• Detailed information about the Nicaraguan Trademark Law...
• Nicaragua's Trademark Law at a glance...

 Requirements  

Registration 

• Power of Attorney, legalized up to the Nicaraguan Consul. We provide a general form useful for trademark and patent applications. 
• Four prints for device marks. 
• Specification of goods or services and International Class. 

Renewal 

• Power of Attorney, legalized up to the Nicaraguan Consul.
• The application for renewal can be filed within one year of the due date. There is a six-month grace period for filing renewal applications after the due date. 

Assignment 

• Power of Attorney, legalized up to the Nicaraguan Consul, unless it has been  included in the Assignment Document. 
• Executed Assignment Document legalized up to Nicaraguan Consul. 

Change of Name 

• Power of Attorney, legalized up to the Nicaraguan Consul. 
• Change of Name document legalized up to Nicaraguan Consul. 

Merger 

• Power of Attorney granted by the applicant, legalized up to the Nicaraguan Consul. 
• Merger document legalized up to Nicaraguan Consul. 

License of Use 

• Power of Attorney, legalized up to the Nicaraguan Consul.
• License of Use Agreement legalized up to Nicaraguan Consul.

  Nicaraguan Trademark Law   

The new Trademark Law was published on April 16, 2001.  

The object of the Law are Trademarks, Service Marks, Collective Marks, Certification Marks, Publicity Slogans, Trade Names, Business Signs, and Appellations of Origin.  

A mark is construed as any sign capable of distinguishing goods or services. In particular, marks may be constituted of the following: words, drawings, combinations of words and drawings, labels, combinations of colors, sounds, trade dress (including the trade dress of a business), and other perceptible signs.

Absolute prohibitions to registration

The following signs may not be registered as trademarks:

1. Those that are generic for the goods or services that they seek to identify;

2. Those that are contrary to the law, public policy or accepted principles of morality;

3. Shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;     

4. Those that have become customary or usual to designate the goods or services in everyday or technical language;

5. Those consisting exclusively of indications that may serve to designate the kind, quality, or other characteristics of the goods or services;

6. Color in itself;

7. Those that may mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

8. Those that reproduce or copy the name, coat of arms, flag, decorations or other emblems of any State or International Organization.

Paragraphs d., and e. above do not apply if the mark has become distinctive in relation to the goods or services for which registration is requested as a result of the use that has been made of it.

Relative prohibitions to registration

The following signs or devices may not be registered as marks:

• Identical signs to an earlier application or registration designating identical goods or services;

• Identical or similar signs to an earlier application or registration designating identical or different goods or services, if it may give rise to a risk of confusion or  association with the earlier mark;   

• Signs identical or similar to an earlier trade name or a business sign, if the use of those signs may  give rise to a risk of confusion or association with the earlier trade name or business sign;   

• Signs which are a reproduction, imitation, translation or transliteration of a well known mark, whatever the goods or services, if their use may give rise to a risk of confusion or  association with the earlier mark, or may cause dilution to the earlier mark’s distinctive character.

• The name, image or pseudonym that identifies a person other than the applicant, unless with due consent;

• Signs that contain a protected appellation of origin for similar or different goods;

• Signs that reproduce or imitate creations protected by an industrial or other intellectual property right;

• Signs identical or similar to signs used in good faith in Nicaragua for the same goods or services.

Requirements for application 

• Power of Attorney, legalized up to the Nicaraguan Consul.
• Four prints for device marks.
• A listing of goods and/or services to be covered by the registration, grouped by classes according to the International Classification of Goods and Services (Multiclass applications are now allowed).

Priority

• Priority must be claimed along with the application or within two months of the application date.
• A Priority Document must be filed along with the application or within three months of the application date. The Priority Document must contain:
  • A certified copy of the priority application
  • Written evidence of the application date issued by the Office where the priority application was filed.

Registration Procedure 

1. Application.
2. Formal examination by the Office.
3. Publication for opposition.
4. Substantive examination by the Office, which includes examination for absolute and relative prohibitions.
5. Recording of the registration.
6. Publication of the registration and issuance of the Registration Certificate.

The registration of a trademark is granted for 10 years from the registration date, and may be renewed indefinitely, for further 10—year periods.

Opposition

Any interested third party may file an opposition in writing within two months of the publication of the application. Evidence in support of an opposition must be submitted within 30 days of the opposition date.

Oppositions may be based on earlier applications or registrations, and on the use in good faith of an identical or similar mark in Nicaragua.

Use

• Use of the mark is required within 3 years of registration.
• When answering an opposition, an objection by the Office, an action of invalidity or an action for infringement, the defendant may ask for the cancellation of the registration on the basis of lack of use.
• According to the implementing regulation a mark may be used in Nicaragua or in any country member of the WTO.

Content of Trademark Rights

The registration of a mark confers on its proprietor the right to prevent a third party from using the mark, and to bring the corresponding actions for infringement.  In particular, a proprietor may prevent a third party with the purpose of marketing goods or services from carrying out the following acts:

• To apply or to place an identical or similar mark on goods covered by the registration or on goods related to the services covered by the registration;
• To delete or modify the mark placed on goods;
• To re-fill or re-use containers or packages that bear the mark;
• To use in business an identical or similar mark for any goods or services if such use may lead to confusion, give rise to a risk of association with the registered mark or cause dilution to its distinctiveness;
• To publicly use an identical or similar mark for non-business purposes, if such use may cause dilution to the registered mark.

Provided that it is done in good faith, the registration of a mark may not prevent third parties from using in the course of trade:

• Their full name and address;             
• indications relating to the characteristics or goods or services, among others, those relating to kind, quality, quantity, intended purpose, value, geographical origin or price.                     
• Indications relating to the availability, use, or compatibility of goods or services, particularly in the case of accessories or spare parts.

Exhaustion of rights

The registration of a mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in Nicaragua or abroad under that mark by the proprietor or with his consent.

Protection of Well Known marks

Well known marks are protected against unauthorized use. The following criteria are relevant for determining if a sign is well known:

1. The degree of knowledge of the sign by the interested sectors within Nicaragua;

2. The duration, extend and geographical extension of the use of the sign, within Nicaragua or abroad;

3. The duration, extend and geographical extension of the marketing of the sign within Nicaragua or abroad, including advertising and displaying of the goods or services in trade events, expositions or other similar events;  

4. The existence and seniority of registrations or applications in Nicaragua or abroad;

5. Actions taken in defense of the sign, and particularly, decisions rendered by national or foreign authorities declaring the sign to be well known;

6. The worth of any investment destined to promote the sign, establishment, activity, goods or services protected by the sign.

Actions for infringement

Actions for infringement of trademark rights are brought up before a Civil Judge, and include the following remedies:

1. Cessation of the infringing acts;             

2. Compensation for the damages sustained;                                                                                      

3. The adoption of measures to prevent continuation of the infringement and, in particular, the withdrawal from the market of the goods, packaging, wrappers, advertising material, labels or other documents by means of which the infringement of the trademark right was committed;                    

4. Prohibition to the import or export of the goods, materials and means referred to in c) above;

5. Publication of the decision at the expense of the condemned party;

6. Announcements and notifications to the persons concerned.

Provisional and protective measures are also available. The following provisional measures may be ordered: 

• Cessation of the infringing acts;

• The adoption of measures to prevent continuation of the infringement and, in particular, the withdrawal from the market of the goods, packaging, wrappers, advertising material, labels or other documents by means of which the infringement of the trademark right was committed;                    

• Prohibition to the import or export of the goods, materials and means referred to in c) above;

An action for infringement must be brought up within 15 days of execution of provisional measures.

Assignments and Licenses of Use

Independently of the transfer of the whole or of part of the undertaking, a mark or an application for registration of a trademark may be assigned in any manner recognized by law. The assignment must be made in writing.

Both an application for registration of a mark and a registered mark may be licensed for all or part of the goods or services for which it is registered and for all or part of the Nicaraguan territory. Licenses may be exclusive or non-exclusive.

For a trademark assignment or license to have effect vis-à-vis third parties it must be made in writing and recorded before the Nicaraguan Trademark Office.

Current registrations

Current registrations will be governed by the new Trademark Law, as of the date of enforcement. At the time of renewal the applicant must modify the registration if its address has changed or had not been previously disclosed. 

 Nicaragua's Trademark Law at a Glance