Título VI. Acciones procesales

In all judicial proceedings for the protection of the rights regulated in this law and to combat acts of unfair competition, the following general principles shall be observed:

a)Industrial property rights are private-law rights, without prejudice to the obligation of the State to safeguard and protect such rights; and

b)The State shall ensure that effective, prompt and efficient measures are established against any act or omission infringing industrial property rights, including to prevent such violations and to deter new violations.

Unless otherwise expressly stipulated in the contract, the exclusive licensee may bring the judicial actions established in this law for the purpose of protecting its rights as such.

If the license contract does not authorize the licensee to take judicial action, it may initiate the respective actions if it proves that it has required the holder of the right to exercise them and that more than two months have elapsed, counted from the date of the requirement, without such actions having been brought. Nevertheless, before such time limit elapses, the licensee may request and obtain the precautionary measures established in this law.

The holder of the infringed right may at any time appear in the proceedings initiated by the licensee.

In case of co-ownership of a right, any of the co-owners may bring the action by reason of a violation without the consent of the others being necessary, unless otherwise agreed or stipulated.

Civil-branch Trial Courts have jurisdiction to hear civil or commercial actions brought in accordance with the provisions of this Law, unless Trial Courts with special jurisdiction to hear such matters are established and organized.

The civil or commercial proceedings brought in exercise of the actions regulated by this law shall be processed in accordance with the procedure of the oral trial, established in Book Two, Title II, Chapters I and II of the Civil and Commercial Procedural Code.

Notwithstanding the provisions of this article and any other provision contained in this law that gives rise to civil or commercial actions, interested parties may also use alternative methods of resolution of disputes, such as conciliation and arbitration.

In all proceedings regulated by this law, all persons whose rights appear registered in the respective register in relation to the infringed right or whose annulment or nullity is sought shall be summoned as third parties.

The compensation for damage and losses that is due as a consequence of the proceedings regulated by this law shall be calculated, among others, on the basis of the following criteria:

a)The damage shall be calculated in accordance with the damage suffered by the right holder as a result of the infringing activity, and may include, among others:

1.The loss of profits by the right holder as a result of the violation consisting of the improper use of the registration or of the null and cancelled patent or of acts of unfair competition, based on the suggested sale prices or other legitimate measure of value submitted by the right holder;

2.The price that the defendant and/or accused would have had to pay for a contractual license, taking into account the commercial value of the infringed right and all contractual licenses already granted; and

b)The losses shall be calculated on the basis of the profit obtained by the infringing party as a result of the acts on which the proceedings are based.

In the case of violations of a mark, the right holder may opt for compensation equivalent to a maximum of ten (10) times the commercial value of each of the infringing goods subject to seizure, confiscation or attachment as if they were legitimate products. Such compensation shall be determined by the corresponding tribunal in the jurisdiction of the defendant and/or accused, in an amount sufficient to compensate the damage caused to the right holder by the violation, as well as to deter future violations. *Amended by Article 70 of Decree of Congress Number 11-2006; the last paragraph enters into force three years after the entry into force of the TLC.

The judicial authority that within civil proceedings issues a judgment declaring upheld one of the actions provided for in this law on the merits of the case may:

a)Order that the infringing goods be removed from the channels of commerce without any compensation in such a way as to avoid causing damage to the holder of the right, or that they not enter the channels of commerce after their customs clearance, or that they not be exported, or that they be destroyed as objects of unlawful trade;

b)Order the destruction of the infringing merchandise;

c)Order the destruction of the materials and instruments that have been used in the production of the infringing goods, without any compensation to their owner; or in exceptional cases, without compensation of any kind, order that they be set apart from the channels of commerce as a means to minimize to the greatest extent the risks of new violations. When considering requests for their destruction, the tribunals shall take into account the seriousness of the violation, among other factors, as well as the interest of third parties, of holders of rights of action against the thing, rights of possession or contractual or guaranteed rights;

d)Prohibit the entry of the merchandise into the channels of commerce;

e)Provide that the infringing goods may be delivered free of charge by the judge to non-profit entities, private or public, so that they may use them exclusively in works or activities of social welfare, with the prior authorization of the holder of the right, after prior elimination or removal of the distinctive signs and that the merchandise can no longer be identified with the removed mark. The mere removal of the mark from the merchandise shall in no case suffice to authorize the entry of the merchandise into the channels of commerce.

f)Order that the infringing acts or acts of unfair competition cease and that the necessary measures be taken to prevent their consequences and recurrence and order compensation for the damage and losses;

g)Order the infringing party to disclose all information in its possession concerning any person participating in any aspect of the violation and concerning the means of production or distribution channels of the infringing products or services, including the identification of third parties participating in their production and distribution and their distribution channels, delivering this information to the holder of the right. The judicial authorities shall be empowered to impose sanctions, where applicable, on a party that fails to comply with the valid orders issued by the authority; and

h)In cases of counterfeiting, order the seizure of the documentary evidence relevant to the violation. *Amended by Article 71 of Decree of Congress Number 11-2006 on 30-05-2006

Whoever initiates or intends to initiate an action relating to industrial property rights, or otherwise, on the occasion of the commission of acts of unfair competition in accordance with the provisions of this law, may request the competent judge to order any precautionary measure that he deems appropriate in order to protect his rights, to impede or prevent the commission of a violation, to avoid its consequences and to obtain or preserve evidence. The judge in the same decision in which he decrees the requested measures may require the plaintiff, prior to their execution, to post a bond or other sufficient guarantee to protect the party affected by the measure and the authority itself and likewise to prevent abuses.

The precautionary measures may also be requested after the filing of the memorial of claim. When the measure is not requested beforehand, but with the claim or after it, it shall not be necessary to post any guarantee.

The judge shall order and execute the measures requested of him within the non-extendable time limit of two (2) days, provided that the applicant or petitioner has accompanied evidence of ownership of the infringed right and reasonably available evidence allowing the reasonable presumption of the violation or its imminence. In the event that a guarantee is required, the time limit established at the beginning of this paragraph shall be forty-eight hours counted from the filing of the required bond or guarantee.

When ordering the relevant precautionary measure in the case of a patent of invention, such patent shall be presumed to be valid.

All precautionary measures shall be processed and executed without notification nor intervention of the defendant party, but they shall be notified to the latter at the time of their execution or immediately thereafter. The tribunals shall take the necessary measures to ensure that the request for precautionary measures is kept in reserve.

If the measures are ordered before the action is initiated, they shall be without effect by operation of law if the party who obtained them does not file the corresponding claim within a time limit of fifteen days, counted from the date on which the measures were executed. *Amended by Article 72, of Decree of Congress Number 11-2006 on 30-05-2006

The Judge shall order, according to the case, the orders that prudently tend to protect the right of the complainant or petitioner, such as:

a)The immediate cessation of the use, application, placement and commercialization of the infringing products and of the unfair acts;

b)The seizure of the infringing products, including the containers, packaging, wrappers, labels, printed or advertising material, machinery and other materials that are the result of the violation or have been used to commit it, and the means used to commit the violation;

c)The prohibition of the importation of the products, materials or means referred to in the preceding subparagraph;

d)The confiscation and transfer to judicial warehouses of the products, materials or means referred to in subparagraph b);

e)The measures necessary to prevent the violation or the acts of unfair competition from continuing or being repeated, including the destruction of the products, materials or means referred to in subparagraph b);

f)The annotation of the claim in the registration whose nullity or annulment is sought; and

g)The suspension of the registrations or sanitary licenses or of another nature, that are necessary for the entry, distribution, sale or commercialization of the infringing products.

The mere removal of the unlawfully used or affixed marks shall not prevent the measures established in this article from remaining in force nor shall it be sufficient to allow the merchandise or products to be introduced into commercial channels. *Amended by Article 73 of Decree of Congress Number 11-2006 of 30-05-2006

Once an interim protective measure intended to secure the outcome of the proceedings with respect to the restorative claim in a civil or commercial action has been granted, it may not be set aside by means of a reasonable security or guarantee. Reasonable security or guarantee may only be granted to obtain the lifting of orders or interim protective measures intended to secure or protect a compensatory claim properly so called stricto sensu. Therefore, Article 533 of the Civil and Commercial Procedural Code or any other similar provision shall not be applicable to interim protective measures such as those described in subparagraphs a), b), c), d), e) and f) of the first paragraph of Article 187 of this law. *Amended by Article 74 of Decree of Congress Number 11-2006 of 30-05-2006

The petitioner may, in the claim or in the request for precautionary measures, request that a judicial inspection of places, documents or things that are related to the infringed right be previously carried out, or, as the case may be, where acts aimed at the commission of the violation of industrial property rights or acts of unfair competition are allegedly being committed or prepared, in which case the judge shall order and execute it without requiring any guarantee. For the ensuing effects, the decision ordering the conduct of the judicial inspection shall implicitly include the order of entry and search.

The judicial inspection may be supplemented by the presence of experts appointed by the plaintiff party or by the tribunal itself; likewise, the judge may order the exhibition of movable things or documents. At the request of a party and in the judge's discretion, scientific means of evidence may also be employed and photographs may be taken or the inspected objects or places may be captured with image and sound and, in the case of the documents, they may be examined and copied by any means.

In the judicial inspection proceeding the judge may order the precautionary measures that have been requested and, if applicable, shall fix the amount of the corresponding guarantee, in accordance with the provisions of Article 186 of this Law. If within the time limit of five following days the applicant does not furnish or post the fixed guarantee, the judge shall order the lifting of the measures ordered.

The border precautionary measure may be requested as follows:

a)The holder of a right protected by this law relating to trademarks, or its licensee, who has sufficient indications of an alleged importation or exportation of goods that harm or infringe its rights, may ask the judicial authorities to order the respective customs office to suspend clearance and entry or the export process thereof.

b)Without prejudice to the foregoing, the customs authority may request, on its own initiative, before the competent judicial authority, the border precautionary measure, when it suspects that imported, exported or in-transit merchandise infringes a right protected by this law, without the need for a private entity or the holder of the right to file a formal private criminal complaint. *Amended by Article 75 of Decree of Congress Number 11-2006 of 30-05-2006; subparagraph (b) shall enter into force four years after the entry into force of the FTA.

The judge of first instance having jurisdiction in the territory where the corresponding customs office is located shall be competent to hear the application for the border measure. In any case, in addition to the special provisions contained in this section, the provisions and the procedure established in this Law shall be those for the case of precautionary measures.

In addition to the pertinent requirements, in the application for border measures the petitioner shall:

a)Provide evidence from which reasonable indications of the alleged violation may be inferred; and

b)Describe in sufficiently detailed form the legitimate goods and provide all such reasonable information as is within the knowledge of the right holder so that the suspect goods may be readily recognized by the customs authorities.

Before deciding, the judge may require the applicant and/or the right holder to submit additional evidence or information that may reasonably be expected to be within their knowledge. In any case, compliance with this requirement and with the requirement contained in subparagraph (b) shall not be unreasonable so that the procedure may be expeditious and not dissuasive of the use of the procedures. *Amended by Article 76 of Decree of Congress Number 11-2006 of 30-05-2006

The decision ordering the suspension shall be notified immediately to the applicant and, once it has been executed, to the importer, consignee or exporter of the goods or products. In the latter case, the notifications may validly be made to the customs brokers accredited before the respective customs office.

The suspension of imports or exports shall be in force for a time limit of ten days, counted from the date of the notification of the corresponding decision to the applicant. Said time limit may be extended only once for ten more days, if within the original time limit, the applicant for the measure proves that it has initiated judicial action on the merits of the matter or has obtained from the judicial authority confirmation of the suspension as a precautionary measure.

If the judicial action on the merits of the matter is not brought, or the measure is not judicially ordered as a precautionary order, upon expiry of the time limit established in the preceding paragraph or its extension, the suspension shall cease to have effect and the customs authority shall proceed to the clearance of the respective goods.

Judicial public officials who order or execute border measures shall be exempt from all liability, unless it is proven that they acted in bad faith or without strict adherence to the rules contained in this chapter.

Without prejudice to the obligation to provide protection to confidential information, the judicial authorities that ordered the border measure may authorize the party who initiated it free access to the detained merchandise or products, so that it may inspect them and obtain additional means of evidence in support of its claim. The importer or exporter shall have the same right. This measure shall be carried out in the presence of the respective judicial authority, with summons to the opposing party.

In any case, whenever the authority determines that the detained merchandise or products infringe a trademark, said authority shall provide to the right holder all information relating to the name or identification of the shipper, consignee or importer, including their address and the quantity of infringing articles. *Amended by Article 77 of Decree of Congress Number 11-2006 on 30-05-2006

Whoever requested the border measure shall be liable to the importer, the consignee and the owner of the retained goods, for the damage and losses caused in the following cases:

a)If they do not file the claim within the time limit of fifteen days following the date on which the measure was executed;

b)If the measure is revoked; or

c)If the claim is declared inadmissible.

When the tribunal has determined that the goods are counterfeit, it shall order their destruction, unless the right holder authorizes that they be disposed of in another manner.

The right holder may authorize the donation of the non-destroyed goods to charity services for their use outside commercial channels; it shall not suffice that the trademark be removed to dispose of the goods in the manner described herein. The removal of the trademark shall eliminate the infringing characteristics of the goods so that they can no longer be identified with the removed trademark.

The mere removal of the unlawfully affixed trademark shall not suffice to allow clearance of the goods into commercial channels. Except in exceptional circumstances, the tribunal shall refrain from authorizing the export of counterfeit merchandise or allowing it to be subject to a different customs procedure. *Amended by Article 78 of Decree of the Congress Number 11-2006 of 30-05-2006

In the event that a charge for storage or for the application is established in connection with border measures to enforce intellectual property rights, the amount of such charge shall not unreasonably discourage recourse to such measures. *Amended by Article 79 of Decree of Congress Number 11-2006 on 30-05-2006

The competent authorities shall be empowered to require that the holder of a right who has initiated suspension proceedings post reasonable security or equivalent assurance, sufficient to protect the accused and the competent authorities, and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to such proceedings and the same may be an instrument issued by a financial services provider to hold the importer or owner of the imported merchandise harmless from damage or losses resulting from the suspension of the clearance of the merchandise, if the competent authorities determine that the merchandise is not infringing. *Amended by Article 80 of Decree of Congress Number 11-2006 of 30-05-2006

The holder of a right protected under this law may bring a judicial action against any person who infringes his right or who performs acts that manifest the imminence of a violation. To that end, in order for such rights to be maintained and respected and for him to be restored to the full exercise and enjoyment thereof, the right holder may judicially exercise any of the actions established in subparagraphs b), c), d), e), f) and g) of Article 35 of this Law.

When a patent or a registration has been applied for or obtained by a person who had no right thereto, or to the detriment of another person to whom such right also belonged, the affected party may request in his lawsuit that the pending application or the granted right be transferred to him.

The holder of a patent or of an industrial design may claim compensation for damage and losses from any person who, without their authorization, has used or exploited the claimed invention, the utility model or the industrial design during the period comprised between the date of publication of the application and the date of grant of the patent or of the registration.

Compensation for damage and losses shall only be available, in this case, with respect to the subject matter claimed in the patent or the registration and shall be calculated on the basis of the exploitation actually carried out by the defendant during the mentioned period.

Where the subject matter of an invention patent is a process for obtaining a new product and the latter has been produced by a third party without the consent of the patent holder, it shall be presumed, unless there is evidence to the contrary, that the product has been obtained by means of the patented process. Therefore, it shall be incumbent upon the defendant to prove that he has used a different process.

In the presentation of any evidence to the contrary, the legitimate interests of the defendant for the protection of its business secrets shall be taken into account, although this shall not relieve the defendant of the burden of proof.

The civil action for infringement of the rights conferred by this law lapses after two years counted from the holder of the infringed right having become aware of the infringement, or after five years counted from the infringement having last been committed, the time limit that expires first applying. In the case of infringement regarding inventions established in Article 198 of this law, the respective action shall lapse after five years counted from the date of grant of the patent.

The action for vindication of the right shall lapse after five years counted from the date of registration of the patent or registration. The right shall not prescribe nor shall the action lapse if whoever obtained the patent or registration acted in bad faith.

The action for a declaration of the nullity of the registration of a distinctive sign or of a patent or registration of an industrial design, in the cases established in Articles 67 and 139 of this law, may be brought by the Attorney General, when the interests of the State are affected, and also by any person who considers himself or herself affected.

The action to annul a registration or a patent may only be brought by the party affected by the grant of the registration or of the patent, who may also claim vindication of the sign, the invention, the utility model or the industrial design and payment of the damage and losses caused.

The nullity or annulment of a right protected in accordance with this Law may be raised as an action, as a peremptory exception or by way of counterclaim.

The action for a declaration of absolute nullity of a registration or of a patent does not lapse.

The action for annulment of a registration or of a patent lapses five years following the date of registration or of the grant of the patent, if the distinctive sign, the invention, the utility model or the industrial design have been in commerce for at least a time limit of two years. If the sign, the invention, the utility model or the industrial design have not been used commercially, the time limit for lapse of the voidability action shall be three years, counted from the date of the first non-commercial use. The time limit for lapse of the annulment action does not run as long as the sign, the invention, the utility model or the industrial design are not used commercially by the alleged infringer, nor when they have been obtained in bad faith by the defendant.

Without prejudice to the provisions of the following paragraph, a person who considers himself or herself affected may request the competent authority to ascertain and declare the unlawful character of an alleged act of unfair competition.

Any person who considers himself or herself affected may directly initiate an action against an act of unfair competition. In addition to the person directly harmed by the act, any association or organization representing any professional, business or consumer sector may exercise the action when the interests of its members are affected.

For the exercise of this action it is not indispensable to prove ownership of a right protected by this law; consequently, the claimant shall only be required to prove the existence of an act of unfair competition by the defendant.

The action for unfair competition lapses after two years counted from the date on which the holder of the right had knowledge of the act of unfair competition, or after five years counted from the date on which the act was last committed, the time limit that expires later applying.

The exercise of the criminal action against those responsible for the crimes and misdemeanors defined in matters of Industrial Property in the Criminal Code and other laws corresponds to the Public Prosecutor's Office. The holder or licensee of the infringed rights may trigger the criminal prosecution by reporting the violation of such rights or join the prosecution already initiated by the Public Prosecutor's Office, which entity shall be obliged to act directly and immediately against those responsible. Any association or organization representing any sector of production or of consumers may also seek the criminal prosecution.

The Public Prosecutor's Office shall request the competent judge to authorize any of the precautionary measures established in this law or in the Code of Criminal Procedure that are necessary to safeguard the rights recognized and protected by this law and in the international treaties on the subject matter to which Guatemala is a party, and which are being infringed, or where its violation is imminent.

Once the request has been filed, the judge shall proceed as established in Articles 186 and 187 of this law, authorizing the Public Prosecutor's Office to proceed to its enforcement with the assistance of the necessary police authority.

The judicial authorities shall be empowered to:

1.Order the seizure of goods suspected of being counterfeit, any related material and implement that has been used to commit the violation, any asset traceable to the infringing activity and all documentary evidence relevant to the crime. Goods subject to seizure as a result of such judicial order need not be individually identified, provided they belong to the general categories specified in the order; and

2.Order, among other measures:

a)The seizure of all assets traceable to the infringing activity; and

b)The seizure and destruction of all counterfeit goods, without any compensation to the accused in order to prevent the counterfeit goods from re-entering the channels of commerce. *Added by Article 81 of Decree Number 11-2006 of the Congress of the Republic of Guatemala

At any stage of the proceedings, if there is an agreement between the holder or licensee of the infringed rights and the person or persons liable accused of the criminal offense, and the former have been satisfactorily compensated for the damage caused and have been paid or, alternatively, duly guaranteed for the losses caused by the commission of any of the crimes established in Intellectual Property matters, the Public Prosecutor's Office, with prior judicial authorization, may refrain from continuing the criminal action in accordance with the provisions of the Code of Criminal Procedure. In this case, the judge shall order the respective interim protective measures to be lifted, as well as the case file to be archived.