RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/226
23 November 2000
(00-4992)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Responses by Guatemala to Questions Posed by the United States
By means of a communication dated 21 November 2000, the Secretariat has received from the
Permanent Mission of Guatemala the following responses to questions posed by the United States,
which were circulated in document IP/C/W/215.
_______________
A. GENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which the laws of Guatemala
provide national treatment and most-favoured-nation treatment to nationals of other WTO
Members.
Guatemala's  legislation affords suitable and effective protection of intellectual property rights
under the following laws:
(a) The Law on Copyright and Related Rights, which regulates copyright on all types of
works and related rights, (performers, producers of phonograms and broadcasting
organizations);
(b) The Industrial Property Law, which regulates the corresponding rights for trademarks
and other distinctive signs (trade names, advertising material, geographical
indications and appellations of origin), patents (including plant varieties, utilitymodels, industrial designs and the suppression of unfair competition, including
provisions relating specifically to the protection of undisclosed information.
Both laws specifically cover the principle of national treatment, i.e:
(a) The Law on Copyright and Related Rights establishes in Article 2 that, in any matters
governed by the Law, the nationals of any country enjoy the same rights, legal
remedies and means to defend their rights as do Guatemalans.  This provision
establishes more particularly that works published abroad, as well as performances,
phonograms and broadcasts, the right holders of which are aliens not resident in
Guatemala, enjoy protection throughout Guatemalan territory, in accordance with theinternational treaties and agreements adopted and ratified by Guatemala.
(b) For its part, the Industrial Property Law, in connection with the intellectual property
rights protected by that Law, establishes in Article 3 that the nationals of anotherIP/C/W/226
Page 2
State bound to Guatemala by a treaty establishing national treatment for
Guatemalans, or persons who have their domicile or real and effective industrial or
commercial establishment in that State, sh all enjoy treatment no less favourable than
that it accorded to Guatemalans with respect to the acquisition, maintenance,
protection and exercise of the rights established by the Law or any rights to beestablished in the future.
As to the most-favoured-nation treatment principle, under the Guatemalan legal system the
provisions of any international treaty which has been ratified and which do not require the elaboration
of specific legislation are fully applicable, binding and enforceable.  This is the case with the
provisions of Article 4 of the TRIPS Agreement, which does not require any Guatemalan legislation
to be elaborated in order for it to be implemented.  Consequently, any advantage, favour, privilege,
immunity or right accorded by Guatemala to the nationals of any other country shall immediately andunconditionally extend to the nationals of all WTO Members.
B. 
COPYRIGHT AND RELATED RIGHTS
2. Please explain how Guatemala's copyright law protects computer programs, as literary
works and compilations  of data as required by Article 10 of the TRIPS Agreement and cite to
the relevant provisions of the law.
The Law on Copyright and Related Rights establishes in Article 15 that all literary, scientific
and artistic productions, regardless of the mode or form of expression are regarded as works, providedthey constitute an original intellectual creation, and paragraph (a) of the Article specifically mentions
computer programs.  More specifically, Article 30 of the Law establishes that computer programs are
protected under the same terms as literary works.
As to databases, under Article 16 works are also deemed to include databases and the like
when the selection or arrangement of the content constitutes an original creation.  In addition, under
Article 35 data compilations or databases, whether in machine-readable or any other form, are
regarded as collections of works for the purposes of protection.  Such protection does not extend to
the data or material contained in the compilations and does not prejudge the copyright on the data or
material.
3. Article 11 of the TRIPS Agreement requires that in most circumstances rental rights be
provided with respect at least to computer programs and cinematographic works and
Article 14.4 requires that rental rights be pr ovided by producers of phonograms.  Please
describe how Guatemala's law on copyright and neighbouring rights ensures that the required
rental rights are provided and cite to the relevant provisions of law.
Article 21 of the Law on Copyright and Related Rights establishes that the right holder's
economic rights include the authority to authorize or prohibit the distribution to the public of the
original or copies of the copyrighted works, whether by sale, rental, hire, loan or in any other manner.
This right is provided for all categories of works, without any distinction being drawn.  Authorized
distribution for sale does not extinguish the right of  rental or any other right established in Article 21.
With reference to computer programs, Article 31 of that Law prescribes that the right of rental
included in Article 21 does not apply to rentals where the computer program itself is not the essential
object of the rental.
As for the rights of phonogram producers, Article 58 of the Law establishes that they have,
inter alia , the exclusive right to authorize or prohibit the distribution of their phonograms or
reproductions.  The same Article specifies, in the second paragraph, that the right of distributionIP/C/W/226
Page 3
includes the authority to distribute phonograms either by sale, rental or in any other manner.  It adds
that, when the distribution is by rental, putting the original or authorized copies of the phonogram on
the market does not extinguish the right.
4. Please identify the term of protection availa ble with respect to works and with respect to
each form of neighbouring rights under Guatemala's law on copyright and neighbouring rights
and cite to the relevant provisions of law.
Guatemalan law recognizes authorship rights and economic rights.  Authorship rights include
the authority to claim authorship of the work and to oppose any distortion, mutilation or other
modification of the work that causes injury to the honour and the reputation of the author.  Pursuant to
Article 19 of the Law on Copyright and Related Rights, a moral right is inalienable andimprescriptible and cannot be renounced;  however, Article 20 of the Law specifies that, on the death
of the author, only the exercise of the authority referred to in Article 6 bis of the Berne Convention is
transmitted to his heirs, without any time limit.
As far as economic rights are concerned, Title II, Chapter V, of the Law includes rules on the
term of protection, specifying that:
(a) Generally speaking, economic rights are protected throughout the author's life and for
75 years after his death.  In the case of works created by two or more authors, the
term shall be reckoned from the death of the last co-author (Article 43);
(b) in the case of computer programs and collective works, the term of protection shall be
from the first publication of the work, or in the absence thereof, from the making of
the work (Article 44);
(c) in the case of an anonymous or pseudonymous work (Article 45), the term of
protection shall be reckoned from the first publication or, failing publication, from itsmaking.  Where the identity of the author is legally verified, the term shall be
reckoned in accordance with subparagraph (a);
(d) in the case of works consisting of several volumes, serials or periodic deliveries not
published in the same year, the period shall be reckoned for each volume, serial or
periodic delivery as from the respective publication (Article 46).
In all cases, the term shall be reckoned from the first of January of the year following the one
in which the act occurred (Article 48).
In the case of rights of performers, producers of phonograms and broadcasting organizations,
Article 51 of the Law establishes that they are protected for a term of 75 years, in accordance with the
following rules:
(a) In the case of phonograms and phonographic recordings, from the fixation of the
phonogram;
(b) in the case of performances not recorded on a phonogram, from the making of the
spectacle;  and
(c) in the case of broadcasts, from the transmission of the broadcast.
In all cases, the rights are protected from the start, but the term is reckoned from the first of
January of the year following the one in which the acts occurred.IP/C/W/226
Page 4
5. Article 13 of the TRIPS Agreement obliges WTO Members to confine any limitations or
exceptions to copyrights to certain special cases th at do not conflict with the normal exploitation
of the work and do not unreasonably prejudice the legitimate interests of the right holder.
Please describe any and all limitations and exceptions to copyrights provided under
Guatemala's law on copyright and neighbouring ri ght and cite to the relevant provisions of law.
Please indicate how Guatemala ensures that th ose limitations and exceptions do not conflict
with the normal exploitation of works and do not unreasonably prejudice the legitimate
interests of the right holder.
Title IV of the Law on Copyright and Related Rights establishes the cases limiting the rights
of authors and holders of related rights.  The situations covered by these special cases do not conflict
with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of
the right holder.
The limitations established include the cases of free use mentioned in Articles 10 and 10 bis
of the Berne Convention, which are regulated in Articles 64(a) and 66(a), (b), (c) and (d), and the
reproduction or communication of a work necessary for a judicial or administrative proceeding
(Articles 63(c) and 64(c)).
In addition, the following are exceptions to reproduction and communication rights:(a) The reproduction of a single copy of works by libraries or archives that do not pursue
profit-making purposes, where the copy forms part of the permanent collection, witha view to preserving that copy and replacing it in case of need, or to replace a similar
copy, in the permanent collection of another library or archive, where the copy has
been mislaid, destroyed or rendered unusable, provided that it is not possible to
acquire another original in a reasonable time or on reasonable terms;
(b) the reproduction of a work of art on permanent display in public places or the outer
walls of buildings, provided the reproduction is in an artistic medium different from
that used to make the original and provided the name of the author, if known, the title
of the work, if any, and the place at which it is located are indicated (Article 64(b));
and
(c) the communications is within an exclusively domestic environment, provided there is
no economic interest and the communication has not been disseminated
(Article 63(a)).
As to related rights, limitations on the rights of phonogram producers and broadcasting
organizations are set only in the following cases:
(a) The making of phonograms and the reception of radio or television broadcasts for
demonstration purposes to customers at commercial establishments displaying or
selling receivers, reproducers and the like or audio-video carriers containing the
works used (Article 70);  and
(b) ephemeral fixation by a broadcasting organization by means of its own facilities and
for its own broadcasts, which may be kept for a term of up to six months from the
date of their making, unless otherwise agreed (Article 71).  The latter is an exception
authorized under Article 15 of the Rome Convention.IP/C/W/226
Page 5
6. Please describe in detail the rights provided under Guatemala's law on copyright and
neighbouring rights to performers, broadcasters and producers of phonograms and cite to the
relevant provisions of law.
Guatemalan law protects separately each of the categories of related rights, as follows:
Performers
Pursuant to Article 53 of the Law, performers have the exclusive right to authorize or prohibit
the fixation, reproduction, communication to the public by any means, the broadcasting or any other
form of use of their performance.  Performers of audiovisual works are excepted from this provision.
When a phonogram published for commercial purposes is used in any form of public
communication, the performers whose performances have been recorded on it shall be entitled to
financial compensation.
For the purposes of the above, Article 54 specifies that, unless otherwise stipulated:(i) The broadcasting authorization does not entail authorization to permit other
broadcasting organizations to rebroadcast the performance;
(ii) the broadcasting authorization does not entail authorization for fixation of the
performance;
(iii) the authorization for broadcasting and fixation of the performance does not entail
authorization to reproduce the fixation;  and
(iv) the authorization for fixation of the performance and reproduction of the fixation does
not entail authorization to broadcast the performance from the fixation of the
reproductions.
Again, Article 57 of the Law recognizes that performers have the personal, inalienable and
perpetual right for their name or artistic pseudonym to be linked to their performance and to oppose
distortion or mutilation thereof.
Producers of phonograms
On the basis of Article 58 of the Law, producers of phonograms have the exclusive right to
authorize or prohibit the direct or indirect reproduction, distribution and communication to the publicor any other form of means of use of their phonograms or their reproductions and to make
phonograms available to the public, by any means, in such a manner that members of the public can
gain access to them from the place and at the time they choose.
The right of distribution includes the authority to distribute phonograms, either by sale, rental
or in any other manner.  When the distribution is by sale, this right is extinguished as from the first
sale made, save for legal exceptions.  When the distribution is by rental, putting the original or
authorized copies of the phonogram on the market does not extinguish the right.
The right of importation, for its part, includes the authority to authorize or prohibit the
importation of copies of legally manufactured phonograms and to prevent the importation of copies
manufactured without the authorization of the right holder.  Article 59 clearly lays down the
obligation on anyone performing or causing the public performance, in any form, of a phonogramIP/C/W/226
Page 6
published for commercial purposes to obtain prior written authorization from the producer and to pay
him a fee.
Broadcasting organizations
Under the terms of Article 62 of the Law, broadcasting organizations enjoy the exclusive right
to authorize or prohibit:
(i) The fixation of their broadcasts in a physical or material medium, including the
fixation of any image or sound or isolated images and sounds in a broadcast;
(ii) the reproduction of fixations of their broadcasts by any means that is known or
becomes known;
(iii) the rebroadcasting of their broadcasts by any means or procedure that is known or
becomes known;
(iv) the communication to the public of their broadcasts in places to which the public
gains access by the paying of an admission fee or places to which the public gains
access for the purposes of consuming or purchasing goods or services of any kind.
The same Article affords equivalent protection to the established protection for the original
organizations or stations which broadcast by cable, fibre optics or a similar process.
7. Article 18 of the Berne Convention, as incorporated into the TRIPS Agreement in
Article 9.1 of the TRIPS Agreement, requires that copyright be restored for works that are still
protected under copyright in their country of origin and have not had a full term of protectionin Guatemala.  Please describe in detail how Guatemala has implemented this obligation and
cite to the relevant provisions of law.
Article 7.8 of the Berne Convention establishes that a work's term of protection is the term
established by the law of the country where protection is claimed.  Since both the TRIPS Agreement
and the Berne Convention establish the minimum protection required internationally, Article 18 of the
Convention requires the application of such protection to works which have not fallen into the publicdomain in the country of origin and have fallen in to the public domain of the country where protection
is claimed.
In this regard, Article 135 of Guatemala's La w on Copyright and Related Rights establishes
that the provisions of the Law apply to:
(a) National works that have not fallen into the public domain; and
(b) foreign works which have not fallen into th e public domain in the country of origin,
on the understanding that if the term of protection in the country of origin is greater
than that under Guatemalan legislation, the term of protection provided for inGuatemalan law would apply, as established in Article 7.8 of the Berne Convention
and Article 43, paragraph 3, of the Guatemalan law.
8. Article 14.6 of the TRIPS Agreement requires that protection be restored for
phonograms that are still under protection of copyright or neighbouring rights law in their
country of origin and that have not had a full te rm of protection in Guatemala.  Please describe
in detail how Guatemala has implemented this obligation and cite to the relevant provisions of
law.IP/C/W/226
Page 7
Although Guatemalan law does not contain any express provision in this connection,
Article 14.5 of the TRIPS Agreement applies automatically, for as already stated, since the TRIPS
Agreement is an international instrument duly approved and ratified by Guatemala, it is fully and
automatically operative under the terms established in Article 65 of that Agreement, without anyreservation and without need for further elaboration in national legislation.
C. 
TRADE MARKS
9. Please explain how Guatemala's trademark la w provides for a presumption of likelihood
of confusion, as required by Article 16.1 of th e TRIPS Agreement, where an identical mark for
identical goods and services is used without auth orization on identical goods or services, and cite
to the relevant provision.
Article 21 of the Industrial Property Law establishes the grounds for the inadmissibility of a
trademark, stipulating in paragraph (a) that  it will not be possible to register as a trademark or as an
element thereof a sign that is identical or similar to a registered trademark or one applied for
beforehand by a third party, for the same or similar goods or services, or for different goods orservices when they could create confusion or a risk of association with that trademark.
The Article in question covers four instances refusing the registration of a sign:(a) In the case of identical signs for identical goods or services;
(b) in  the case of identical signs for similar goods or services;
(c) in the case of similar signs for identical goods or services;  and
(d) in the case of similar signs for similar goods.
In the first of these instances, Guatemalan practice has been to refuse the registration of a new
sign on the grounds of likelihood of confusion among the public.  In the remaining instances, theappropriate administrative authority has analysed the degree of confusion that might exist in deciding
whether to approve or to refuse the sign.  Accordingly, the Industrial Property Law, which entered
into force recently, sets out in Article 29 some rules for determining the degree of resemblance
between signs, specifying that, in order for a likelihood of confusion to exist, it is not enough for the
signs to be similar but also for the goods or services to be of the same kind, thereby referring to the
first of the instances mentioned above (paragraph (a)).
10. Please describe in detail any limitations or  special requirements that apply to trademark
rights under Guatemala's laws and indicate how those limitations take account of the
illegitimate interests of the owner of the trademark and of third parties.
The only limitations on the right of the owner of a trademark are set out in Article 36 of the
Industrial Property Law, which establishes that the owner of a trademark may not prohibit a third
party from using, in connection with lawfully marketed goods or services:
(a) His name or address, or those of his establishments;
(b) particulars or information about the features of the goods and services, inter alia ,
those pertaining to quantity, quality, use and geographical origin or price;  andIP/C/W/226
Page 8
(c) particulars or information on availability, use, application or compatibility of his
goods or services, especially in connection with spare parts or accessories.
These limitations will operate provided the use is made in good faith and does not create
confusion about the business origin of the goods or services.
11. Please explain in detail how Guatemala's trademark and other laws ensure protection of
well-known trademarks and service marks, citing to the relevant provisions of law.
Guatemalan law suitably regulates the protection of well-known trademarks.  To begin with,
it should be pointed out that the law establishes that, as a general rule, for the owner of a trademark
which is protected abroad to be able to enjoy the rights and guarantees established by Guatemalan
law, the trademark must have been registered in Guatemala, except in the case of well-known marks(Article 17).
Secondly, Article 21(c) of the Guatemalan law clearly establishes that a sign may not be
registered as a trademark or as an element thereof, inter alia , when the sign constitutes a reproduction,
imitation, translation or transcription, whether total or partial, of a third party's well-known trademark,even though it is not registered in Guatemala, regardless of the goods or services to which the sign
applies, if use and registration of the sign is likely to create confusion or a risk of association with that
third party, or create unfair use of the name of the sign or impair or affect its distinctiveness.  The
rules to be taken into account in conducting a substantive examination of an application for
registration or resolving any opposition to it or in  the event of the nullity and/or cancellation of
trademark registrations, include the rule whereby, if one of the trademarks in conflict is well-known,
the other must be clearly and readily differentiable, so as to avoid the possibility of improper use of
the prestige of the other trademark (Article 29(h))
Lastly, in regulating the possibility of making a judicial claim to nullify the registration of a
well-known trademark that has been registered by someone who was not entitled to it, Guatemalan
law establishes a presumption of bad faith on the part of the person who obtained it.  In such cases, an
action to cancel the registration may be brought at any time (Articles 67 and 203 of the Industrial,
Property Law).
D. 
GEOGRAPHICAL INDICATIONS
12. Please describe in detail how and under what laws geographical indications are
protected in Guatemala and cite to the relevant provisions of law.
Article 78 of the Industrial Property Law prohibits the use in trade of geographical indications
in connection with a good or service when the indication is false or misleading as regards the
geographical origin or qualities of the good or service, or when its use could confuse the public as tothe origin, characteristics or qualities of the good or service.  Article 79 of the Law uses similar terms,
but in connection with the use of a geographical indication in advertising or in trade documents
relating to the sale, display or supply of goods or services.
Again, Article 20 prohibits the registration of trademarks that are likely to mislead or confuse
the public about the geographical source of the good or service in question (paragraph j) and
trademarks which consist of a geographical indication that does not comply with the terms of
Article 16 (paragraph k), which states that trademarks may consist of national or foreign geographical
indications, provided they are sufficiently arbitrary and distinctive with regard to the goods or services
to which they apply and their use is not likely to create confusion or association with the origin,source, qualities or characteristics of the goods or services for which the trademarks are used.IP/C/W/226
Page 9
It is also important to mention that, pursuant to Article 83 of the Law, unlawful use of an
appellation of origin, regardless of the good for which it is used, will give rise to action provided for
in Law, even in  cases where it is preceded or followed by indications such as "kind", "type", "style",
"imitation" or the like that may confuse the consumer or involve an act of unfair competition.
In keeping with the above, Article 173 of the Law establishes that the use, promotion or
dissemination of false or inaccurate indications or facts capable of misleading the public as to the
source of national or foreign  goods or services constitute an act of unfair competition.
13. Does the law of Guatemala regarding geographical indications provide for any of the
exceptions to protection of geographical indica tions contained in Article 24 of the TRIPS
Agreement and, if so, please describe the way in which the exception is applied and cite to therelevant provisions of law.
Guatemalan law does not provide for any exception to protection of geographical indications.
E. 
INDUSTRIAL DESIGNS
14. Please describe in detail the way in which industrial designs, including textile designs,
are protected under Guatemala's laws and cite to the relevant provisions of law.
Under Article 4 of the Industrial Property Law, the term "industrial design" covers industrial
drawings and models, the first being taken to mean  any combination of figures, lines or colours
incorporated in an industrial or craft product for the purposes of ornamentation and giving it a
distinctive appearance of its own, and the latter as any three-dimensional form used as a model or
pattern for the manufacture of an industrial product that gives it a special appearance and has no
technical or functional purpose.
In order for an industrial design to be protected it must be new.  In order for it to be
considered new, the design must differ significantly from known designs or combinations of features
thereof and must not have been publicly disclosed, in any part of the world by any means, before any
of the following dates, as from the oldest:
(a) The date of the first public disclosure by the designer or by his successor in title or by
a third party who has obtained the design as a result of some act carried out betweenthem; or
(b) the date of submission of the application for registration or, where appropriate, the
date of submission of the application invoking priority.
For the purposes of assessing novelty, account shall not be taken of any disclosure within six
months before the date of submission of the appli cation or, where appropriate, the date of submission
of the application invoking priority, provided such disclosure has directly or indirectly resulted from
acts by the designer himself or his successor in title or from failure to comply with an unlawful
contract or an unlawful act committed against any one of them (Article 152).
The protection of an industrial design confers on the owner the right to prevent third parties,
not having his consent, from making, selling, importing, offering for sale, using or in any way
commercially exploiting articles which bear or embody an industrial design which is a reproduction
identical or similar to the one protected (Article 154).
Protection does not include those elements or features that are determined entirely by the
performance of a technical function and do not embody any new contribution by the designer, norIP/C/W/226
Page 10
does it include elements or features, the reproduction of which is necessary in order to permit the
product embodying the design to be mechanically assembled or connected to another product of
which it constitutes an integral part.  This limitation shall not apply in the case of products in which
the design is intended to permit the assembly or multiple connection of the products or their
connection within a modular system (Article 149).
The protection conferred on industrial designs does not preclude or affect any protection
under other legal rules such as those pertaining to trademarks or copyright (Article 148).
As to the way in which protection is obtained, the law establishes that the owner of an
industrial design acquires the right to legal protect ion as a result of any of the following acts:
(a) The first public disclosure of the industrial design, by any means and at any place, by
the designer or his successor in title, or by a third party who has obtained the design
as a result of some act carried out by one of them;  or
(b) registration of the industrial design (Article 151).In the first of these cases, the industrial design enjoys protection without need for registration
for a period of three years from the date of the disclosure.  Such protection is independent of the
protection obtained by registration (Article 153).  In the second case, registration of an industrial
design shall be valid for ten years as from the submission of the application (Article 159) and may berenewed only once for a period of five years, provided the owner so requests at least 60 days before
the expiry of the original period (Article 160).
F. 
PATENTS
15. Please explain whether an invention within the categories specified below may be
patented under Guatemala's patent law if it is novel, involves an inventive step and is
industrially applicable:
(a) Process inventions which, in whole or part, consist of steps that are performed
by a computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention
including;
(i) Machine-readable computer program code stored on a tangible medium
such as a floppy disk, computer hard drive or computer memory;
(ii) a general purpose computer whose novelty over the prior art arises
primarily due to its combination with a specific computer program;
(c) process inventions that facilitate the conduct of business;  and
(d) micro-organisms.
Guatemalan legislation establishes that the economic, advertising or business plans,
principles, rules or methods and those relating to purely mental or intellectual activities or to games
do not constitute inventions.  The same provision is included for computer programs, since they areprotected by the copyright legislation.IP/C/W/226
Page 11
Equipment capable of reading computer programs, as such, inasmuch as they qualify in terms
of novelty, inventive level and industrial application, may be protected by a patent.  Similarly, the
physical media in which a computer program is incorporated are patentable only when they fulfil the
three requirements.
Micro-organisms can be patented.
16. Please describe any exclusions from patent ability contained in Guatemala's patent law
and cite to the relevant provisions.
Under Article 92 of Guatemala's Industrial Property Law, the following are not patentable:
(a) Diagnostic, therapeutic and surgical methods for the treatment of human beings or
animals;
(b) an invention the exploitation of which is contrary to public order or morality;  and
(c) an invention the commercial exploitation of which needs to be prevented in order to
preserve human, animal or plant life or health or the environment.
It should also be pointed out that, under Article 91 of the Law, the following do not constitute
inventions and, consequently, are not patentable:
(a) Mere discoveries;(b) materials or energy in the form in which they are found in nature;
(c) biological processes as they occur in nature and which do not involve human
intervention, except microbiological processes;
(d) scientific theories and mathematical methods;(e) purely aesthetic creations, literary and artistic works;
(f) economic, advertising or business plans, principles, rules or methods and those
relating to purely mental or intellectual activities or games;  and
(g) computer programs considered in isolation.
17. Please describe in detail the rights acquired by a patent holder in connection with a
product patent and in connection with a process patent and cite to the relevant provision of law.
Article 128 of the Industrial Property Law establishes that:
(a) Where the patent claims a product, the owner has the right to make, offer for sale, sell
or use the patented product or import it or store it for such purposes;  and
(b) where the patent claims a process, the owner has the right to use the patented process
or make, offer for sale, sell or use the product obtained directly by the patentedprocess.IP/C/W/226
Page 12
18. Please identify any exceptions to the righ ts conferred by a patent in Guatemala and
indicate the manner in which the law of Guat emala ensures that such exceptions do not
unreasonably conflict with a normal exploitation of the patent and do not unreasonably
prejudice the legitimate interests of the patent ow ner, taking account of the legitimate interests
of third parties.
Article 130 of the Industrial Property Law establishes, among the limitations on the rights
conferred by a patent, that the owner does not have the right to prevent the following acts:
(a) Those carried out in private and for non-commercial purposes;(b) those carried out exclusively for educational or scientific or academic research
purposes, with no commercial purpose;  and
(c) those referred to in Article 5 ter of the Paris Convention.
When the patent protects a plant or animal or the material for reproduction or multiplication,
the owner cannot prevent the use of the product obtained from the protected plant or animal or
marketing of the product, provided it has been obtained on the person's own farm (Article 129).
19. Please verify that the terms of all patents in existence in Guatemala on 1 January 2000,
and of all patents granted thereafter, will not end before the expiration of the period of 20 yearsmeasured from the date of filing.
Article 211 of the Industrial Property Law establishes that the term of patents that have not
expired at the time of entry into force of the Law may be extended for up to 20 years, on written
application by the owner at least two months before the expiry of the original period.
20. Article 27.1 of the TRIPS Agreement requires that patents be available and patent
rights enjoyable without discrimination as to whether products are imported or locally
produced.  Please verify that importation of  patented products will satisfy the working
requirement in Guatemala's patent law.
The Law does not contain any provision requiring industrial exploitation of the patent in
Guatemala.
21. Please explain how the safeguards contained in Article 31 of the TRIPS Agreement are
implemented under Guatemala's patent law in relation to any compulsory licence that might be
granted and cite to the relevant provisions of law.
Guatemala's Industrial Property Law provides for compulsory licensing to remedy any
anti-competitive practices or on grounds of a national emergency, public health, national security or
public non-commercial use. Title III, Chapter I, sect ion six, of the Law sets out the conditions for
granting compulsory licences, specifying that:
(a) The person applying for a compulsory licence shall demonstrate that he has
previously asked the patent owner for a contractual licence and could not obtain it on
reasonable commercial terms and conditions, except in the case of a compulsory
licence on the grounds of a national emergency or for non-commercial use by theState (Article 135);
(b) compulsory licences will be granted predominantly for the supply of the domestic
market (Article 136(a));IP/C/W/226
Page 13
(c) the owner of the patent for which a compulsory licence has been granted shall receive
adequate remuneration in the circumstances of each case and the economic value of
the licence (Article 136 (b));   
(d) compulsory licences may not be granted on an exclusive basis, nor may they be
assigned or sub-licensed, and they may only be transferred along with the company
(Article 136 (c));
(e) the licence may be cancelled if the circumstances under which it was granted have
disappeared and they are unlikely to occur again (Article 136, second paragraph);
and
(f) an appeal for reversal shall lie against decisions granting compulsory licences, as an
administrative appeal to be settled by the au thority higher than the one that issued the
decision.  This decision may be challenged judicially by an administrative action
(Article 136, third paragraph, of the Industrial Property Law, and Articles 7, 19 and20 of the Administrative Litigation Law).
In cases of compulsory patent licensing, Article 137 establishes the following further
conditions:
(a) The invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed in
the first patent;
(b) the compulsory licence to exploit the first patent may be transferred only with the
second patent;  and
(c) the owner of the first patent shall be entitled to a licence for the second patent.
22. Please indicate the number of compulsory licences issued under Guatemala's patent law
in each of the last five years.
Guatemala has not authorized any compulsory licence in the last five years.
23. Please describe in detail the manner in which plant varieties are protected under
Guatemala's laws.
Plant varieties are formally protected by a patent, but the patentability conditions are different
from those traditionally required.  In the case of a plant variety, the patentability conditions under
Article 93 of the Industrial Property Law are novelty, distinctness, homogeneity and stability.
The scope of the rights conferred by a patent for a new plant variety is different from that of
other kinds of inventions, since the owner cannot prevent third parties from using the protected
variety as the initial basis for obtaining a new viable biological material and marketing the material
obtained, unless the new variety requires repeated use of the patented material.  Nor can the owner
prevent the product obtained from the protected plant from being used for further reproduction or
multiplication or for marketing of that product, provided the product has been obtained at the farmeror cattle breeder's own farm and the reproduction or multiplication is done at that farm (Article 129).IP/C/W/226
Page 14
G. LAY-OUT DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
24. Please describe how Guatemala implements the obligations of Section 6, Part II of the
TRIPS Agreement and cite to the relevant provisions of law.
Guatemala has not yet passed any specific legislation to regulate the protection of lay-out
designs, and protection is therefore granted for a term of ten years from the first commercialexploitation of the lay-out design, as specified in Article 38.2 of the TRIPS Agreement, which forms
part of Guatemala's law.  Under the Guatemalan legal system, international agreements automatically
apply, except in cases where, under the Agreement, sp ecific legislation has to be elaborated.  In fact,
Article 46 of the Constitution of the Republic esta blished that, in regard to human rights (which
includes copyright and inventors' rights), treaties and agreements accepted by Guatemala prevail over
domestic law.
H. 
PROTECTION OF UNDISCLOSED INFORMATION
25. Paragraph 2 of Article 39 of the TRIPS Agreement requires Members to provide
protection for all undisclosed information, including technical know-how and commercial
information, which meets certain criteria.  This protection must endure as long as the conditions
identified in paragraph 2 of Article 39 are met and protection cannot be conditioned onregistration.  Please explain how Guatemala fulfils this obligation.
Guatemala's Industrial Property Law protects trade secrets which meet the conditions set out
in Article 39.2 of the TRIPS Agreement against any disclosure or exploitation without the
authorization of the owner and stipulates in Article 176 that a trade secret shall be regarded as having
been unfairly obtained when the acquisition is a result of, inter alia , non-compliance with a contract
or other obligation, abuse of confidence, bribery, disloyalty, non-compliance with a duty of loyalty or
instigation of any of these acts.
26. What measures, as required by Article 42 of the TRIPS Agreement, are taken by
judicial authorities to protect the confidentiality of undisclosed information furnished by aparty during legal proceedings to enforce rights in such information, or for other purposes.
In principle, Article 63 of the Judicial Organization Law, by enunciating the principle that the
acts and proceedings of the courts of the Republic are public, admits as exceptions to that principle
cases where, by a legal order or on grounds of public morality or security they must be kept
confidential.
The Industrial Property Law allows for two cases in which the judicial authorities are required
to afford protection for confidential information.  In the first, contained in Article 194 of the Industrial
Property Law, which refers to cases where access is allowed to detained goods or products so that the
person who has obtained the border measure can inspect them and find further evidence in support of
his claim, the court must guarantee protection of any confidential information.
The second of the cases set out in Article 199, which enunciates the principle of reversal of
the burden of proof in cases of claims for infringements of a patent-protected process, recognizes that
in the submission of any evidence to the contrary, account must be taken of the legitimate interests of
the defendant regarding protection of his trade secrets, although this does not relieve him of the
burden of proving that he uses a process different from the one protected by a patent.
Again, Article 129 of the Code of Civil and Commercial Procedure sets out the general rule
that evidence can be submitted confidentially when, on account of the nature of the evidence, the
judicial authority deems it appropriate.IP/C/W/226
Page 15
27. Paragraph 3 of Article 39 of the TRIPS Agreement requires that Members protect
certain test data associated with requests to obtain approval to market pharmaceutical and
agricultural chemical products from disclosure and from "unfair commercial use".  Please
describe in detail how Guatemala implements this obligation to give it practical effect and cite tothe relevant provisions of law.
Article 177 of the Industrial Property Law establishes that when, to obtain authorization to
market a pharmaceutical or agricultural chemical product containing a new chemical component it is
necessary to submit undisclosed test or other data that are a trade secret, the data can be submitted
under an assurance of confidentiality, in which case, the information is protected against disclosure or
unfair commercial use, except where necessary to protect the public or unless suitable steps are taken
to ensure that the data or information are protected against any unfair commercial use.
Similarly, the Article establishes that no one other than the person who has submitted this
information may act against these data or invoke them in support of an application for approval of a
product, even though it does not entail their disclosure, for a period of 15 years from the date on
which the initial authorization to market or sell the product is granted.
28. Please describe in detail how Guatemala implements the obligation in the same
provision of the TRIPS Agreement to protect su ch data against disclosure and cite to the
relevant provisions of the law.
See the response to the previous question.
I. 
ENFORCEMENT
29. Please describe in detail what civil actions and what civil remedies are available under
Guatemala's laws to right holders of each kind of intellectual property covered by Part II of the
TRIPS Agreement, including plant variety protectio n, that permit effective action against any
act of infringement to prevent infringement and deter further infringement, and cite to the
provisions of law providing for these remedies.
For the purpose of protecting rights under the Industrial Property Law, the following civil
actions may be taken:
(a) To submit a claim against an infringement of the rights granted (Article 196);
(b) to submit a claim to rights granted to a third party who is not entitled to them
(Article 197);
(c) to submit a claim to nullify a patent or registration granted in breach of the provisions
of the law (Article 201).
Since the rights recognized by the Law on Copyright and Related Rights are not subject to
any formality, the sole possibility allowed is to initiate civil actions on the grounds of infringement of
the rights granted (Article 133).
30. Please state whether decisions on the merits in court proceedings are provided in writing
and if those written opinions are available to the public so that people can become familiar withthe law.IP/C/W/226
Page 16
Under the Guatemalan legal system, civil actions are initiated at the request of the party
affected.  Every document submitted must be accompanied by a copy so that it can be notified to the
opposing party and all evidence is received or processed by citing the opposing party (Articles 63, 128
and 129 of the Code of Civil and Commercial Proced ure).  Every decision must be disclosed to the
parties, otherwise it is not binding and cannot effect the party's rights.  The complaint and the firstdecision on the file must be notified in person to the defendant;  subsequent decisions are notified at
the place specified by the parties, in accordance wi th the law.  For all such notifications a copy is
furnished of the application and of the decision, or only the decision when it has not been issued as a
result of a previous application (Article 66, 67, 70, 71, 72 and 79 of the Code of Civil and
Commercial Procedure).
31. Please describe what civil provisional measures are available to right holders under
Guatemala's laws, describe the procedures that  must be followed and cite to the relevant
provisions of the law.
Under Guatemala's intellectual property laws, anyone bringing or intending to bring an action
in connection with recognized rights, whether the action is civil or criminal, may apply to thecompetent judicial authority for any measure that he regards as appropriate in order to:
(a) Protect his rights;
(b) prevent an infringement from being committed;
(c) avoid the consequences of an infringement;  or
(d) obtain or preserve evidence relating to the infringement.
Under Article 187 of the Industrial Property Law, the provisional measures that may be
ordered to safeguard an industrial property right are the following:
(a) Immediate cessation of the use, application and marketing of the infringing products
and the unfair acts;
(b) seizure and confiscation of the infringing products, including containers, packets,
packaging, labelling, printed or advertising material, and the machinery and other
materials used for the infringement;
(c) prohibition of the importation of the infringing products or the machinery and
materials to be used for the purposes of the infringement;
(d) the necessary measures to prevent the continuation or repetition of the infringement
or the acts of unfair competition;
(e) preventive notation in the register of a complaint in cases requesting nullity of a
patent or registration;  and
(f) suspension of sanitary or other registrations or licences necessary for the customs
release, distribution, sale or marketing of infringing products.
The provisional measures that may be ordered to safeguard copyright or a related right
include those under Article 128 bis of the Law on Copyright and Related Rights and in addition to the
above measures:IP/C/W/226
Page 17
(a) Cessation of the unlawful acts or unlawful trading in the protected work;
(b) a search of public or private buildings;
(c) attachment of movables, including bank accounts, in the name of the persons said to
be guilty of the unlawful act;  and attachment of the infringer's net proceeds;
(d) immediate seizure and forfeiture of copies of specimens of unlawfully produced
works and phonograms and of the instruments used to produce them, transport them,
keep them, distribute them, offer them for sale, rent them or communicate them in
any form;
(e) suspension of customs release of copies or specimens of unlawfully reproduced
works and phonograms;
(f) order for a review of the accounts of the persons said to be responsible for the
unlawful act;
(g) seizure of the accounting records of the person said to be guilty of the unlawful act or
of the accounting equipment containing the registers;
(h) temporary closure of the premises or business containing the copies or specimens of
unlawful works and phonograms;  and
(i) any other suitable measure to provisionally ensure cessation of the unlawful act,
protection of the rights conferred by law or preservation of the evidence relating to
the breach.
Articles 186 and 187 of the I ndustrial Property Law;  128, 128 bis and 133 bis of the Law on
Copyright and Related Rights;  and 530 of the Code of Civil and Commercial Procedure.
Provisional measures must be requested in writing and the competent judicial authority shall
order them inaudita altera parte  within the next two days, except where a guarantee or assurance is
required, in which case the period shall start from the posting of the guarantee.
32. Please state whether judicial authorities have authority to adopt provisional measures
inaudita altera parte , as required under Article 50.2 of the TRIPS Agreement and under what
circumstances that authority will be invoked.
Under Guatemalan law, provisional measures are ordered without notification or intervention
of the defendant, and they must be notified at the time of execution or immediately thereafter
(Articles 186 of the Industrial Property Law, 133 ter of the Law on Copyright and Related Rights and
534 of the  Code of Civil and Commercial Procedure).
33. Please describe in detail the procedures under Guatemala's laws, at least with respect to
counterfeit trademarked goods and pirated copyrigh t works, that allow right holders to request
customs authorities not to release goods into free circulation and cite to the relevant provisions
of law.  Please indicate if the customs authoritie s have ex officio authority to take such action.
Both the Industrial Property Law and the Law on Copyright and Related Rights allow the
possibility for holders of a registered trademark or a protected work or phonogram, or their licensees,
to request suspension of customs release and entry of goods into the channels of commerce or theIP/C/W/226
Page 18
process of exporting them.  Only in the case of pirated goods may suspension of customs release be
requested directly to the customs authorities (Articles 190 and 191 of the Industrial Property Law and
129 of the Law on Copyright and Related Rights).
In both cases, the application must be made in wr iting, specifying in detail the unlawful goods
which it is alleged are to be imported or exported, furnishing evidence pointing to the existence of
reasonable indications of the alleged infringement.  The decision ordering suspension of the decision
must be notified to the importer, consignee or exporter of the detained products until the measure has
been executed.
34. Please indicate whether border enforcemen t is available with regard to other forms of
intellectual property rights and cite to the relevant provisions of law.
Border measures can be applied only to suspend the importation or exportation of goods
which infringe rights to a registered trademark or a protected work or phonogram (Articles 490 of the
Industrial Property Law and 129 of the Law on Copyright and Related Rights).
35. Please describe in detail how Guatemala implements the remaining provisions of
Section 4, Part III of TRIPS, citing to the relevant provisions of law.
Both the Industrial Property Law and the Law on Copyright and Related Rights establish that
anyone requesting the application of border measures shall furnish sufficient evidence providingreasonable indications of the alleged infringement and a detailed description of the unlawful goods.
The applicant for border measures shall be liab le to the payment of damages to the importer or
exporter in the following cases:
(a) Where an action on the grounds of the alleged infringement is not brought within ten
days following notification of the suspension of the importation or exportation;
(b) when the detention is groundless, in other words, the measure is revoked or the
complaint is declared inadmissible.
The suspension of the importation or exportation shall be valid for ten days from the date of
notification of the corresponding decision.  An extension will be allowed for a similar period only in
the case of counterfeit goods prejudicial to a trademar k right.  However, in the case of the importation
of counterfeit or pirated goods, the measure may be confirmed as a precautionary measure(Articles 193 of the Industrial Property Law and 130 of the Law on Copyright and Related Rights).
Once the measure has been ordered, the applicant shall be allowed to inspect the detained
goods in order to obtain further evidence in support of his claim (Articles 131 of the Law on
Copyright and Related Rights and 194 of the Industrial Property Law).
36. Please describe in detail the criminal actions and remedies that are available with
respect to counterfeit trademarked goods and pirated copyrighted works and cite to the
relevant provisions of law.
Article 275 of the Criminal Code establishes in  connection with industrial property that the
following acts, inter alia , constitute an offence:
(a) Introducing into commerce, selling, offering for sale, storing or distributing goods or
services covered by a registered distinctive sign or by an imitation or counterfeit ofsuch signs, in connection with goods or services the same as or similar to those
protected by the registration;IP/C/W/226
Page 19
(b) introducing into commerce, selling, offering for sale, storing or distributing goods or
services covered by registered distinctive sign after having totally or partly altered,
replaced or removed it;
(c) the use, offering for sale, storing or distributing of goods or services bearing a
registered trademark, confusingly like another registered mark, after an order hasbeen issued to cease using that trademark;
(d) the making of labels, containers, packaging or other similar materials reproducing or
containing the registered sign or an imitation or counterfeit thereof, as well as the
marketing or storing of such materials;  and
(e) the use in commerce of labels, packets, containers and other packaging of goods or of
the identification of a trader's services or copies, imitations or reproductions thereof
that may mislead the public as to the origin of the goods or services.
The penalty for these offences is one to four years' imprisonment and a fine of 1,000 to
500,000 quetzales, without prejudice to any damages payable.
For its part, Article 274 of the Criminal Code establishes in connection with copyright and
related rights that the following acts constitute an offence:
(a) The false attribution of the status of author and/or copyright holder, performer,
phonographic producer or a broadcasting organization;
(b) the distortion, mutilation, modification or any action that causes injury to the integrity
of the work or to the honour and reputation of the author;
(c) the reproduction of any work, performance, phonogram or broadcast, without the
authorization of the author or relevant right holder;
(d) the adaptation, arrangement or modification of a protected work or part thereof,
without the authorization of the author or the right holder;
(e) the communication to the public by any means or procedure of a protected work or a
phonogram, without the authorization of the relevant right holder;
(f) the unauthorized reproduction, total or partial, of a protected work or a phonogram,
whether by means of sale, rental, lease, rental with an option to buy, loan, or in any
other manner;
(g) the fixation, reproduction or communication to the public, by any means or procedure
of an artistic performance, without the authorization of the performer or the right
holder;
(h) the fixation, reproduction or retransmission of a broadcast transmitted by satellite,
broadcasting or by wire, cable, fibre optics or any other procedure, without the
authorization of the owner;
(i) the communication to the public of a broadcast or transmission in a place to which the
public can gain access by the payment of an admission fee, or for the purposes ofconsuming or purchasing goods or services, without the authorization of the relevant
right holder;IP/C/W/226
Page 20
(j) the publication of a protected work with the title changed or removed, with or without
being altered;
(k) the decodification of programme-carrying signals of any kind transmitted by satellite
or any other means of telecommunication, without the authorization of the legitimate
distributor;
(l) any act that circumvents or attempts to circumvent a technological measure
implemented by the author or the holder of a related right, so as to avoid unauthorized
use of any kind of protected work, phonogram, artistic performance or broadcast;
(m) any act that induces, permits, facilitates or conceals an infringement of any of the
exclusive rights pertaining to authors, copyright holders, performers, phonogram
producers or broadcasting organizations;
(n) the unauthorized removal or alteration of any electronic information concerning the
collective management of copyright or related rights;
(o) the unauthorized distribution, marketing, promotion, importation, broadcasting or
communication to the public of works, artistic performances, phonographicproductions or broadcasts, in the knowledge that the electronic information
concerning the collective management of any of those rights has been removed or
altered without authorization;
(p) the transportation, storage or concealment of reproductions or copies, in any physical
medium, of protected works, phonograms, artistic performances or broadcasts, made
without the consent of the author or relevant title holder;
(q) the collection of financial benefits for the use of protected works, performances,
phonograms or broadcasts or engaging in any other activities proper to a collectivemanagement company, without being authorized to do so;
(r) the disclosure of an unpublished work without the consent of the author or the
relevant title holder;
(s) the full or partial translation of a work without the authorization of the author or the
relevant right holder;
(t) the unauthorized distribution of original or lawful reproductions of a protected work
or a phonogram, whether by means of sale, rental, rental with an option to buy, loan
or any other manner;  and
(u) the importation or exportation of the original or reproductions of any protected work
for commercial exploitation, in any type of medium, or in phonograms, without the
authorization of the relevant right holder.
The penalty for one of these offences is one to four years' imprisonment and a fine of 1,000 to
500,000 quetzales, without prejudice to any damages payable.
37. Please indicate the authorities responsible for criminal actions involving intellectual
property rights and indicate whether their authority extends to other forms of intellectual
property rights.IP/C/W/226
Page 21
Criminal actions for infringements of any intellectual property rights are dealt with by the
courts with jurisdiction at the place where the unlawful act is committed.  The Department of Public
Prosecutions is responsible for bringing criminal actions against persons guilty of infringements of
intellectual property rights.
38. Please explain whether and under what circumstances seizure, forfeiture and
destruction of infringing goods and any materials and implements are available as remedies in
wilful trademark counterfeiting or copyright piracy cases and describe the conditions under
which such penalties would be imposed.
The seizure, forfeiture and destruction of goods that infringe a protected intellectual property
right, as well as the forfeiture and destruction of the materials and equipment used in making them,are measures that may be requested provisionally or ordered in a judgement at the close of civil or
criminal proceedings relating to infringements of intellectual property rights.
39. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated-circuit lay-out design, and trade secret
enforcement for each of the years 1998 and 1999, including the number of cases filed;
injunctions issued;  infringing products seized ;  infringing equipment seized;  cases resolved
(including settlement);  and the amount of damages awarded.
At the present time, the Guatemalan judiciary has no data system to furnish the requisite
information and an inquiry would have to be conducted with approximately 400 courts throughout the
Republic that are competent to deal with civil and criminal proceedings.  It is difficult to do this at the
present time.
40. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1998 and 1999, including the
number of raids, prosecutions, convictions, and th e amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that the criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
See the response to the previous question.
41. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in Guatemala, particularly initiatives related to criminal
enforcement.
At the present time no initiative is planned to change the laws protecting intellectual property
rights because the Industrial Property Law and the recent amendments to the Law on Copyright and
Related Rights were adopted by the Congress on 31 August 2000, were published in the Official
Gazette on 27 September 2000 and entered into force on 1 November 2000.
__________