Well-known marks under the Nicaraguan Trademark Law

The exclusive right over a mark in Nicaragua arises from registration. The owner of a registered trade or service mark enjoys the exclusive right to prevent third parties from using in commerce an identical or similar mark, for identical, similar or different goods or services, provided that such use gives rise to a likelihood of confusion. A notable exception are well-known marks.

A well-known mark is defined by the Nicaraguan Trademark Law (Law No. 380 of 2001, as amended by Law No. 580 of 2006) as a mark which is known by the relevant sector of the public or by business circles in Nicaragua, or in international trade, regardless of the way or the means by which it has become known.

Nicaraguan Trademark Law allows owners of well-known marks to protect their mark independently of its registration status, and outside of the principle of specialty, under which a mark is protected only for the same or similar goods or services.

Article 80 sets forth a series of factors for determining if a mark is well known, which follows the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted in 1999 by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organization (WIPO). Such factors are:

  • The degree of knowledge of the mark by the relevant sector within Nicaragua;
  • the duration, extend and geographical extension of the use of the mark, within Nicaragua or abroad;
  • the duration, extend and geographical extension of the promotion of the mark within Nicaragua or abroad, including advertising and the presentation of the goods or services at fairs, exhibitions or other similar events;
  • the existence and seniority of registrations or applications in Nicaragua or abroad;
  • actions taken in defense of the mark, and particularly, decisions rendered by national or foreign authorities declaring the mark to be well-known; and
  • the worth of any investment intended to promote the mark, or to promote the establishment, activity, goods or services identified by the mark.

Article 82 states that in order to determine that a mark is well-known, it is sufficient for the mark to be known within one of the relevant sectors. It identifies the relevant sectors in determining the well-known status of a mark as follows:

  • Actual or potential consumers of the type of goods or services to which the mark applies;
  • persons involved in marketing channels of the type of goods or services to which the mark applies; and,
  • business circles dealing with the type of establishment, activity, goods or services to which the mark applies.

Article 81 adds that the factors referred to in Article 80, taken as a whole or separately, may be sufficient to determine that a mark is well-known. A mark may be declared to be well-known, even if the mark does not comply with the factors set forth in Article 80, provided that other relevant facts are taken into account.

Article 81 further states the factors that cannot be required to declare a mark to be well known:

  • That the mark has been registered or an application for registration has been filed in Nicaragua or abroad;
  • that the mark has been used or is being used in commerce in Nicaragua or abroad;
  • that the mark is well-known abroad, except when it is not known in Nicaragua for other reasons; or,
  • that the mark is well known by the public at large in Nicaragua.

Subparagraph d) of Article 8 of the Trademark Law states that a sign may not be registered as a mark if such sign constitutes a reproduction, imitation, translation, transliteration or transcription, either totally or partially, of a well-known mark belonging to a third party, whatever the goods or services identified by the sign, if the use of such sign may cause a likelihood of confusion or association with a well-known mark, or a risk of dilution of its distinctive character or commercial or advertising value, or would unfairly take advantage of the mark's well-known status.

In addition to having standing to oppose an application for registration on the basis of said provision, the owner of a well-known mark may exercise the appropriate actions to prevent others from using the mark (Article 83).

Article 84 defines the unauthorized use of the well-known mark as the use of the mark in whole or in an essential part, as well as the reproduction, imitation, translation or transliteration of the mark, in relation to the same or similar goods, services, establishments or activities, if such use is likely to create confusion. Unauthorized use also includes any use in relation to different goods, services, activities or establishments, even for non-commercial uses, if such use is capable of creating a risk of confusion or association with the owner of the well-known mark or the establishment, goods, services or activities identified by the well-known mark; or causes unfair economic or commercial damage to the owner of the well-known mark due to dilution of the distinctive character or the commercial or advertising value of the well-known mark; or takes unfair advantage of the goodwill of the well-known mark or its owner.

The use of a well-known mark as a domain name, e-mail address, or name or designation in electronic media also constitutes unauthorized use.

An action against the unauthorized use of a well-known mark must be initiated within five years from the date on which the owner of the well-known mark became aware of such use, unless bad faith was involved.

Please contact us for additional information.

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