Título II Capítulo VIII. Indicaciones geograficas y denominaciones de origen

The provisions of this chapter shall apply to geographical indications and to appellations of origin regardless of whether they are national or foreign, except where such distinction is expressly made in a provision of this Law. *Amended by Article 12 of Decree Number 3-2013 of 26-06-2013.

Geographical indications and appellations of origin shall be protected by means of their registration in the Register in accordance with the provisions of this Law and its regulation. The fee schedule for industrial property matters shall establish the fees to which the application, registration or other registry acts are subject. The procedure provided for in this Law for the registration of marks shall be applicable as pertinent, without prejudice to what is specifically prescribed in the provisions contained in this chapter.

Any producer who carries out their activity in the delimited geographical area and who complies with the specifications of the statement of conditions and the rules on use and administration that have been approved by the Register shall have the right to use the geographical indications and appellations of origin on their products.

The respective administration body shall ensure that geographical indications and appellations of origin are used only by persons or entities that comply with the corresponding statement of conditions and the applicable rules on use.

By their nature, geographical indications and appellations of origin shall not be subject to alienation, attachment or license. *Amended by Article 13 of Decree Number 3-2013 of 226-06-2013.

A sign that may not be registered as a geographical indication or appellation of origin:

a)Does not correspond to the definitions contained in Article 4 of this Law;

b)Is contrary to good customs, morals or public order, or could mislead the public as to the geographical origin, nature, method of manufacture, characteristics or qualities, or fitness for use or consumption of the respective products;

c)Is considered a generic name. For such purpose, a geographical indication or appellation of origin shall be considered generic when the name of the product, even though it refers to the place or region where said product was initially produced or marketed, has become the common name of the product in Guatemala;

d)Corresponds to and/or conflicts with the name of a plant variety or animal breed and, by reason of the products it identifies, may mislead the consumer as to the true origin of the product;

e)Is identical or confusingly similar to a trademark or to an element thereof, previously applied for or registered in good faith, for identical or similar products; or,

f)Is identical or confusingly similar to a well-known trademark when its protection may mislead the consumer as to the true identity of the product.

A geographical indication or an appellation of origin accompanied by the generic name of the product or by an expression related to that product may be registered, but protection shall not extend to them. *Amended by Article 14 of Decree Number 3-2013 on 26-06-2013.

In the case of wholly or partially homonymous geographical indications or appellations of origin, the Registry shall condition registration or require the modification of a registration on the labeling and presentation of the products permitting them to be clearly differentiated, taking into account local and traditional uses and ensuring that producers receive equitable treatment and that the public is not misled as to the true origin of the product.

Those who carry out their productive or processing activity in the place to which a national geographical indication or appellation of origin refers, grouped in a nonprofit organization, may request recognition of the geographical indication or appellation of origin in question. The written application shall contain the following:

a)The geographical indication or appellation of origin intended to be registered;

b)The specification referred to in Article 82; and

c)A summary setting out the main elements of the specification:

I.the name of the geographical indication or appellation of origin;

II.the description of the product;

III.a concise description of the delimited geographical area; and,

IV.the description of the link between the product and the geographical environment, specifying the elements of the product description or of the method of obtaining that justify such link. *Amended by Article 48, of Decree of Congress Number 11-2006 on 30-05-2006; *Amended by Article 16, of Decree Number 3-2013 on 26-06-2013.

The application for registration of a geographical indication or an appellation of origin must be accompanied by the specification, which, in addition to the matters determined by the regulation of this Law, shall contain the following:

a)The name of the product with the geographical indication or appellation of origin, as applicable;

b)The description of the product including, as applicable, information on the raw materials and the main physical, chemical, microbiological and organoleptic characteristics;

c)The delimitation of the geographical area, including its characteristics;

d)The elements proving that the product originates from the delimited geographical area;

e)The description of the method of obtaining the product and the description of the stages of production that must be carried out in the delimited geographical area to guarantee the quality or the origin of the product;

f)The elements justifying the link between a given quality, the reputation or other characteristic of the product and the geographical environment, in the case of a geographical indication, or the link between the quality or the characteristics of the product and the geographical environment in which it is produced, in the case of an appellation of origin;

g)The control mechanisms to verify compliance with what is stated in the specification;

h)The reference to the production or labelling standards that the product must comply with in order to be identified with the geographical indication or the appellation of origin; and,

i)Any other information deemed necessary or relevant.

The application for modification of a protected geographical indication or appellation of origin shall describe and justify the proposed modifications and shall comply with the requirements and the procedure established in Articles 84 and 85 of this Law. Once the modification of the specification is approved, the respective registration shall be made in the rules of use and administration. *Amended by Article 49, of Decree of Congress Number 11-2006 of 30-05-2006; *Amended by Article 17, of Decree Number 3-2013 of 26-06-2013.

Geographical indications or appellations of origin recognized and protected as such in their Country of origin, whatever the modality or form, may be registered in the Register in accordance with the provisions of this Law and its regulations.

The written application for the geographical indication or appellation of origin sought to be registered shall contain the following:

a)The geographical indication or appellation of origin sought to be registered.

b)A summary setting out the principal elements of the specification:

I.The name of the geographical indication or appellation of origin;

II.The description of the product;

III.The concise description of the delimited geographical zone;

IV.The description of the link between the product and the geographical environment, specifying the elements of the description of the product or of the method of obtaining that justify such link; and,

V.Information regarding the date of authorization, recognition or registration in its Country of origin and the identification of the authority that ordered it.

The application shall be accompanied by the documents proving recognition of the geographical indication or appellation of origin in question. The procedure for its approval shall be that provided for in Articles 84 and 85 of this Law.

It may not be required of users of the signs referred to in this article that the authorization for use be granted in and/or for Guatemala.

The applications described in this article may be filed by any natural or legal person provided that it represents a group of persons, whatever its form of organization, that carries out its productive or processing activity in the place to which a foreign geographical indication or appellation of origin refers. Competent public authorities may also apply for registration of a foreign geographical indication or appellation of origin. *Amended by Article 18 of Decree Number 3-2013 of 26-06-2013.

The Registry shall proceed to evaluate the application in accordance with the following:

a)Examination of the Application: The application for registration of a geographical indication or an appellation of origin shall be examined in order to verify whether it complies with the provisions of this Law and its regulations. In the event that the Registry determines that the application does not meet the established requirements, it shall formulate an objection. If the information and/or documentation provided is insufficient, the Registry shall require the applicant to remedy the deficiencies or comply with the necessary clarifications or additions. In both cases, it shall grant the applicant a time limit of two months to respond. Said time limit may be extended only once, at the applicant's request.

If the Registry considers that the ground for objection persists, it shall issue a reasoned decision rejecting the application. If the applicant does not express a view within the provided time limit or within that of the requested extension, the application shall be deemed abandoned; apart from this case, only in case of inactivity of the applicant during the time limit provided in Article 12 of this Law may the application be deemed abandoned.

b)Publication of the Application: Once the Registry determines that the application complies with the provisions of this Law and its regulations, it shall order publication thereof in the official Bulletin of the Intellectual Property Registry -BORPI- only once, at the applicant's expense. The notice or edict of the application shall contain the information determined by the regulations of this Law. For purposes of knowledge thereof by third parties, the Registry shall make the application available, including by electronic means.

c)Opposition: Only oppositions filed by those who have a legitimate interest, including third States or countries, shall be admitted. Legitimate interest shall be presumed to exist when the opposition is based, inter alia, on:

I.Having omitted in the summary the description of one or more of the conditions that the geographical indication or appellation of origin must meet to be considered as such;

II.The possibility or risk of misleading the consumer;

III.The circumstance that the sign applied for affects an indication or appellation already registered, wholly or partially homonymous; or,

IV.The inadmissibility of the sign as established in Article 80 of this Law.

d)Decision: The Registry shall determine the admissibility of the application within a time limit not exceeding three months following the date of expiry of the time limit for filing an opposition or, as the case may be, of the time limit for responding to the opposition filed. If it deems it necessary, the Registry may request the technical opinion of such public or private entities as it deems appropriate, at the applicant's expense. The opinions requested shall be submitted to the Registry within the month following its request, unless the consulted entity requests an additional time limit which in no case may be longer than two months. The time limit granted to obtain the technical opinions shall not be counted in the three months established at the beginning of this paragraph.

e)Amendments to the specification: If as a result of the study carried out of national applications it is found necessary to make amendments to the specification, the Registry shall notify the applicant so that the applicant may express its views and, if the applicant considers it appropriate, make the corresponding adjustments, within a time limit of no more than two months. With or without the applicant's answer, the Registry shall decide on the application within a time limit of no more than three months. *Amended by Article 19 of Decree Number 3-2013 of 26-06-2013. *Amended by Article 3, third paragraph, of Decree Number 24-2018 of 15-11-2018

The decision by which the recognition and protection of a geographical indication or a designation of origin is granted or denied shall be based on the Law and on the relevant information contained in the file and shall contain the requirements established by the regulation of this Law.

In the decision itself the Registry shall order that, at the expense of the interested party, a notice of the decision favorable to registration be published in the Bulletin of the Intellectual Property Registry -BORPI- and protection shall take effect on the day following publication. Geographical indications and designations of origin shall be entered in a special book, in which the relevant data shall be recorded. Registration does not entail designation of ownership or property over the sign but rather its recognition, registration and protection as such, in accordance with this Law.

Registration shall have indefinite validity and shall be determined by the continued existence of the conditions that gave rise to it. The respective registration may be modified at any time, when the information contained in the approved specification changes. The request for modification shall incur the fixed fee, and shall be subject to what is established in this chapter and, as applicable, to the provisions provided in this Law with respect to marks. *Subparagraph b) amended by Article 50 of Decree of Congress Number 11-2006 of 30-05-2006; *Amended by Article 20 of Decree Number 3-2013 of 26062013; *Amended by Article 3, third paragraph, of Decree Number 24-2018 of 15-11-2018

Within a time limit of no more than six months, counted from the publication of the notice referred to in the preceding article, the applicants shall prepare and submit to the Register the corresponding rules governing the use and administration of the national geographical indication or appellation of origin in question. The indicated time limit may be extended for an additional period of three months, only once, at the request of the applicants.

Once the rules governing use and administration have been approved by the Register, it shall order that there be published, in the Bulletin of the Intellectual Property Register -BORPI- and at the expense of the interested party, a notice of the favorable decision regarding its approval. No authorization of use may be granted for a geographical indication or appellation of origin, nor may these be used with the scope and protection that this Law recognizes, until such publication has been effected.

The rules governing use and administration shall regulate matters relating to the administrative body for the sign and to authorizations of use, among other aspects established by the regulations under this Law. For purposes of issuing authorizations of use, the administrative body shall establish expeditious procedures and may not deny them for reasons other than those provided for in this Law.

Within the three months following approval of said rules, the persons who shall comprise the administrative body must be designated and due notice given to the Register so that such information is recorded in the file and in the corresponding registration. Any replacement of the persons comprising the administrative body must be communicated to the Register within a time limit of no more than fifteen days following their designation.

The appointment of the members of the administrative body, by means of which they shall establish their legal standing before the judicial or extrajudicial instances where they are to act, shall be set forth in a notarial record, shall be entered in the book kept for such purpose in the Register and shall be endorsed by the Registrar.

Those authorized to use a registered national geographical indication or appellation of origin shall use it together with the expression Protected Geographical Indication or Protected Appellation of Origin. Such legends are independent of the trademark identifying the product in question.

The user shall be obliged to use it as it appears protected, observing all regulations applicable thereto and in such a way as not to threaten to discredit it. The administrative body may suspend or definitively cancel the authorization in the cases provided for in the rules governing use and administration or in the regulations under this Law. Use by a person who does not comply with the specification of conditions and rules of use, as well as use despite the suspension or cancellation of an authorization, shall entitle the administrative body to enforce the corresponding procedural actions. *Third paragraph amended by Article 51 of Decree of Congress Number 11-2006 of 30-05-2006; Amended by article 21 of Decree Number 3-2013 of 26-06-2013; *Amended by Article 3 third paragraph of Decree Number 24-2018 of 15-11-2018

Geographical indications or appellations of origin may not be considered generic as long as they remain protected in the Country of their origin. Once a geographical indication or an appellation of origin is registered, only individual or legal persons who have been authorized and comply with the specification and the rules on use and administration may use it on their products. By virtue thereof, the registered sign is protected against its direct or indirect commercial use, including advertising and information about the trader, for the products included in its registration, or for different products if such use misleads the consumer or constitutes undue exploitation of the reputation of a sign. Consequently, the interested party may bring an action before the competent authority and obtain the measures established in this Law that are necessary to prevent the commission of or to cause the cessation of any of the following acts:

a)The registration of a mark that is identical, similar to or constitutes a translation of the protected geographical indication or appellation of origin;

b)The use of any means which, in the designation or presentation of a product, indicates or suggests that it comes from a geographical area different from the true place of origin, if as a result the public is misled as to the true geographical origin of the product;

c)The use of the protected geographical indication or appellation of origin for the same products that are not originating from the place designated by it, even if the true origin of the product is indicated or the geographical indication is used translated or accompanied by expressions such as style, type, class, manner, imitation, or other similar expressions;

d)Any other practice that misleads the public as to the true origin of the product, or any other act of unfair competition in the terms set forth in this Law. *Amended by Article 22 of Decree Number 3-2013 on 26-06-2013.

If, after the application for registration of a geographical indication or an appellation of origin has been filed, registration of a trademark falling within any of the cases set forth in Article 87 of this Law is requested for identical or similar products, it shall be considered by the Registry as a case of inadmissibility of the latter due to impairment of third-party rights and, consequently, the provisions of Article 25 of this Law shall apply. This provision shall not affect applications based on or related to a trademark previously registered in good faith for the same products. *Amended by Article 23 of Decree Number 3-2013 of 26-06-2013.

It is lawful: a) the use of an element of a geographical indication or appellation of origin or a translation thereof, which prior to the application for registration was considered in Guatemala as a generic name or generic denomination; and b) in the case of products other than wines and spirituous beverages, the use of a foreign geographical indication or appellation of origin, of an element thereof, or of a similar element, whose use has been made in Guatemala, in good faith and continuously with respect to products identical, similar or connected to those set forth in the registration of the foreign geographical indication or appellation of origin, for at least a period of three years prior to the date of filing of the application for registration. *Amended by Article 24 of Decree Number 3-2013 of 26-06-2013.

A protected geographical indication or appellation of origin may be cancelled by final enforceable judgment when the conditions stated in the specification cease to be fulfilled. The request for cancellation may be filed by any interested person through the oral trial, justifying the grounds for their claim.

Geographical indications or appellations of origin of another country shall be cancelled by the Registry at the request of the person who obtained its registration or of any person, when it is proven by documentary evidence that it has ceased to be protected in the country of origin.

Nullity of the registration shall apply if it was obtained in contravention of the provisions of Article 80 of this Law. In this case the action for nullity shall be brought before a Judge of First Instance of the Civil Branch, by any person. The nullity of the register may not be declared on grounds that have ceased to be applicable at the time the nullity is decided. *Amended by Article 52 of Decree of Congress Number 11-2006 on 30-05-2006; *Amended by Article 25 of Decree Number 3-2013 on 26-06-2013.