademark with the purpose of giving the appearance that they contain the original product; and

4.Commit or attempt to commit acts of unfair competition against the holder.

h)To demand the intervention of the competent authorities so that its rights as holder of distinctive signs are protected and respected and to prevent possible violations and the economic or commercial damage arising from a violation or from the weakening of the distinctive force or the commercial value of its trademarks, or from unfair exploitation of the prestige of the trademark or of its holder; and

i)To demand the intervention of the competent judicial authority for the cancellation or transfer of the registration of a domain name obtained in bad faith, when it constitutes reproduction or imitation of a well-known trademark whose use is likely to cause confusion or the risk of association or that weakens or affects its distinctive force. *Amended by Article 42 of Decree of Congress Number 11-2006 on 30-05-2006; *Subsections b) and c) amended by Article 9 of Decree Number 3-2013 on 26-06-2013

For purposes of the provisions of subparagraph (c) of Article 35 of this Law, the following acts, among others, constitute improper use, application or placement:

1.Introducing into commerce, selling, offering for sale or distributing products or services covered by the cases provided for in subparagraphs (c) and (g) of Article 35 of this Law.

2.Importing, exporting, storing or transporting said products; and

3.Using the mark in advertising, publications, commercial documents or written or oral communications, regardless of the means by which it is carried out, if it produces a commercial effect within the country, without prejudice to the advertising rules that may be applicable.

For purposes of the provisions of subparagraph (c) of Article 35 of this Law, the following acts, among others, constitute improper use, application or placement:

1.Introducing into commerce, selling, offering for sale or distributing products or services covered by the cases provided for in subparagraphs (c) and (g) of Article 35 of this Law.

2.Importing, exporting, storing or transporting said products; and

3.Using the mark in advertising, publications, commercial documents or written or oral communications, regardless of the means by which it is carried out, if it produces a commercial effect within the country, without prejudice to the advertising rules that may be applicable.

The registration of a mark shall not confer the right to prohibit a third party from using in relation to products or services lawfully placed in commerce:

a)Its name or address, or those of its commercial establishments;

b)Indications or information on the characteristics of its products or services, including, among others, those referring to quantity, quality, use, geographical origin or price; and

c)Indications or information on availability, use, application or compatibility of its products or services, in particular in relation to spare parts or accessories.

The limitation referred to in the preceding paragraph shall operate provided that such use is made in good faith and is not capable of causing confusion as to the business origin of the products or services.

Registration of the mark does not confer on its holder the right to prohibit the free circulation of the products legitimately bearing it and which have been introduced into commerce, in the country or abroad, by said holder or by another person with the consent of the holder or economically linked to the latter, provided that such products and the containers or packaging that were in immediate contact with them have not undergone any modification, alteration or deterioration.

For the purposes of the preceding paragraph, two persons shall be deemed to be economically linked when one may exercise directly or indirectly over the other a decisive influence with respect to the exploitation of the rights in the mark, or when a third party may exercise such influence over both persons.

When the mark consists of a label or other composite made up of a set of word or graphic elements, protection shall not extend to the elements contained therein that are descriptive, in common use or necessary in trade.

For the purposes of the foregoing, if the applicant has not expressly disclaimed the referred elements, the Registry shall require him to remedy such omission in accordance with the second paragraph of Article 25 of this Law. In any case, the provisions of the first paragraph of this article shall govern. *Amended by Article 11 of Decree 3-2013 Number 3-2013 of 226-06-2013.

No company or legal person whose name, company name or denomination includes a distinctive sign protected in the name of a third party may be registered in a public register, if confusion could thereby be caused, unless that third party gives its written consent.

All products marketed in the country shall clearly indicate in the Spanish language the place of production or manufacture of the product, the name of the producer or manufacturer, and the link or relationship between said producer or manufacturer and the owner of the trademark used on the product, when they are not the same person, without prejudice to the rules on labeling and consumer information that may be applicable.

The right to a registered mark or a mark undergoing registration may be alienated by inter vivos act or transferred by succession. The contract of alienation must be set forth in writing, in a public deed or private document with signatures legalized by a notary, but if executed abroad, the document must be duly legalized and, if drawn up in a language other than Spanish, must have a sworn translation.

If the holder of the mark changes name, company name or denomination for any cause, such change must be annotated in the registration of the mark, for which purpose it must be proved before the Registry with the corresponding documentation, the provisions of the preceding paragraph being applicable where relevant.

For the alienation or change of name of the holder to take effect vis-à-vis third parties, it must be registered in the Registry.

The request for registration of an assignment or change of name shall contain:

a)The name, corporate name or denomination of the registered holder and of the new holder or the new name, corporate name or denomination of the holder and their addresses;

b)The mark or marks affected by the transfer or change of name and indication of their registrations or of the file number in which they are being processed; and

c)The title by virtue of which the transfer or the change of name is effected.

The request may be made by the registered holder or by the new holder or their representatives, jointly or by only one of such parties, and therewith shall be filed the documentation evidencing the assignment or the change of name and the proof of payment of the respective fee.

The alienation of a trademark may be made independently of the enterprise or of the part of the enterprise of the holder of the right, and with respect to all, some or one of the products or services for which the trademark is registered, but in the event that the alienation does not include all of the products, the division of the register shall be requested beforehand or simultaneously. The alienation and its corresponding registration shall be voidable if the change in ownership of the right is susceptible to causing a risk of confusion.

The alienation of an enterprise comprises the right to every mark relating to it and forming its trade name, unless stipulated otherwise.

The holder of the right in a registered trademark may grant a license to a third party to use the trademark. The license contract must be in writing, but if executed in a language other than Spanish, the document must be duly legalized and have a sworn translation.

Unless otherwise stipulated in the license contract, the following rules shall apply:

a)The licensee shall have the right to use the trademark during the entire validity of its registration, including its renewals, throughout the territory of the country and with respect to all the products or services for which the trademark is registered;

b)The license shall not be assignable by the licensee, who also may not grant sub-licenses, and it shall not be exclusive, the holder being able to grant other licenses;

c)If the license is recorded, the exclusive licensee may exercise in its own name the legal actions for protection of the trademark, as if it were the holder thereof; and

d)Where the license has been granted as exclusive, the holder may not grant other licenses in the country with respect to the same trademark, for the same products or services, nor may it use the trademark itself in the country with respect to those products or services. *Amended by Article 44 of Decree of Congress Number 11-2006 on 30-05-2006

No registration of trademark licenses is required to establish the validity of the license, to assert rights over a trademark or for other effects. If registration of the use license is elected, the application may be filed by the owner of the trademark or by the licensee and shall contain:

a)The name, corporate name or denomination of the owner and of the licensee and their domicile;

b)The trademark or trademarks subject to the license and indication of their registrations;

c)The time limit of the license, if any;

d)Indication of whether the license is exclusive or not and the conditions, covenants or restrictions agreed upon the use of the trademark; and

e)Summary of the arrangements relating to quality control.

The application shall be accompanied by a copy of the license contract or a summary thereof, signed by the parties, containing the information referred to in the preceding paragraph, and proof of payment of the corresponding fee. If the license contract or the summary thereof was not executed in Guatemala, the document shall be duly legalized and accompanied by a sworn translation into Spanish, if applicable.

The license contract shall contain provisions ensuring, on the part of the owner, quality control of the products or services that are the subject matter thereof, where applicable.

At the request of any interested person and after a hearing of the owner of the trademark registration and of the licensee for a common time limit of fifteen (15) days, the competent judge may prohibit use of the trademark by the licensee where, due to lack of adequate quality control or abuse of the license, confusion, deception or harm to the consuming public occurs or may occur.

With respect to the subject matter regulated by this Law, franchise contracts shall also be governed by the provisions of this chapter. *Amended by Article 45 of Decree of Congress Number 11-2006 of 30-05-2006

If the application for registration of assignment, change of name or license of use meets the legal requirements, the Registry shall issue a decision ordering that the corresponding entry be made in the registers and in the applications for the marks concerned and shall issue an edict that must be published at the expense of the interested party, once, in the Bulletin of the Intellectual Property Registry -BORPI-. Once publication has been made, the Registry shall deliver to the interested party a certification evidencing the corresponding registration. *Amended by Article 46 of Decree of the Congress Number 11-2006 of 30-05-2006; *Amended by Article 3 third paragraph of Decree Number 24-2018 of 15-11-2018