Paraguay

FERRERE is pleased to announce that it has made Erika Bañuelos a partner at its Paraguay office.This news, in addition to strengthening the firm’s tax and customs practice, reflects FERRERE’s commitment to generating opportunities and to diversity. FERRERE’s regional managing director, Agustín Mayer West, affirmed: “It is a great honor to announce that Erika is joining the firm’s team of partners, as a practitioner who has been with us for nearly a decade. I am sure she will play a crucial role in our strategic development, especially in a legal market facing important changes and challenges.” In turn, the managing director of FERRERE Paraguay, Carlos Codas, said: “We are convinced that meritocracy is the right road to follow, fostering young talent and promoting diversity in all forms. We are proud to have witnessed Erika’s growth at our office. With her outstanding professional and human qualities, she will make a key contribution to the development of her practice area and to our team.” Erika Bañuelos leads the FERRERE tax and customs practice in Paraguay. She advises on corporate restructurings and tax optimization for clients. She assists clients with tax, customs and juridical authorities in administrative and contentious administrative matters. She teaches courses on the Corporate Legal Regime at the School of Administration of Universidad Nacional de Asunción. She is also IBFD correspondent in Paraguay and is the author of technical articles on tax matters. She is a lawyer and notary who graduated with honors from Universidad Nacional de Asunción and holds an LLM in International and European Tax Laws, specializing in customs law and international trade, from Maastricht University in the Netherlands.  

The advantages of an international system to protect inventions are undeniable and the PCT has proved its efficency in the countries where it has been implemented. The PCT works with a number of 153 countries adhered: this leaves an interesting number of countries operating solely with national systems for the filing of patent applications. Among others, Paraguay does not form part of the Patent Cooperation Treaty (PCT). This situation poses several matters to be considered regarding patent applications in Paraguay. First of all, priority claimings: the owner of a patent application filed abroad is allowed a 12 months period for claiming priority in the filing of an application in Paraguay, based on the Paris Convention. In the PTC, an applicant will have up to 30 months to initiate the proceedings in the national offices, with the possibility of better analyzing the situation before incurring in expenses of national filing. Another aspect to be considered is the international search report with viability opinion issued by specialized authorities within the PCT proceedings. In developing countries like Paraguay, these analysis could prove quite an excellent basis, in consideration of the scientific and human resources limitations destined to internal Examination at the PTO. On the other hand, this report allows applicant to foresee a preliminary schema of the invention protection. The expected timeframe in patent registration proceedings out of the PCT system could vary depending on the national office. While the PCT has stages strictly delimited, national offices will have to consider their own resources, mandatory periods and backlogs. We are aware of the growth experienced by members of the PCT in the invention field as well as the competitive advantages that this Treaty could grant to foreign companies willing to invest in Paraguay. The PCT is regarded as an opportunity for our country to have part in the international protection of investigation and development projects of our clients. Nevertheless, Paraguay is not yet a PCT member, and its posible adhesion to the Treaty is still being evaluated by authorities.

By Jazmin Alderete. In the next two years, it will be 25 years since the current Trademark Law No. 1294/98 and its Regulatory Decree No. 22365/98 were enacted in Paraguay. Such Trademark Law brought a new obligation for trademark owners that did not exist in the previous Law of 1979, which is the mandatory use of the registered mark. The current Law specifically provides that if such use does not start within 5 years from the registration date, or is suspended for more than 5 consecutive years without good reason, the registration shall be liable to cancellation at the request of a third party. In turn, the Decree that regulates the Trademark Law introduced a particular and novel provision on the use requirement that differs from the ones of other countries of the region, such as Brazil or Argentina, and certainly promotes the registration of foreign marks in our country. What is the particularity of this provision and how has it benefited owners of Paraguayan TM registrations?    Decree No. 22365/98 provides that the use of a trademark in any country shall be sufficient to comply with the use requirement of our Trademark Law. This means that if a trademark is not in use in Paraguay, but being used elsewhere in the world, the TM owner may invoke this provision and the evidence of such use should be sufficient to avoid a cancellation action.    Another relevant point to mention on this topic is that in Paraguay the evidence of use is not a requirement to validate a registration process nor to apply for a renewal, file oppositions or other actions. In fact, there are no particular use requirements for a registration process whilst in some other countries, it is mandatory to demonstrate either the use or an intention to use.   Likewise, our administrative Authority is not allowed to act ex officio to cancel or remove a registration in case the registered trademark has not been in effective use within the required period, as in some other countries. In Paraguay, a trademark registration may only be challenged by a third-party request.   Last but not least, it is noteworthy to mention that if a trademark is registered in several classes, and the TM is not in use in one class, it shall not be liable for cancellation if it has been in use for products or services of other classes. Therefore, the concept of partial cancellation does not apply in our jurisdiction.    Almost 25 years after the promulgation of the Law and its Regulatory Decree and with many constant global changes on IP matters in the middle, the mentioned provisions remain in effect and has benefited both Paraguayan and foreign owners in a country where the commercial flow is currently booming.  

By Patricia Brun.  For some time now, and auspiciously with increasing interest, measures have been taken for the protection and ethical and sustainable exploitation of the cultural heritage of indigenous peoples and local communities, of their traditional knowledge and traditional cultural expressions (folklore), through the Intellectual Property tools or sui generis law proposals.  We know, for example, that WIPO, through the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), has been promoting negotiations with its member states with a view to finalizing one or more international legal instruments to effectively protect the rights that correspond to local and indigenous communities.  Although to date an international legal instrument has not yet been finalized, either in the form of a recommendation or a treaty that binds the WIPO member countries that decide to ratify it, WIPO also supports with assistance and advice to the countries to strengthen national systems and so far there are already several countries that have granted protection to these rights through special national laws, although certainly with territorial scope.  All these efforts aim to achieve a better protection of these rights to prevent the misappropriation of, for example, traditional medicine, environmental knowledge, art and music of these communities, empowering them to control their commercial exploitation and obtain collective benefit therefrom.   In Paraguay, there is currently no specific legislation that provides Intellectual Property protection to the rights over traditional cultural expressions (folklore) and traditional knowledge of indigenous people and local communities. However, in the law that created the National Directorate of Intellectual Property in 2012, it was established as one of its functions to promote the recognition and use of indigenous traditional knowledge, in favor of indigenous peoples. Likewise, in 2016, Law No. 5621/2016 for the Protection of Cultural Heritage was enacted, which includes among the Cultural Heritage assets the expressions, traditions and knowledge of local communities and indigenous people. Although it does not contain specific provisions on protection of these rights through Intellectual Property tools, it establishes among its purposes to promote the creation of a national system for the protection of cultural heritage. As a result of these provisions, an inter-institutional Work Team has recently been formed, between the National Secretariat of Culture and the National Directorate of Intellectual Property, which is working on the design of the Public Policy for the Protection of Traditional Knowledge of Indigenous Peoples and local communities from the Intellectual Property perspective. We hope that this work team can soon make its actions tangible in an adequate regulatory framework to protect this valuable knowledge.