RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/252
11 May 2001
(01-2421)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Replies by Venezuela to Questions Posed by Canada, The European
Communities and their Member States, Japan,
Switzerland and the United States
By means of a communication from the Permanent Mission of Venezuela, dated
30 March 2001, the Secretariat has received the following replies to the questions posed by Canada,
the European Communities and their Member States, Japan, Switzerland and the United States, which
were circulated in documents IP/C/W/245, 244, 238, 239  and 240 respectively.
_______________
CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS
Agreement) have been implemented.
Section 1:  General obligations
- Article 41
The principles and guarantees provided in Article 41 of the TRIPS Agreement are covered by
Article 26 of the Constitution of the Bolivarian Republic of Venezuela and include the following:
effective protection of individual rights, as well as justice that is free, accessible, impartial,
appropriate, transparent, autonomous, independent, responsible, fair and expeditious, with no unduedelays, superfluous formalities or questions.
In addition, Article 49.1 gives any person convicted in administrative or judicial procedures
the possibility of appealing against the ruling.
Section 2:  Civil and administrative procedures and remedies
- Article 42:  Fair and equitable procedures
The constitutional provisions in Venezuela's legal system give any person the right to be
notified of the charges for which he is being investigated, to have access to the evidence and be given
sufficient time and means to defend himself, as provided in Article 49.1.
Venezuela's Constitution also gives the righ t to be heard in any proceedings, with due
guarantees and within the reasonable time-limit legally fixed by the competent, independent andimpartial court previously established (Article 49.3 of the National Constitution of the Bolivarian
Republic of Venezuela).IP/C/W/252
Page 2
Concerning whether parties can be defended by an attorney, Article 49.1 of the Constitution
of the Bolivarian Republic of Venezuela provides that defence and legal assistance are inviolable
rights at any stage or level of the investigation and proceedings.  Article 136 of the Code of Civil
Procedure gives individual persons the right to act in legal proceedings either themselves or throughan attorney.
Article 43:  Evidence
Pursuant to Article 436 of the Code of Civil Procedure, any party seeking to utilize a
document that, according to its declaration, lies within the control of the other party, may request its
presentation.  The request for presentation shall be accompanied by a copy of the document or, failingthat, by a statement of the facts known to the requ esting party concerning the content of the document
and evidence showing that there is at least a serious presumption that the document is or has been
within the control of the other party.  The court shall require the other party to present or hand over
the document within the period it indicates or be subject to a penalty.  If the document is not presented
within the time-limit fixed and no evidence is provided to show that it does not lie within the controlof the other party, the text of the document as it appears in the copy presented by the requesting party
shall be presumed to be accurate or, in its absen ce, the information provided by the requesting party
concerning the content of the document shall be deemed to be correct.
This means of proof can be used in both criminal and civil proceedings in Venezuela, where
the principle of freedom of evidence exists, allowing  the use of any evidential means provided in any
legislative text.
With regard to the protection of confidential information , it should be noted that,  in criminal
proceedings, all investigative acts are restricted as far as third parties are concerned so only partiesdirectly involved in the case, toge ther with the judicial authorities and the Public Prosecutor's Office,
have access to the records of the proceedings and consequently to the evidence furnished.  Officials
involved in the investigation and persons who, for any reason, have knowledge of the action taken,
thus have a duty of confidentiality (Article 313 of the Basic Code of Criminal Procedure).
The principle of public information governs civil proceedings so all the records of the
proceedings are public.  The sole exception to this principle is where the court determines otherwisefor reasons of public morality, depending on the nature of the case (Article 24 of the Code of Civil
Procedure).
The "principle of freedom of evidence" applies in administrative procedures and allows the
use of any of the means of proof laid down in an y legislative text (Article 58 of the Basic Law on
Administrative Procedures).  Consequently, the judicial authorities may order a party to proceedings
to furnish the evidence within its control, at the request of the opposing party, by means of the
"presentation of documents", which is explained elsewhere in the replies to the questionnaire.
In an administrative procedure, subject to substa ntiation, some or all of the documents in the
administrative file may be declared confidential (Article 59 of the Basic Law on Administrative
Procedures).
- Article 44:  Injunctions
(i) Copyright
The owner of any exploitation rights in any work, product or production protected by
copyright may request the court to declare his rights and prohibit others from infringing them.  InIP/C/W/252
Page 3
order to give effect to the prohibition, the court shall impose a fine if an infringement should occur
(Article 109 of the Law on Copyright).
The owner of any exploitation rights in any work, product or production protected by
copyright may request the court to order the destruction or withdrawal of originals or copiesunlawfully reproduced and of the equipment used for their reproduction (Article 110 of the Law on
Copyright).
For the purposes of exercising the actions mentioned in the preceding paragraphs, the court
may order judicial inspections and expert studies, as well as any other means of proof provided in the
Code of Civil Procedure (Article 111 of the Law on Copyright).
At the request of the party concerned, the court may order that the text of the ruling be
published, at the expense of the losing party, in one or more newspapers specified by the court
(Article 113 of the Law on Copyright).
The competent national authority (the court) may order the permanent removal from channels
of commerce of the copies constituting the infringement of rights (subparagraph (c) of Article 57 of
Decision 351 of the Commission of the Cartagena Agreement - Common Provisions on Copyright and
Neighbouring Rights).
In criminal proceedings, the competent courts may order a term of imprisonment of six (6)
months to four (4) years for any person who commits any of the offences defined in the Law on
Copyright (Part VII of the Law).
(ii) Industrial property
The competent court may cancel a patent if it was issued when a third party had a better right
to it (subparagraph (a) of Article 17 and Article 66 of the Industrial Property Law).
The competent court may cancel the registration of a trademark if it was registered when a
third party had a better right to it or where, after doubts have been raised concerning the trademark's
validity, a ruling has declared that it should not have been granted (subparagraph (c) of Article 36 and
Article 84 of the Industrial Property Law).
At the request of the person affected, the competent national authority (the court) may order
the transfer of a pending application or a right granted in respect of a patent or the registration of an
industrial design or it may order recognition as co-applicant or co-owner of a right where a patent or
the registration of an industrial design has been requested or obtained by a person who has no right toit.  Likewise, where an application for a trademark registration has been filed or a trademark has been
obtained to the detriment of another party possessin g the same right, the parties affected may claim
such rights before the competent national authority by requesting their recognition as co-applicants or
co-owners of the rights in question (Article 237 of Decision 486 of the Commission of the Andean
Community - Common Industrial Property Regime).
The competent national authority may order the cessation of the acts constituting the
infringement;  withdrawal from commercial channe ls of products resulting from the infringement;  a
ban on the import or export of the goods;  adjudication of the ownership of the products;  adoption of
the measures necessary to prevent the continuation or recurrence of the infringement, including thedestruction of the products or the temporary or definitive closure of the defendant's business;
publication of the ruling and its notification to interested parties at the expense of the infringer
(Article 241 of Decision 486 of the Commissi on of the Andean Community - Common Industrial
Property Regime).IP/C/W/252
Page 4
In criminal matters, the competent courts may impose a term of imprisonment of one (1) to
twelve (12 months) on any person who commits any of the offences specified in Section II,
Chapter XII, of the Industrial Property Law.
- Article 45:  Damages
Venezuela's ordinary law lays down the princi ple that "Any person who intentionally, by
negligence or imprudence, causes damage to another person shall be obliged to compensate for it"
(Article 1185 of the Civil Code).  This includes any situation where damage has been proven, in
which case the competent court shall issue a rulin g ordering the payment of a sum of money for
damages, irrespective of the subject matter of the case.  The owner of an intellectual property right is
also covered by this principle.
Venezuela's judicial system contains several provisions on the costs of proceedings and
attorneys' fees, which Venezuelan legislation terms "court costs".  These include the costs incurred by
each party in bringing the case to court and the fees paid to attorneys, experts and other professionals
involved in the proceedings.  According to these provisions, as a general principle, the court will orderthe losing party to pay the court costs (Articles 274 to 287 of the Code of Civil Procedure).
There are nevertheless some special provisions:(i) CopyrightThe competent national authority may order payment of adequate compensation or
indemnification to the owner of the right infrin ged for the damages sustained as a result of the
infringement and order the offender to bear the cost of the proceedings that he has caused the owner
of the infringed right to institute (subparagraphs (a) and (b) of Article 57 of Decision 351 of theCommission of the Cartagena Agreement - Co mmon Provisions on Copyright and Neighbouring
Rights).
(ii) Industrial propertyArticle 239 of Decision 486 provides that the owner of a patent may take legal action for
damages resulting from unauthorized use of the invention or utility model between the time when itbecame public knowledge and the respective application was opened to consultation and the date the
patent was granted.
The competent national authority may order compensation for damages (subparagraph (b) of
Article 241 of Decision 486 of the Commission of  the Cartagena Agreement - Common Industrial
Property Regime).  For the purpose of calculati ng the compensation for damages, the following
criteria laid down in Article 243 of the Common Industrial Property Regime must be used:  the
consequential damage and lost profits suffered by the right holder as a result of the infringement;  the
amount of profit obtained by the infringer as a result of the acts of infringement;  or, based on the
commercial value of the infringed right and such contractual licences as may have been grantedalready, the price the infringer would have paid for a contractual licence.
- Article 46:  Other remedies
Courts may order the withdrawal from commercial channels of goods that infringe intellectual
property rights and their destruction, either as a provisional measure ordered by a court or as a penalty
following a conviction.  For example:
As regards border measures, the competent intellectual property authority may request the
customs authorities, subject to substantiation, to prevent the customs clearance of goods at any time,IP/C/W/252
Page 5
provided that sufficient security is furnished to prot ect the right holder if there is any infringement, the
amount being fixed by the competent authority.
The customs authorities shall notify the owne r, importer or consignee that the goods in
question have been withheld (Article 87 of the Basic Customs Law).
Articles 250 to 255 of Chapter III (On Border Measures), of Title XV (On Actions for
Infringement of Rights), of the Community text Decision 486 – Common Industrial Property
Regime – also provide for such a procedure.
With regard to industrial property, Article 105 of the Law specifies that:
"Any sentence pronouncing a conviction in an industrial property case shall order the
destruction of the elements that had been used or prepared in order to commit the offence, as
well as the objects resulting from the offence."
The Law on Copyright (Article 110) allows action or claims for the purpose of obtaining the
destruction or withdrawal of originals or copies unlawfully reproduced and of the equipment used for
the unlawful reproduction.
The judicial ruling must endorse or refuse the withdrawal or destruction, but the equipment
used for the reproduction may not be destroyed if it can be used for the reproduction orcommunication of other material (Article 110).
In exceptional cases, the unauthorized copy of a work, performance or production, or the
equipment used for the offence, may have special artist ic or scientific merit and if this is the case the
court will not order its destruction and is empowered to order ex officio that it be handed over to apublic museum.  Action for removal and destruction always leaves open the possibility of action for
damages (Article 110 of the Law on Copyright and Article 56 of Decision 351 of the Commission of
the Cartagena Agreement - Common Provisi ons on Copyright and Neighbouring Rights).
- Article 47:  Right of information
Article 242 of Decision 486 of the Andean Comm unity provides that Member Countries may,
unless out of proportion to the seriousness of the infringement, instruct the judicial authorities to order
the infringer to tell the right holder the names of third parties having taken part in the production and
distribution of the infringing goods or services and about the channels used for distribution of such
goods.  This regulation is in the same spirit as Article 47 of the TRIPS Agreement.
There is a constitutional guarantee in Venezuelan law that no person is obliged to
acknowledge his own guilt nor that of his or her spouse, family members up to the fourth degree of
consanguinity or the second degree of affinity (Article 49.5 of the Constitution of the Bolivarian
Republic of Venezuela).
In the case of third parties, in criminal proceedings any declaration in this respect by one
party regarding another party is deemed to be a presumption and not convincing proof.
Nevertheless, an infringer who provides information on the acts referred to in the question
enjoys a privilege, namely, dismissal of replies to  interrogatories (Article 403 of the Code of Civil
Procedure, reply to interrogatories), which would in any event depend on the questions and the
certainty with which they were formulated.
Another way in which the infringer could be made to inform the authorities of the
circumstances referred to in the question, although it does not involve an order imposed by a judicialIP/C/W/252
Page 6
authority, is where criminal proceedings are suspended because the offences are the result of
organized crime and the accused, in this case the infringer of any intellectual property right, fully
collaborates in the investigation, furnishing essent ial information so that the offence ceases or other
offences are not committed (Article 33 of the Basic Code of Criminal Procedure).
- Article 48:  Indemnification of the defendant
It is not only the plaintiff or owner of intellectual property rights who is entitled to bring
action for damages and indemnification for damages is also available to any person who has been a
victim of the plaintiff's imprudence so the principle laid down in Article 1185 of Venezuela's Civil
Code applies in such cases.
Where a court orders a preventive measure, the plaintiff is usually required to deposit security
in accordance with procedural legislation to ac t as a guarantee against any injury caused to the
defendant.  It is important to note that a court may ask the plaintiff to deposit sufficient security before
ordering a preventive measure (Article 247 of Decision 486 of the Andean Community).
In addition, the Constitution of the Bolivarian Republic of Venezuela recognizes the State's
obligation to indemnify victims of human rights viol ations attributable to it, including the payment of
damages (Article 30).  This is the general rule regarding the State's liability for unlawful action, which
includes action by its officials.  It is also the basis for the extra-contractual liability of the public
authorities as it allows claims for the indemnification of injury caused by their action.
- Article 49:  Administrative procedures
The "principle of freedom of evidence" applies in administrative procedures and allows the
use of any of the means of proof laid down in an y legislative text (Article 58 of the Basic Law on
Administrative Procedures).  Consequently, one of the options open to judicial authorities is to order a
party to proceedings to furnish the evidence within its  control, at the request of the opposing party, by
means of the "presentation of documents", which is explained elsewhere in this report.
In an administrative procedure, subject to substa ntiation, some or all of the documents in the
administrative file may be declared confidential (Article 59 of the Basic Law on Administrative
Procedures).
Venezuela's legislation does not have any provisions allowing the administrative authorities
to order measures such as the destruction of the infringing goods or the temporary or definitive
closure of a business.
Section 3:  Provisional measures
- Article 50
(i) CopyrightA court may order the sequestration of everything that constitutes infringement of the right of
exploitation and the seizure of the revenue accruing to the right holder provided that proof
constituting a serious presumption of the right claimed is furnished (Article 111 of the Law on
Copyright).
The competent national authority may, as a precautionary measure, order the immediate
cessation of the unlawful activities;  the attachment, sequestration, confiscation or preventive seizure,
as appropriate, of the copies produced in violation of rights; and the attachment, seizure, confiscation
or sequestration of the apparatus or materials used to commit the unlawful act (Article 56 of DecisionIP/C/W/252
Page 7
351 of the Commission of the Cartagena Agreem ent – Common Provisions on Copyright and
Neighbouring Rights).
(ii) Industrial property
The following provisional measures may be ordered:  immediate cessation of all acts
constituting the alleged infringement;  withdrawal from commercial channels of all products resulting
from the alleged infringement;  suspension of the importation or exportation of the goods;
establishment by the alleged infringer of an adequate guarantee;  and temporary closure of the
business belonging to the defendant or the accused, if necessary, to prevent continuation or repetition
of the alleged infringement.  (Article 246 of Decision 486 of the Commission of the Andean
Community – Common Industrial Property Regime).
Suspension of the effects of the administrative act of registering a patent or trademark whose
annulment has been sought may be requested when permitted by the law or if suspension is necessary
to prevent irreparable injury or injury that it would be difficult to repair definitively, and the court
may require an appropriate guarantee for this purpose (Article 136 of the Basic Law on the SupremeCourt of Justice).
As a provisional measure, suspension of the effects of the administrative act of registering a
patent or trademark may be requested before the competent court, under the constitutional guarantee
on the protection of rights, on the grounds of unconstitutionality, provided that the requirementsapplicable to provisional measures are met, namely, those of colour of title and risk in delay (Article 5
of the Basic Law on the Protection of Constitutional Rights and Guarantees).
In both cases, copyright and industrial property, any type of provisional measure or
"innominate measure" may be requested provided that the requirements laid down in the law are met(First Paragraph of Article 588 of  the Code of Civil Procedure).
In intellectual property cases, provisional or preventive measures may be requested before
proceedings are brought (only in copyright cases), at the same time as the proceedings or after they
have commenced.  A person requesting provisional or preventive measures must provide evidence
allowing for a presumption of infringement or that  infringement is imminent before the court may
order any such measure.
Preventive measures shall be maintained until the end of the proceedings, unless the
defendant requests the court to suspend the measure against the deposit of sufficient security or
guarantee.  The decision rests with the court.
The defendant has the right to oppose the preventive measure ordered within three days
following its imposition and eight days are then give n to the parties in which to bring their case and
furnish the evidence they deem relevant.  A decision is taken by the court in a ruling that must be
given within two days followin g the expiry of the period allowed for furnishing evidence.
In order to protect the defendant, in certain circumstances the court shall order the plaintiff to
furnish security before imposing the preventive measure.
In Venezuela's administrative procedure, a provisional or preventive measure means the
suspension of the effects of the administrative ac t that is the subject of the complaint if its
implementation could cause serious injury to the person concerned.IP/C/W/252
Page 8
Section 4:  Special requirements related to border measures
- Articles 51 to 60
Without impairing the legal authority of the cust oms, which is designed to give the competent
authority the right to act in respect of the goods refe rred to in Article 7, to authorize or prevent their
customs clearance, to exercise tax prerogatives, to determine the duty payable, to apply sanctions
where necessary, and, in general, to carry out the controls provided in the national customs legislation
(Article 6 of the Basic Customs Law), at the request of the competent intellectual property authority,
the customs authorities shall prevent the customs clearance of goods which allegedly infringe
intellectual property rights granted in Venezuela or derived from international agreements to which
Venezuela is party.
The competent intellectual property authority may request the customs authorities, subject to
substantiation, to prevent the customs clearance of goods at any time, provided that sufficient security
is furnished to protect the right holder, the amount being fixed by the competent authority.
The customs authorities shall notify the owne r, importer or consignee that the goods in
question have been withheld (Article 87 of the Basic Customs Law).
Articles 250 to 255 of Chapter III (On Border Measures), of Title XV (On Actions for
Infringement of Rights) of the Community text Decision 486 – Common Industrial Property Regime –also provide for such a procedure.
Pursuant to Article 256 of Decision 486 of the Andean Community, this regime does not
apply to small quantities of goods of a non-commercial nature contained in travellers' luggage or sent
in small consignments.
It should also be noted that the owner of a registered trademark may not prevent third parties
from engaging in trade in a product protected by regi stration after the owner or a third party with the
latter's consent or with economic ties to the ow ner, has introduced the product into trade in any
country, even if the products, packaging or wrapping in direct contact with the product have not
undergone any change, alteration or deterioration (Article 158 of Decision 486 of the Andean
Community).  The reason for this is that, as we ex plain in the replies to questions on enforcement in
criminal matters, it is classified as an offence under Article 338 of the Criminal Code.  In this
connection, Venezuela recognizes parallel imports.
Regulations and procedures in this respect have to be complemented by domestic legislation.
Nevertheless, Articles 250 to 255 of Title XV, Chapter III (On Border Measures), of Decision 486 laydown procedural regulations in this respect.  Th e owner of a registered trademark who has valid
grounds for suspecting that products infringing the trademark are to be imported or exported may
request the competent national authority to suspend customs clearance.  He must supply the authority
with the necessary information and a sufficiently detailed and precise description of the allegedly
infringing goods to allow them to be identified (Article 250 of Decision 486).
In order to substantiate his claims, the owner of the trademark may be allowed to participate
in the inspection of the goods withheld.  The importer or exporter of the goods shall enjoy the same
right.
When carrying out the inspection, the competent national authority shall take the necessary
steps to protect the confidentiality of information, where applicable (Article 251 of Decision 486).IP/C/W/252
Page 9
After the applicable criteria have been met and the security deposited, the competent national
authority shall order or refuse the suspension of customs clearance and shall notify the applicant
accordingly.
If the authority orders suspension, the notification shall include the name and address of the
consigner, importer, exporter and consignee of the goods, as well as the quantity of the goods
suspended.  The suspension shall also be notified to the importer or exporter of the goods (Article 252
of Decision 486).
If the plaintiff has not initiated an action for infringement within ten working days of the date
of notification of suspension of customs clearance or the competent national authority has not
extended the suspension, the measure shall be lifted and the goods withheld shall be released(Article 253 of Decision 486).  Where the existence of infringement has been determined, the goods
bearing counterfeit trademarks that have been seized may not be re-exported nor made subject to any
other customs procedure, except in duly specified cases or with the express authorization of the owner
of the trademark (Article 255 of Decision 486).
After infringement proceedings have been initiated, the defendant may appeal against the
measure and the competent court shall decide whether to modify, revoke or confirm the suspension
(Article 254 of Decision 486).
Without prejudice to any other action open to the owner of the right and subject to the
defendant's right to appeal to the judicial author ities, the competent national authority may order the
destruction or seizure of the infringing goods.
In principle, in Venezuela there are no ex officio measures by civil courts;  such measures
must be requested in the context of judicial proceedings.  They may be enforced ex officio if they arerequested by the Public Prosecutor's Office in the course of criminal proceedings, in which case the
goods must be withheld until it is determined whether or not a punishable offence has been
committed.  In cases of smuggling, the goods may be destroyed.  These measures can be carried out
by the frontier customs guard, i.e. the National Guard, in the course of anti-smuggling operations, for
narcotics offences or as a result of complaints made on the basis of the Criminal Code or the
commission of an offence.
It should be noted that Article 87 of th e Basic Customs Law empowers the customs
authorities to impose border measures, but as these must be requested in judicial proceedings resulting
from an investigation based on a complaint or petition, it is in fact the judicial authorities that are
competent to order them.
Pursuant to Article 241 of Decision 486 of the Andean Community, any of the following
measures can be requested:
(a) Cessation of acts that constitute the infringement;
(b) compensation for damages;(c) withdrawal from commercial channels;
(d) prohibition of import or export;
(e) adjudication of the ownership of the products;
(f) destruction of the products;IP/C/W/252
Page 10
(g) temporary or definitive closure of the defendant's business;
(h) publication of the ruling and its notification to interested parties at the expense of the
infringer.
In addition, the Code of Civil Procedure allows requests for innominate measures provided
that the allegations specified in Article 588 are substantiated.
As provided in Article 247 of Decision 486 of the Andean Community, any person requesting
such measures must accredit their lawful right to act and the existence of the infringed right, and
furnish evidence allowing for a reasonable presum ption that infringement has been committed or is
imminent.  In customs matters, pursuant to Article 87 of the Basic Customs Law, sufficient security or
guarantees are required.
Section 5:  Criminal procedures
- Article 61
For criminal cases, in accordance with the Basic Code of Criminal Procedure (COPP),
published in Official Journal No. 5.208 (Special) of the Bolivarian Republic of Venezuela, dated
23 January 1998, which repealed the Code of Criminal Prosecution, competence is determined on a
territorial basis according to the place where the offence or misdemeanour was committed (Article 53
of the COPP).  There are criminal courts at two levels in each judicial district:  first instance,
comprising courts where a judge sits alone ( tribunales unipersonales ), mixed courts ( tribunales
mixtos ), and courts with juries ( tribunales jurados );  the other level is appeals courts, composed of
benches where professional judges sit ( tribunales colegiados de jueces profesionales ).  The
supervision of the investigation and the intermediate stage are the responsibility of courts where a
judge sits alone called supervisory courts ( tribunales de control ) and the judgement stage is the
responsibility of the law courts ( tribunales de juicio ) (Article 103 of the COPP) in the sense that when
the Basic Code of Criminal Procedure refers to the supervisory court or judge ( tribunal o juez de
control ), the law court or judge ( tribunal o juez de juicio ) and the enforcement court or judge
(tribunal or juez de ejecución ), this always means the judge of first instance with supervisory, legal or
enforcement responsibilities, respectively (Article 104 of the COPP).
In this particular case, courts with a single judge, whether supervisory or enforcement courts,
hear industrial property cases covered by the Crim inal Code and the Industrial Property Law as the
offences specified in Articles 338 to 340 of the Criminal Code and Articles 98 to 101 of the Industrial
Property Law provide for terms of imprisonment not exceeding four years.
The Criminal Code provides penalties for the infringement of industrial property rights and
copyright.  Article 338 of the Criminal Code, for example, specifies a term of imprisonment of one(1) to twelve (12) months for any person who has counterfeited or altered names, trademarks or
distinctive signs belonging to intellectual works or to the products of any industry, and for any person
who has made use of legally registered names, trademarks or signs that have been so counterfeited or
altered, even if the act was carried out by a third person.  The same penalty applies to any person who
has counterfeited or altered industrial designs or has made use of them, even if the act was carried outby a third person.
Article 339 of the Criminal Code imposes a term of imprisonment of one (1) to twelve
(12) months on any person who, for the purpose of trade, has imported into Venezuela and put on sale
or in any way circulated intellectual works or products of any industry bearing counterfeited or alterednames, trademarks or distinctive signs likely to mislead the consumer as to their origin or quality, if
the ownership of the works, names, trademarks or signs has been legally registered in Venezuela.IP/C/W/252
Page 11
Article 340 of the Code imposes a term of imprisonment of fifteen (15) days to three
(3) months on any person who has disclosed information concerning an invention, scientific discovery
or industrial application that should have been kept secret and who has become aware of it because of
their position or employment or as a result of their profession, art or industry, as well as a term of
imprisonment of  fifteen (15) days to six (6) months if the disclosure was made to a foreigner notresident in Venezuela or the latter's agent.
Likewise, the Industrial Property Law imposes a term of imprisonment of one (1) to twelve
(12) months on any person who infringes the rights of the legitimate owner or holder of a patent, by
manufacturing, making, transmitting or using for industrial purposes and for profit unlawful or
fraudulent copies of the subject matter of the patent , without the express or tacit consent of the owner,
as well as any person who, in order to prejudice the rights or interests of the legitimate owner, uses,manufactures or makes registered trademarks, models or others likely to be confused with them
(Articles 98 and 99).
Any person who designates a business as a branch of another business which has a registered
trade name and who maliciously takes advantage of an industrial or commercial reputation earned bythe efforts of another whose property is protected under the Industrial Property Law shall be liable to
a term of imprisonment of one (1) to twelve (12) months (Articles 100 and 101 respectively).
As regards copyright, use of the title of a work, communication in the original or a developed
form, in their entirety or in part, of intellectual works, editions of the works of others, or of texts orphotographs or products obtained by a process e quivalent to photography or images recorded on
cinematographic film, being equivalent to photography, or the distribution of intellectual works
including copies of phonograms and unauthorized broadcasting or retransmission by broadcasting
organizations, without the consent of the owner of the rights concerned, shall be liable to a term of
imprisonment of six (6) to eighteen (18) m onths (Article 119 of the Law on Copyright).
A term of imprisonment of one (1) to four (4) years is imposed on any person who
intentionally reproduces in the original or a developed form, in their entirety or in part, intellectual
works, editions of the works of others or texts or photographs or products obtained by a process
equivalent to photography or who imports into Vene zuela, stocks, distributes, sells, or circulates
unlawful reproductions thereof (Article 120 of the La w on Copyright).  The same penalty applies to
any person who copies, by any means, the performance of an actor or performer, a phonogram or abroadcast in its entirety or in part, or who imports into Venezuela, stocks, distributes, sells or
circulates such reproductions or copies (Article 121 of the Law on Copyright).
In Venezuela, the competent public authority fo r initiating criminal proceedings is the Public
Prosecutor's Office, whose responsibilities in cr iminal proceedings, pursuant to Article 105 of the
Basic Code of Criminal Procedure, are the following:
(1) To direct the investigation of punishable offences and the activities of the police
investigation authorities in order to determ ine the identity of the perpetrators and
participants.
(2) to organize and supervise the activities of the police investigation authorities as
regards the obtaining and conservation of items of evidence.
(3) to prepare the accusation and amplify it where necessary and to request imposition of
the corresponding penalty.
(4) to order the filing of supporting documents relating to the case, subject to a
substantiated decision, where there are not sufficient elements to pursue the
investigation.IP/C/W/252
Page 12
(5) in the cases permitted by the Law, to dispense with criminal action.
(6) where applicable, to request dismissal of the case or acquittal of the accused.
(7) to put forward objections against judicial officials and members of the jury.
(8) to initiate civil proceedings resulting from the offence, where this is provided by the
Code.
(9) to request the competent court to impose the necessary preventive measures.
(10) to participate in all activities during the proceedings which, pursuant to the Law,
require its presence.
(11) to lodge appeals against decisions taken in cases in which it is involved.
(12) to safeguard the interests of victims during the proceedings.
(13) to request the competent court not to allo w the plaintiff to appear in court when his
intervention repeatedly obstructs the prosecution's action.
(14) any other functions attributed to it under the Code or other legislation.
The Public Prosecutor's Office may initiate proceedings ex officio or at the request of the
injured party.  As far as the actions in Articles 338 and 339 of the Criminal Code are concerned, these
are public actions so the Public Prosecutor's Office is responsible for initiating the proceedings  ex
officio, although this does not prevent a private person from lodging a complaint with the Public
Prosecutor's Office or with a public official in accordance with Article 92 of the Criminal Code.
Action in the cases referred to in Article 340 of the Criminal Code and Articles 98 to 101 of
the Industrial Property Law can only be initiated by the injured party.  This type of offence is called a
private prosecution in Venezuelan legislation.
The offences defined in Articles 119 to 122 of Part VII (Criminal Sanctions) of the Law on
Copyright can only be initiated on a complaint by the injured party (Article 123 of the Law on
Copyright).
Owners of industrial property rights, licensees and their attorneys.In the case of copyright, any owner of one of the rights of exploitation recognized in the legal
text, whether the original owner, the associated ow ner or the owner by operation of the law, either of
copyright, a related or neighbouring right, may brin g an action.  This means that the owners include
the author and his successors in title (either as a result of transfer following the author's death orthrough an act inter vivos ), in accordance with Articles 5, 29 and 50 of the Law on Copyright;  the
producer of an audiovisual work (Article 15 of th e Law on Copyright), a broadcast work (Article 16
of the Law on Copyright), a computer program (Artic le 17 of the Law on Copyright), as well as the
employer or person commissioning a work when it  has been made in the course of employment
relations or on commission (Article 59 of the La w on Copyright), by virtue of the presumption of
transfer of economic rights laid down in the relevant provisions;  the publisher or the person who has
disclosed an anonymous work, as the legal representative of the author (Article 8 of the Law on
Copyright);  the photographer (Article 38 of the Law on Copyright);  the publisher of a work that is
the result of scientific work (Article 36 of the Law on Copyright); the discloser of a posthumous work
(Article 37 of the Law on Copyright), the latter thr ee as owners of related rights;  and the owners ofIP/C/W/252
Page 13
neighbouring rights, namely, performers (Article 92 of the Law on Copyright), phonogram producers
(Articles 95 and 96 of the Law on Copyright) and  broadcasting organizations (Article 101 of the Law
on Copyright), or their respective successors in title.
Partners, shareholders or members, in the case of offences affecting a legal person committed
by persons who direct, manage or control them, and associations, foundations and other bodies, in the
case of offences affecting collective or separate interests, provided that the purpose of the group is
directly linked to such interests and that it was established prior to the commission of the offence
(paragraphs 3 and 4 of Article 116 of the Basic Code of Criminal Procedure).
The Industrial Property Law, the Criminal Code, and the Law on Copyright provide for terms
of imprisonment which, depending on the case defined in the texts, may range from one month to fouryears as punishment for offences which infringe intellectual property rights.
(i) Monetary finesIn addition to the term of imprisonment provided in the Criminal Code and the Industrial
Property Law, a fine of Bs 50 to 1,000 applies to persons who:
(1) Without having obtained a patent or enjoying the privileges it gives, take advantage
of it as though they had obtained it;
(2) use a trademark or industrial design without being in possession of the corresponding
certificate of registration and indicate that the trademark or design has been
registered;
(3) obtain a trademark for a particular category of product and use it as a registered
trademark on products belonging to another category;  and
(4) maliciously assert that a registration is still valid even though, according to a public
declaration by the competent authority, it no longer has effect.  In cases of recidivism,
the penalty indicated in this Article shall be in the form of a proportionate term of
imprisonment (Article 102 of the Industrial Property Law).
As regards copyright, a monetary fine, independently of the penalty applicable at the criminal
level, may accompany the judicial decision imposin g the cessation of the infringing activity.  A fine
was established in the revised Law on Copyright of 1993, not in relation to future infringement as was
the case in the 1962 Law but as a result of proving the occurrence of an infringement of the plaintiff's
rights in the course of proceedings seeking a restraining order.
This means that, if infringement is proved in the course of the proceedings, at the request of
the injured party the court shall order a fine not exceeding the equivalent of twenty (20) minimum
wages, which can be converted into a term of imprisonment at the rate of Bs 500 per day of
imprisonment.  In cases of recidivism, the penalty may be doubled.  In addition, the amendment toArticle 95 of the repealed Law on Copyright, whic h has now become Article 109, empowers the court
to impose a fine on the infringer once infringement has been proved without having to wait until
further infringement has occurred, which was the case in the previous text.
A fine is of course independent of any conviction relating to compensation for damages.(ii) Seizure, forfeiture and destruction of infringing goods and materials and implements
for their production
In industrial property cases, Article 105 of the relevant Law provides that:IP/C/W/252
Page 14
"Any sentence pronouncing a conviction in an industrial property case shall order the
destruction of the elements that had been used or prepared in order to commit the offence, as
well as the objects resulting from the offence."
The Law on Copyright (Article 110) allows action or claims for the purpose of obtaining the
destruction or withdrawal of originals or copies unlawfully reproduced and of the equipment used for
their unlawful reproduction.
The judicial ruling must endorse or refuse the withdrawal or destruction, but the equipment
used for the reproduction may not be destroyed if it can be used for the reproduction or
communication of other material (Article 110).
In exceptional cases, the unauthorized copy of a work, performance or production, or the
equipment used for the offence, may have special artist ic or scientific merit and if this is the case the
court will not order its destruction and is empowered to order ex officio that it be handed over to a
public museum.  Action for removal and destruction always leaves open the possibility of action fordamages.
(iii) Other measuresIn Venezuela, Article 113 of the Law on Copyright provides that, at the request of the party
concerned, the court may order that the text of the ruling given in any of the actions covered by the
Law be published at the expense of the losing party in one or more newspapers specified by the court.
Although this authority can be used at the court's discretion, the order to publish the text of
the ruling has been normal practice in cases heard under civil jurisdiction in Venezuela, provided ofcourse that it has been requested by the person concerned.
In criminal cases, Article 338 of the Criminal Code allows the court to decide that the
conviction should be published in a newspaper it specifies, at the expense of the defendant.  In
contrast to what happens in civil proceedings, this authority is rarely used.
In copyright matters, the court may order the publication in the press of the adverse or
favourable judgement at the expense of the defendant or of the plaintiff, depending on the case
(Article 124 of the Law on Copyright).
Other punitive measures that may also be requested pursuant to Article 111 of the Law on
Copyright include seizure of the revenue accruing to  the owner of the disputed right of exploitation
and the sequestration of anything that constitutes infringement of the right of exploitation.  These
measures may only be ordered under this Article if th ere is proof of a serious presumption of the right
claimed or if the presumption emerges from the production of any of the evidence.  In addition to the
special rules relating to copyright, the provisions in the Code of Civil Procedure also apply so the
measures indicated do not prevent the imposition of others such as a ban on disposing of orencumbering property or measures taken on the basis of the first paragraph of Article 588 of the Code.
Appropriate measures (innominate measures) also a pply to industrial property rights if there is a
justified fear that one of the parties might cause serious injury or injury that it would be difficult to
repair to the rights of another party.
In addition to the foregoing, the Code of Civil Procedure allows the application of measures
other than those determined in the legislation, provid ed that certain specific requirements are met and
these are called innominate measures (Article 588).IP/C/W/252
Page 15
The revision of the former Code of Criminal Prosecution and its replacement by the new
Basic Code of Criminal Procedure has led inter alia  to the elaboration of a new criminal procedure
that guarantees the principles of duality, a hearing, equality, rapidity, official procedures, adequacy
and legality, among others, and moreover these are constitutional principles.
The principle of duality means that there are two parties to proceedings which hold opposing
positions:  accuser and accused, with the court acting as an impartial third party.
The principle of a hearing (" audiatur et altera pars ") means that no one can be convicted
without being heard, but this does not only apply to the accused;  the accuser must also be heard both
when he makes his accusation or when he requests a court ruling.  This is the case for the prior
examination of unrepeatable evidence (Article 316), the decision on commencement of hearing(Article 334) and the discussion in oral proceedings (Articles 347 et seq ), all of which are in the Basic
Code of Criminal Procedure.
The principle of equality means that the parties have the same rights, opportunities and
responsibilities for the defence of their interests.
The principle of official procedures means that, in accordance with the public interest,
criminal prosecution is supervised by quite different State bodies which deal with the prosecution and
the procedure.
The principles of adequacy and legality:  adequacy is the counterpoint to legality, according
to which the Public Prosecutor's Office is obliged to bring a prosecution in any case which constitutes
an offence, provided that the investigation carried out yields sufficient evidence to proceed with the
accusation.
The principle of adequacy can be seen as an exception to legality.  It means that it can be
decided not to prosecute certain criminal acts or to suspend proceedings already initiated, with or
without conditions.  In Anglo-Saxon law, this is called "plea of guilty", a confession designed to avoid
a trial, and "plea bargaining", when negotiations between the prosecutor and the accused regarding the
scope of the accusation lead to agreement and thus, where applicable, reduce or attenuate the criminal
offence considered as such.
In accordance with these principles, the reform of criminal procedure in Venezuela is aimed
at the flexibility and modernization of procedures, although it is not possible to indicate their precise
duration or specify the exact costs because these depend to a large extent on the amount of the claims
disputed and the damage caused through loss of profits or consequential damage, which are specific in
each case.  In some cases, during the preparatory and investigation phases, when the facts have beendetermined, the Public Prosecutor's Office may postpone the case for six months and request an
extension in order to obtain the elements required before sending the case for trial.
In addition, depending on the speed of the proceedings and the efficacy of the courts, the
injured party may bring a civil action for damages caused by the offence, which may be examined anddecided by the criminal courts.  This option is open to right holders and it helps to speed up
proceedings and uphold their rights.  This is the spirit underlying the action for damages provided in
Article 1185 of the Venezuelan Civil Code and Articles 241, subparagraph (b) and 243 of the new
Decision 486 of the Andean Community, as well as in Venezuelan legislation already covered in other
parts of the replies to this questionnaire.IP/C/W/252
Page 16
2. What protection does your copyright legislation afford to "foreign works"?
The Bolivarian Republic of Venezuela has signed and ratified the Berne Convention for the
Protection of Literary and Artistic Works of 9 September 1886 and its Appendix, which are thus laws
of the Republic.  Article 3 of the Convention sets out the criteria for protection as follows:
"(1) The protection of this Convention shall apply to:
(a) Authors who are nationals of one of the countries of the Union, for their
works, whether published or not;
(b) authors who are not nationals of one of the countries of the Union, for their
works first published in one of those countries, or, simultaneously, in a
country outside the Union and in a country of the Union.
(2) Authors who are not nationals of one of the countries of the Union but who have their
habitual residence in one of them shall, for the purposes of this Convention, be assimilated tonationals of that country (…)."
With regard to neighbouring rights, the Bolivarian Republic of Venezuela has also signed and
ratified the Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations (Rome 1961).  The principle of national treatment is defined in Article 2 of thisConvention:
"1. For the purposes of this Convention, national treatment shall mean the treatment
accorded by the domestic law of the Contracting State in which protection is claimed:
(a) To performers who are its nationals, as regards performances taking place,
broadcast, or first fixed, on its territory;
(b) to producers of phonograms who are its nationals, as regards phonograms first
fixed or first published on its territory;
(c) to broadcasting organizations which have their headquarters on its territory, as
regards broadcasts transmitted from transmitters situated on its territory (…)."
Article 98 of the Constitution of the Bolivarian Republic of Venezuela specifically recognizes
the legal force of international intellectual property agreements as follows:
"Article 98:  (…) The State shall recognize and protect intellectual property in scientific,
literary and artistic works, inventions, innovations, appellations, patents, trademarks and
advertising slogans in accordance with the condit ions and exceptions laid down in the law and
in the relevant international agreements sign ed and ratified by the Republic."  (Emphasis
added)
The principle of national treatment in internati onal copyright agreements is thus incorporated
in Venezuelan legislation and its observance is mandatory for administrative and judicial authorities.
Venezuela's domestic copyright legislation (Law on Copyright and its Regulations) contains
all the substantive and procedural principles included in the relevant international agreements.
In Venezuela, foreign works enjoy the same protection as national works and this is granted
in accordance with the principles laid down in international agreements.IP/C/W/252
Page 17
3. What are the key improvements introduced by Decision 486 on intellectual property,
which took effect on 1 December 2000, in re spect of the TRIPS Agreement obligations?
The new subregional regulations in the text cover the following, in accordance with the
TRIPS Agreement:
• National treatment and most-favoured-nation clause
• Protection for lay-out designs (topographies) of integrated circuits
• Measures for the enforcement or protection of industrial property rights (provisional,
civil, administrative and border measures)
• Regulation of industrial property-related unfair competition
• Term for industrial designs
• Scope of patentatibility (patentable subject matter and exclusions from patentability)
• New use patents
• Business secrets
Some brief remarks follow concerning the aforementioned aspects, which show the
adaptation of the Andean regime to the TRIPS Agreement.  There are also some comments on other
changes that are intended to make technical improvements to the common industrial property regime:
In the new Decision there are:  General Provisions regarding national treatment , which
provide that each Member Country shall accord to the nationals of other Members of the Andean
Community, the World Trade Organization and the Paris Convention for the Protection of Industrial
Property treatment no less favourable than it accords to its own nationals with regard to the protectionof intellectual property.  The same treatment may be accorded to the nationals of a third country under
the terms of the Member Country's domestic legislation.
There is a clause on most-favoured nation treatment providing that any advantage, favour,
privilege or immunity in respect of intellectual property granted by a Member Country to the nationals
of any other Andean Community Member Country sh all be extended to the nationals of all other
Members of the World Trade Organization or of the Paris Convention.
Regarding non-patentable subject matter, each of the requirements is specified and complies
with the TRIPS Agreement (Article 27.2 and 27.3).  The following are therefore not patentable:
(a) Inventions whose commercial exploitation in the territory of the respective Member
Country must necessarily be prevented in order to protect public order or morality.
For this purpose, the commercial exploitation of an invention shall not be considered
as contrary to public order or morality merely because the exploitation is prohibited
or regulated by a legal or administrative provision;
(b) inventions whose commercial exploitatio n within the respective Member Country
must necessarily be prevented in order to protect human or animal life or health, or to
protect plants or the environment.  For this purpose, the commercial exploitation of
an invention shall not be considered as prejudicial to the health or life of persons,IP/C/W/252
Page 18
animals or for the protection of plants or the environment merely because the
exploitation is prohibited or regulated by a legal or administrative provision;
(c) plants, animals and essentially biological processes for the production of plants or
animals other than non-biological and microbiological processes;
(d) diagnostic, therapeutic and surgical methods for the treatment of humans or animals.The prohibition on patenting the generic drugs contained in the World Health Organization's
list has been abolished.
The wording found in Article 16 of the repealed Decision 344 on protection of new use has
been maintained as follows:
"Products or processes already patented and included in the state of the art within the meaning
of Article 16 of this Decision may not be the subject of new patents on the sole ground of
having been put to a use different from that originally contemplated by the initial patent."
In accordance with the provisions in Article 27.3(b) of the TRIPS Agreement, the protection
of micro-organisms under the patent regime has been established.
The period for processing patent applications has been extended from 30 days with the
possibility of a further 30-day extension to a period of 60 days with an extension of a further 60 days.
This was requested by patent applicants because of  the need to obtain technical information at the
international level and to have the necessary time to file the application in other countries in order to
obtain protection.
The protection of lay-out designs of integrated circuits has been introduced in accordance
with Articles 35 to 38 of the TRIPS Agreement, thereby complying with a requirement in existence
since 1 January 2000.
Pursuant to Articles 25 and 26 of the TRIPS Agreement, amendments have been made to the
industrial designs regime so as to allow the protection of textile designs, which were excluded from
protection under Decision 344, and giving all designs protection for eight to ten years as of the date of
filing the application while at the same time establishing a much more rapid procedure for the
processing of applications.
A special section has been introduced on well-known signs, limiting their scope only to cases
in which there might be a risk of confusion or of association for consumers in the market and
consequently of weakening the distinctiveness of the sign for the owner of the trademark.
The criteria to be taken into account when determining the distinctiveness of a sign have been
extended and this will be to the benefit of applicants as far as the lodging of opposition or proving the
distinctiveness of a sign are concerned.  It will also help to broaden the criteria to be taken intoaccount by the authority in order to substantiate its decisions and provide better protection under the
trademark regime.
In view of the problems raised by the attr ibution of domain names without knowing whether
there are any prior rights in well-known signs, which is causing a considerable amount of insecurityand a climate of unfair competition, the competent national authority is authorized to cancel or request
the modification of a domain name or electronic ma il address at the request of the owner or lawful
holder of rights in a well-known sign provided that the name or address is likely to cause confusion or
association, economic or commercial injury or unfair exploitation of the sign's prestige or fame.IP/C/W/252
Page 19
This clause is the first provision that tries to achieve a balance between the system of
assigning domain names and the trademark regime, espe cially with regard to well-known signs, and it
will help to resolve the current problems.  It also provides the basis for strengthening the information
and cooperation links between the CNIT and the Au tonomous Intellectual Property Service (SAPI) so
as to give better security and guarantees to pre-existing trademark rights without creating obstacles tothe continuing dynamism in the attribution of domain names and it thus achieves the necessary
balance between the two systems.
Because of the insufficiency of regulations to protect lawfully acquired industrial property
rights, which is one of the most important aspects and requirements in the TRIPS Agreement, it is
now possible, in accordance with the Agreement, to claim a patent or industrial design right if a patent
or industrial design registration has been obtained by someone who has no right to it or to the
prejudice of another person with the same right.  There are also regulations on claims in cases of
infringement of a trademark.  The time-limits for bringing claims are specified and it is expressly
stated that there is no time-limit if the rights were acquired in bad faith.
These clauses represent significant progress in defending and protecting lawfully acquired
industrial property rights and create a more secure climate while at the same time they fulfil one of the
objectives of any industrial property system, namely, the effective granting of rights, which did not
previously have the necessary protection or possibilities for defensive action.
As a complement to the foregoing, the section on actions for infringement of rights constitutes
another new element in the subregional provisions because, for the first time in the Andean
Community regime, aspects concerning the action required to defend industrial property rights are
regulated.
The TRIPS Agreement requires the WTO's Members to establish such rules and this was one
of the major shortcomings of Decision 344.  Despite the clauses in the new Decision 486, however,
the procedure for taking action has to be complemented by national rules so as to define quite clearly
what is involved in "enforcement" and fully meet all the WTO's requirements.
It should be noted that, as far as copyright is concerned, the Law on Copyright already
contains national provisions to protect against infringement of copyright.  The only element missing
was the same protection for industrial property rights, which have a direct impact on development ofthe production sector, the organization of domestic trad e and the promotion of exports.  It is therefore
essential to expedite a National Industrial Property Law so as to give effect to procedures for the
protection of industrial property rights and comp lement those in the new Decision as regards
preventive measures, border measures and criminal procedures.
With regard to the latter, Decision 486 simply limits itself to enjoining Member Countries to
provide for criminal procedures and penalties to be applied in cases of trademark counterfeiting.  This
is currently covered by Articles 338 and 399 of the Criminal Code and the 1955 Industrial Property
Law, with penalties for the injury which this type of infringement can cause in industry or in markets.
Another new aspect is the incorporation of regulations on industrial property-linked unfair
trade practices in the subregional text as a complement to the unfair competition regime which exists
in Venezuela and in fulfilment of Article 10 bis of the Paris Convention.
The new Decision defines industrial-property linked unfair trade practices so that there is no
confusion nor any interference with the national authority's competence in this field.
It is stated that action against unfair compet ition can be brought without prejudice to any
other action and to the extent allowed by domestic legislation.  It may be initiated ex officio by the
competent national authority.IP/C/W/252
Page 20
The same section includes a clause on business secrets, which were previously called
"industrial secrets" in Decision 344.
The inclusion of business secrets in the section on industrial property-related unfair trade
practices is consistent with the treatment and position they should be given because they do not
constitute a separate element of industrial rights and are usually regulated under unfair competition
provisions.
Another important aspect is the fact that th e new Decision gives business secrets protection
that is consistent with the requirements in the TRIPS Agreement and establishes much clearer
provisions for their interpretation and application by entities responsible for granting authorizations tomarket pharmaceutical products or agricultural chemical products.
THE EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. 
GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition and to promote the public interest in sectors of vital importance to your socio-
economic and technological development as mentioned in the provisions of the TRIPS
Agreement.
The aim of all Venezuela's current economic and social legislation is to promote and give
effect to the public interest and the general well-being of the Venezuelan nation.  It is impossible to
identify any law in particular that responds to the terms of the question because this is a general
principle and is inherent in the functioning of any modern State.  Nonetheless, as regards intellectualproperty, the provisions of Article 65 of De cision 486 of the Commission of the Cartagena
Agreement, which allow for the granting of compulsory licences for reasons of public interest, could
be cited as an example.
The special provisions in the TRIPS Agreement (P arts II to VII) are subject to the General
Provisions and Basic Principles in Part I of the Agreement, including Article 8.  The latter lays down
certain principles  and recognizes that Members of the WTO may uphold these principles in their
domestic legislation.
The consistency of any provisions in domestic legislation with those in the TRIPS Agreement
would be covered by Article 8 of the Agreement, wh ich legitimizes measures that may be taken by a
WTO Member and are consistent with the Agreement's provisions.
B. 
COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of
authors in relation to their literary and artistic  works, as specified in Article 9 of the TRIPS
Agreement, which requires Members to comply with Articles 1-21 of the Berne Convention andthe Appendix to the B erne Convention (1971).
Venezuela acceded to the Berne Convention for the Protection of Literary and Artistic Works
on 11 May 1982.  Nevertheless, both the Venezuelan Law on Copyright and Decision 351 – Common
Provisions on Copyright and Neighbouring Rights – include provisions which fully reflect those in theBerne Convention and thus wholly comply with the provision in Article 9 of the TRIPS Agreement.IP/C/W/252
Page 21
With regard to the exception in Article 11 concerning Article 6 bis of the Berne Convention,
the Venezuelan Law departs from this exclusion and includes in the Law on Copyright the scope of
moral rights laid down in Articles 18 to 20, as well as Articles 11 and 12 of Decision 351 of the
Commission of the Cartagena Agreement.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Article 21 of the Law on Copyright includes computer programs as intellectual works.
Article 172 of the Law defines what is meant by a computer program and contains provisions on their
ownership as far as the relationship between the producer of the program and its authors is concerned.
Article 103 of the Regulations of the Law on Copyright expressly state that computer
programs are protected on the same terms as literary works.
Article 34 of Decision 351 – Common Provisions on  Copyright and Neighbouring Rights –
defines what is meant by a computer program (software).  Article 45 of the Andean Decision includes
computer programs as subjects of protection.  Likewise, Article 236 states that computer programs are
subject matter for protection by providing that they are protected on the same terms as literary works.
With regard to databases, Article 37 of the Law on Copyright specifically states that databases
shall be protected.
                                                     
1 Article 2 . - The following in particular shall be considered included among the intellectual works
referred to in the foregoing Article:  books, pamphlets and other literary, artistic and scientific writings,including computer programs and the associated technical literature and users' manuals;  lectures, addresses,sermons and other works of the same nature;  dramatic or dramatic-musical works, choreographic and mimed
works the stage movements for which have been set down in writing or otherwise;  musical compositions with
or without words;  cinematographic works and other audiovisual works expressed by any process;  works ofdrawing, painting, architecture, engraving or lithography;  works of applied art that are not mere industrialdesigns;  geographical illustrations and maps;  plans, three-dimensional works and sketches relating togeography, topography, architecture or science;  and, finally, any literary, scientific or artistic productsusceptible of disclosure or publication by any means or process.
2 "Article 17 . - Computer program shall be understood to mean the expression, in whatever mode,
language, notation or code, of a set of instructions the purpose of which is to make a computer perform aspecific task or function, whatever the manner in which it is expressed and the physical medium on which thesubject matter has been fixed.
3 Article 10 . - Computer programs shall be protected on the same terms as literary works (…)
(Regulations of the Law on Copyright and Decision 351 of the Commission of the Cartagena Agreement).
4 Article 3 . - Computer program (software):  means the expression in words, codes, plans or any other
form of a set of instructions which, on being incorporated in automated reading apparatus, is capable of causinga computer – an electronic or similar device capable of pr ocessing information – to execute a particular task or
produce a particular result.  The computer program shall likewise include technical documentation and users'manuals.
5 Article 4 . - The protection granted by this Decision shall accrue to all literary, artistic and scientific
works that may be reproduced or disclosed by any known or future means, including the following in particular:(…) (i) Computer programs.
6 Article 23 . - Computer programs are protected on the same terms as literary works.  That protection
shall extend not only to operating programs but also to application programs, in the form of either source codesor object codes.
7 Article 3 . - Translations, adaptations, transformations or arrangements of other works, and also
anthologies or compilations of various works and databases shall be considered intellectual works distinct fromthe original work where, owing to the selection or arrangement of their subject matter, they constitute personalcreations.IP/C/W/252
Page 22
Article 2.38 of the Regulations of the Law on Copyright define what is meant by databases.
Article 129 of the Regulations recognizes the protection of databases provided that the selection or
arrangement of their subject matter constitutes personal creations.
Article 4 (ll)10 of Decision 351 – Common Provisions on Copyright and Neighbouring Rights
– includes databases among the subject matter of protection.  Article 2811 of the same Decision gives
databases protection provided that the selection or arrangement of their subject matter constitute
personal creations.
4. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
Pursuant to Article 9212 of the Law on Copyright, performers13 have the exclusive right to
authorize or prohibit the fixing, reproduction or communication to the public, by whatever means or
process, of their performances.
The term of protection of performers' rights is 60 years as of 1 January of the year following
the performance, in the case of live performances, or following publication where the performance is
recorded on a sound or audiovisual medium, in accordance with Article 9414 of the Law on Copyright.
Decision 351 – Common Provisions on Copyright and Neighbouring Rights – gives
performers similar rights pursuant to Articles 3415, 3516 and 3617 of the aforementioned Decision.
                                                     
8 Article 2 . – ( …) (3) Databases:  the compilation of works, facts or data in printed form, in computer
storage units or in any other form.
9 Article 12 . - Databases shall be protected insofar as the selection or arrangement of their contents
constitute an intellectual creation.  The protection granted shall not extend to compiled data or information, butit shall not affect any rights subsisting in the works or material constituting the said database.
10 Article 4 . - The protection granted by this Decision shall accrue to all literary, artistic and scientific
works that may be reproduced or disclosed by any known or future means, including the following in particular:
(…) (II) Anthologies or compilations of  assorted works and also databases, which, by the selection and
arrangement of their contents, constitute personal creations.
11 Article 28 . - Databases shall be protected insofar as the selection or arrangement of the contents
constitute an intellectual creation.  The protection granted shall not extend to compiled data or information, butit shall not affect any rights subsisting in the works or material constituting the said database.
12 Article 92 . - Performers or their successors in title shall have the exclusive right to authorize or
prohibit the fixing, reproduction or communication to th e public, by whatever means or process, of their
performances.  They may not however object to communication when it is effected on the basis of a recordingmade with their prior consent and published for commercial purposes.
13 Article 2 . – (…)  (2) Performer means the person who performs, sings, reads, recites, interprets or in
any way executes a work." (Regulations of the Law on Copyright and Decision 351 of the Commission of the
Cartagena Agreement).
14 Article 94 . - The term of protection granted to performers shall be 60 years, counted from January 1
of the year following the performance in the case of live performances, or following publication where theperformance is recorded on a sound or audiovisual medium.
15 Article 34 . - Performers shall have the right to authorize or prohibit the communication to the public
of their live performances in any form and the fixing and reproduction of their performances.
Nevertheless, performers may not object to the communication to the public of their performances
where they in themselves are broadcast performances or are made from a previously authorized fixation.
16 Article 35 . - In addition to the rights recognized in the foregoing Article, performers shall have the
right to:
(a) demand that their names be mentioned at or associated with every performance that takes place;
(b) object to any distortion or mutilation of their performances or other act prejudicial thereto that
might adversely affect their prestige or reputation.
17 Article 36 . - The term of protection of the economic rights of performers may not be less than 50
years counted from January 1 of the year following that in which the performance took place or in which thefixation, if any, was made.IP/C/W/252
Page 23
As regards phonogram producers, Article 95 of the Law on Copyright gives them the
exclusive right to authorize or prohibit the reproduction of their phonograms, and also the
importation, distribution to the public, rental or other use, in whatever form and by whatever means,
of copies of their phonograms.
According to Article 96 of the Law on Copyright, phonogram producers have the right to
receive remuneration for communication of the phonograms to the public.
Decision 351 of the Cartagena Agreement also gives producers of phonograms the right to
remuneration for public communication of their phonograms pursuant to Article 37(d).18
Concerning broadcasting organizations, Articl e 101 of the Law on Copyright gives them the
exclusive right to authorize or prohibit the fixing, reproduction or retransmission of their broadcasts.
The aforementioned rights are provided for broadcasting organizations pursuant to Article 39.
The limits and exceptions to the rights of performers, producers of phonograms and
broadcasting organizations are specified in the second paragraph of Article 3419 and Article 4220 of
Decision 351 of the Cartagena Agreement.  Article 42 of Decision 351 refers back to the Rome
Convention mentioned in the question.
5. Please state whether your legislation provides  for any limitation or exception in relation
to each of the rights described above in acco rdance with the relevant provisions of the Berne
and Rome Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Article 43 of the Law on Copyright determines the communication that is lawful or permitted
without the owner's consent:  (1) those occurring in  a domestic environment;  (2) those made in the
general interest in the course of official events and religious ceremonies;  and (3) those made for
strictly scientific and teaching purposes.
Article 44 of the Law on Copyright defines lawf ul reproductions:  (1) the reproduction of a
single copy made by the user with his own facilities;  (2) photomechanical reproduction for exclusive
personal use provided that it is confined to small parts of a protected work or works that are out ofprint;  (3) reproduction by reprographic means for the purpose of teaching or the holding of
examinations in educational institutions;  (4) the making of single copies of works by libraries or
archives for the purpose of preserving or replacing them;  (5) the reproduction of a single copy of a
computer program for back-up or security purposes;  (6) the storage of a computer program in the
internal memory of the equipment for the sole purpos e of use by the lawful user;  (7) the reproduction
of a work for judicial or administrative proceedings;  (8) the copying of works of art for the purposes
of study;  and (9) the reproduction of a work of art permanently displayed in a public site by means of
a technique other than that used for making the original.
Article 22 of Decision 351 of the Cartagena Agreement provides similar limitations.
                                                     
18 Article 37 . - The producers of phonograms shall have the right to:  (…) (d) Charge remuneration for
every use of the phonogram or copies thereof for commercial purposes, which remuneration may be sharedamong the performers on conditions laid down by the domestic legislation of the Member Countries.
19 Article 34 , second paragraph:  (…) Nevertheless, performers may not object to the communication
to the public of their performances where they in themselves are broadcast performances or are made from a
previously authorized fixation.
20 Article 42 . - In the cases allowed by the Rome Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organizations, the domestic legislation of the Member Countriesmay set limits on the rights recognized in this Chapter.IP/C/W/252
Page 24
6. Please state the terms of protection of each right described above and the work or
subject matter to which it applies.
 Article 2521 of the Law on Copyright states that copyright shall last for the author's lifetime
and shall expire after 60 years as of 1 January of the year following his death, including copyright in
works not disclosed in his lifetime.
With respect to photographs, Article 38 of the Law on Copyright provides the following:"(…) The rights of the photographer and his successors in title shall expire after 60 years
following the disclosure of the work.  Nevertheless, they shall expire 60 years after havingbeen made if they have not been disclosed during that period.  Such periods shall be counted
from January 1 of the year following that of disclosure or making, as the case may be."
The term of protection for works of applied art would be governed by the general rule laid
down in Article 25 of the Law on Copyright.
The term of protection for performers' rights is 60 years as of 1 January of the year following
the performance, in the case of live performances, or following publication where the performance is
recorded on a sound or audiovisual medium, according to the terms of Article 94
22 of the Law on
Copyright.
With regard to producers of phonograms, the term of protection indicated in Article 10023 of
the Law on Copyright is 60 years as of 1 January of the year following the first publication of the
phonogram.
Article 10224 of the Law on Copyright provides that the term of protection granted to
broadcasting organizations shall be 60 years as of 1 January of the year following the broadcast.
Decision 351 of the Cartagena Agreement also determines the terms of protection for works
in Article 1825, performers in Article 3626, producers of phonograms in Article 3827, and broadcasting
organizations in Article 4128.
                                                     
21 Article 25 . – Copyright shall subsist for the lifetime of the author and shall expire after 60 years
counted from January 1 of the year following his death, including the copyright in works not disclosed in hislifetime.
22  Article 94 . - The term of protection granted to performers shall be 60 years, counted from January
1 of the year following the performance in the case of live performances, or following publication where the
performance is recorded on a sound or audiovisual medium.
23 Article 100 . – The protection granted to the producer of phonograms shall be for 60 years counted
from January 1 of the year following the first publication of the phonogram.
24 Article 102 . – The protection granted to broadcasting organizations shall be for 60 years counted
from January 1 of the year following the broadcast.
25 Article 18 . – Without prejudice to the provisions of Article 59, the term of protection of the rights
provided for in this Decision shall be not less than the life of the author and 50 years after his death.
Where the ownership of the rights accrues to a legal entity, the term of protection shall not be less than
50 years counted from the making, disclosure or publication of the work, as the case may be.
26 Article 36 . - The term of protection of the economic rights of performers may not be less than
50 years counted from January 1 of the year following that in which the performance took place or in which thefixation, if any, was made.
27 Article 38 . – The term of protection of the rights of producers of phonograms may not be less than
50 years, counted from January 1 of the year following that in which the fixation occurred.
28 Article 41 . – The term of protection of the rights of broadcasting organizations may not be less than
50 years, counted from January 1 of the year following that in which the broadcast occurred.IP/C/W/252
Page 25
7. Please describe how and under what provisio ns Venezuela's legislation provides for a
rental right according to Articles 11 and 14.4 of the TRIPS Agreement and, if so, the categories
of right holders and the works to which it applies.
The Law on Copyright gives the author the righ t to authorize or prohibit the communication
to the public of the original or copies of the work, irrespective of its nature, by means of sale or any
other form of transfer of property, rental, or any other form of use, against payment.  The right of
distribution is covered by Article 4129 of the Law on Copyright.
Article 13(c)30 of Decision 351 – Common Provisions on Copyright and Neighbouring
Rights – grants the author the right of distribution of his work, which also includes the right toauthorize or prohibit inter alia  leasing or rental of the work.
By establishing the right of distribution to the public without any limitations on its scope,
Venezuela's legislation is consistent with the Agreement and in fact provides more comprehensive
protection.
8. Please describe how and under what provision Venezuelan legislation grants the
retroactive protection provided pursuant to Ar ticle 18 of the Berne Convention and Article 14.6
of the TRIPS Agreement.
The Bolivarian Republic of Venezuela has signed the Berne Convention,  therefore, the
principles enshrined in Article 18
31 of the Convention have force of law in Venezuela, in conformity
with Articles 14232, and 14333 of the Law on Copyright.
                                                     
29 Article 41 . – (…) The right of reproduction shall also cover distribution, which consists in the
making available to the public of the original or copies of the work by means of sale or other transfer of
ownership, rental or other form of use for a consideration.
30 Article 13 . – The author, or his successors in title where applicable, shall have the exclusive right to
carry out, authorize, or prohibit:  (…) (c)  The distribution of copies of the work to the public by means of sale,lending or hiring.
31 Article 18 . -
(1) This Convention shall apply to all works which, at the moment of its coming into force, have not
yet fallen into the public domain in the country of origin through the expiry of the term of protection.
(2) If, however, through the expiry of the term of protection which was previously granted, a work has
fallen into the public domain of the country where protection is claimed, that work shall not be protected anew.
(3) The application of this principle shall be subject  to any provisions contained in special conventions
to that effect existing or to be concluded between countries of the Union.  In the absence of such provisions, the
respective countries shall determine, each in so far as it is concerned, the conditions of application of this
principle.
(4) The preceding provisions shall also apply in the case of new accessions to the Union and to cases in
which protection is extended by the application of Article 7 or by the abandonment of reservations.
32 Article 142 . – The rights in the works protected under the provisions of the previous Law shall enjoy
the longest terms of protection laid down under this Law.
33 Article 143 . – The rights in works that did not benefit from protection under the Intellectual Property
Law of July 13, 1928, for want of registration and passed into the private domain under Article 113 of the LawRelating to Copyright of November 29, 1962, shall likewise automatically enjoy the protection granted by thisLaw, without prejudice to rights acquired by third parties prior to the entry into force thereof.IP/C/W/252
Page 26
C. TRADEMARKS
9. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable.
Article 13434 of Decision 486 – Common Industrial Property Regime – lays down the criteria
for signs for the purpose of their registration as a trademark and provides an indicative list which
gives examples of several signs that may be registered.
According to Article 134 of Decision 486 of the Commission of the Andean Community
"(…) any sign that is capable of distinguishing goods or services on the market shall constitute a
trademark (…)".  In accordance with this Article "(…) Signs that are capable of graphic representation
(…)" may be registered as trademarks.
10. Please confirm whether or not services are a protectable subject matter in your
trademark law.  Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
As can be seen from Article 134 of Decision 486 of the Commission of the Andean
Community, a trademark can distinguish not only products but also services.
Likewise, according to the provisions in Title X of Decision 486, trade names are protected
under Article 19135.
As to whether elements such as sound, perfumes and containers are protectable, the reply is
yes.  In addition to the definition of trademarks in Article 134, mentioned above, there is an indicative
list of signs that may be registered to complement  the trademark concept;  these include signs, smells
and packaging of products.36
                                                     
34 Article 134 . -  For purposes of this system, any sign that is capable of distinguishing goods and
services on the market shall constitute a trademark.  Signs that are capable of graphic representation shall be
eligible for registration as trademarks.  The nature of the goods or services to which a trademark is to be appliedshall in no case form an obstacle to the registration of the trademark.
The following signs, among others, shall be capable of constituting a trademark:(a) Words or a combination of words;
(b) pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels, and emblems;
(c) sounds and smells;(d) letters and numbers;(e) a colour demarcated to give it a speci fic shape, or a combination of colours;
(f) the shape of a product, its packaging or wrapping;
(g) any combination of the signs or means indicated in the items above.
35 Article 191 . – Exclusive right to a trade name is acquired through use by a legal person for the first
time in commercial activities and ends when the use of the name or activities of the business or establishmentusing that trade name cease to exist.
36 Article 134 . - For purposes of this system, any sign that is capable of distinguishing goods and
services on the market shall constitute a trademark.  Signs that are capable of graphic representation shall be
eligible for registration as trademarks.  The nature of the goods or services to which a trademark is to be applied
shall in no case form an obstacle to the registration of the trademark.
The following signs, among others, shall be capable of constituting a trademark:(a) Words or a combination of words;(b) pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels, and emblems;(c) sounds and smells;
(d) letters and numbers;
(e) a colour demarcated to give it a speci fic shape, or a combination of colours;
(f) the shape of a product, its packaging or wrapping;(g) any combination of the signs or means indicated in the items above.IP/C/W/252
Page 27
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
According to the provisions in Decision 48 6 of the Commission of the Andean Community,
prior use is not a requirement for the registration of a trademark.  Nevertheless, once a trademark has
been registered, the provisions in Article 166 must be taken into account: "A trademark shall be
considered in use where the goods or services distinguished by it have been placed in circulation or
are available on the market under that trademark, in the form and amounts that are normal, due
account being taken of the nature of the goods or services and the methods used for their marketing."
The conditions for maintaining a trademark registration in respect of its use are contained inChapter V of Decision 486 on the Cancellation of Registration.
It should be noted that proof of use is not required for renewal of a trademark registration,
which is automatic at the expiry of ten (10) years as of the date of its registration or within six
(6) months prior to expiry of this period or six (6) months subsequent to expiry allowed as a graceperiod.
12. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Article 152
37 of Decision 486 – Common Industrial Property Regime – establishes an initial
period of protection of ten (10) years for trademarks, calculated from the date of their grant.
Nevertheless, their term may be indefinite because they can be renewed indefinitely for
further periods of ten (10) years provided that the requirements on time-limits and payment of feeslaid down in Article 153 are met, so no proof of use is required for renewal of the right
38.
13. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
See the reply to question 11 regarding the definition of use and the criteria governing use of a
trademark.  In addition, the last paragraph of Article 166 of Decision 486 states that use of a
trademark in a form different from that in which it was registered only with respect to details or
features that do not alter its distinctive character shall not constitute grounds for cancellation of
registration for non-use or lessen the protection afforded to the trademark.
                                                     
37 Article 152 . - Registration of a trademark shall be for a term of ten years counted from the grant date
and may be renewed for successive ten-year periods.
38 Article 153 . - The owner of a registered trademark or any party with a legitimate interest shall apply
to the competent national office for its renewal within six months before expiry of its registration.Notwithstanding the foregoing stipulation, both the owner of the registered trademark and any party having alegitimate interest shall be given a grace period of six months following the date of expiration of the registrationin which to apply for renewal.  Such persons shall accord ingly attach receipts for payment of the prescribed fees
and shall, at the same time, pay any such surcharge as the domestic legislation of the Member Countries may
prescribe.  The registered trademark sha ll retain its full validity over that period.
Renewal shall not require proof of trademark use and shall be granted automatically on the same terms
as the original registration.  The owner of the registered trademark may, however, reduce or limit the goods orservices listed in the original registration.IP/C/W/252
Page 28
D. GEOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
Decision 486 only includes among its prohibiti ons relating to trademarks the absolute grounds
set out in Article 13539, in which subparagraphs (j), (k) and (l) refer specifically to geographical
indications.
Pursuant to these prohibitions, the competent national authority has the legal power to reject
any application for registration of a trademark containing a geographical indication that falls within
the terms of the aforementioned subparagraphs, which all relate to the existence of a risk of confusion.
This leads to the conclusion that a geographical name may give rise to trademark rights provided thatit does not lead to confusion.
15. Please give the definition of a geographical indication in your legislation.
In the Common Industrial Property Regime – Decision 486 – a geographical indication is
understood to mean a generic term used in the broad sense to cover both appellations of origin and
indications of origin.  In this respect, Venezuelan legislation defines and distinguishes geographical
indications as follows:
Title XII of the Decision concerns geographical indications and recognizes two categories:
appellations of origin and indications of origin.
Appellations of origin:
"Article 201. - An appellation of origin shall be understood to be a geographical indication
consisting of the name of a particular country, region, or locality, or of a name which, without
being that of a particular country, region, or locality, refers to a specific geographical area,
which name is used to identify a product originating therein, the qualities, reputation, or
characteristics of which are exclusively or essentially attributable to the geographical
environment in which it is produced, including both natural and human factors."
Indications of origin:
"Article 221. - An indication of origin shall be understood to be a name, expression, image, or
sign that indicates or evokes a particular country, region, locality, or place."
16. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
There is no provision in Decision 486 of the Commission of the Andean Community that
establishes a link between the characteristics of an indication and its geographical origin because the
term "geographical indication" covers both indicati ons of origin and appellations of origin.  Under
                                                     
39 Article 135 . - Signs may not be registered as trademarks when they:
(…)(j) reproduce, imitate, or contain a protected appellation of origin for the same goods or for different
goods if its use is liable to create confusion or a mistaken association with the appellation or involves taking
unfair advantage of the well-known character of that appellation among the public;
(k) contain a protected appellation of origin for wines and spirits;(l) consist of a national or foreign geographical indi cation that is liable to cr eate confusion in respect of
its application to products or services.IP/C/W/252
Page 29
appellations of origin, Decision 486 clearly establishes the link between the qualities and
characteristics of a product and its geographical origin or the geographical zone used in its
appellation.  In this respect, Article 201 states the following:
"Article 201. - An appellation of origin shall be understood to be a geographical indication
consisting of the name of a particular country, region, or locality, or of a name which, without
being that of a particular country, region, or locality, refers to a specific geographical area,
which name is used to identify a product originating therein, the qualities, reputation, or
characteristics of which are exclusively or essentially attributable to the geographical
environment in which it is produced, including both natural and human factors."
17. Please describe how additional protection is granted by your legislation to wines and
spirits.  Please mention other types of products, if any, covered by this additional protection.
Article 21540 of Decision 486 of the Commission of the Andean Community provides for a
higher level of protection or an additional system of  protection for appellations of origin for wines and
spirits following harmonization of these rules with the TRIPS Agreement, more specificallyArticle 23.
This preferential protection can also be seen in the trademark regime inasmuch as one of the
absolute prohibitions on trademark registration (subparagraph (k)
41 of Article 135 of Decision 486)
specifically establishes that this type of sign cannot be registered as a trademark.
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
Decision 486 includes the following exceptions allowed under Article 24 of the TRIPS
Agreement:  the second paragraph of Article 215 of Decision 486 incorporates the exception allowed
by Article 24.4 of the TRIPS Agreement;  subparagraph (b) of Article 202 of Decision 486
incorporates the exception allowed by the first sentence of Article 24.6 of the TRIPS Agreement;
Article 223 of Decision 486 incorporates the exception allowed by Article 24.8 of the TRIPS
Agreement;  and Article 219 of Decision 486 incorporates the exception allowed by Article 24.9 of
the TRIPS Agreement.
E. INDUSTRIAL DESIGNS
19. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
No, the protection granted by the legal concept of industrial designs concerns the particular
appearance that results from any arrangement of lines or combination of colours or two-dimensional
                                                     
40 Article 215 . - Member Countries shall prevent use of an appellation of origin identifying wines or
spirits for goods of this kind not originating in the pl ace indicated by the appellation of origin in question, even
where the true origin of the goods is indicated or the geographical indication is used in translation oraccompanied by expressions such as "kind", "type", "style", "imitation", or the like.
41 (k) contain a protected appellation of origin for wines and spirits.IP/C/W/252
Page 30
or three-dimensional shape, line, outline, form, texture or material, without the intended use or
purpose of the said product being thereby changed (Article 11342 of Decision 486).
Industrial designs whose appearance is solely dictated by technical considerations or a
technical function and which do not incorporate any arbitrary contribution by the designer shall not beeligible for registration as industrial designs.
Textile designs receive the same protection as that given to any product that meets the
definition of industrial design in Article 113 of Decision 486.
According to Article 130 of Decision 486, the protection accorded to an industrial design does
not apply to elements or characteristics of the design dictated essentially by technical or functionalconsiderations and which do not incorporate any arbitrary contribution by the designer.  The
protection does not apply to the exact reproduction of such elements or characteristics as may be
needed to allow the product incorporating the design to be mechanically assembled or joined to
another product of which it is a part.  This restriction does not apply where the design assumes a
particular form to allow for the assembly or multiple connections of the products or the connection ofthose products within a modular system.
20. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied designs.
In accordance with Article 129
43 of Decision 486, the registration of an industrial design
confers on the owner of the right the exclusive right to prohibit third parties from making use of the
design registered.  Consequently, the owner of th e registration shall have the right to take action
against any third party who, without his consent, ma nufactures, imports, offers for sale, markets, or
makes commercial use of products which incorporate or reproduce the industrial design.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
Decision 486 does not contain any compulsory licensing regime for the legal concept of
industrial designs.
22. Please indicate for what period of time your legislation grants protection for industrial
designs.
Article 12844 of Decision 486 provides a term of protection of ten years for industrial designs
as of the date of filing the application in Venezuela.
                                                     
42 Article 113 . - The particular appearance of a product that results from any arrangement of lines or
combination of colours, or any two-dimensional or three-dimensional outward shape, line, outline, form, texture,or material, without the intended use or purpose of the said product being thereby changed, shall be considered
an industrial design.
43 Article 129 . - Registration of an industrial design shall confer on the owner thereof the right to
prevent third parties from making use of the design concerned.  By virtue of that prohibition, the owner of theregistration shall be entitled to proceed against any third party who, without the consent of the right holder,manufactures, imports, offers for sale, markets, or ma kes commercial use of pr oducts that incorporate or
reproduce the industrial design.
Registration shall likewise confer the right to pro ceed against any person who produces or markets an
article whose design only presents minor differences with respect to the protected design or whose appearance is
the same as the latter protected design.
44 Article 128 . - Registration of an industrial design shall be for a term of ten years, counted from the
filing of the application in the Member Country.IP/C/W/252
Page 31
F. PATENTS
23. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
Pursuant to Article 1645 of Decision 486, an invention shall be considered new when it is not
included in the state of the art.
According to Article 1846 of Decision 486, an invention shall be considered as involving an
inventive step if, for a person in the trade with av erage skills in the corresponding technical field, the
invention is not obvious nor obviously derived from the state of the art.
An invention shall be considered as industrially applicable if the subject-matter can be
produced or used in any type of industry, meaning any type of productive activity, including services,
in accordance with Article 1947 of Decision 486.
24. Please explain whether or not in your legislat ion, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions ar e provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Exclusions from patentability are covered by Articles 1548 and 2049 of Decision 486 of the
Andean Community of Nations.
                                                     
45 Article 16 . - An invention shall be deemed new when it is not included in the state of the art.
The state of the art comprises everything that has been made available to the public by written or oral
description, use, marketing, or any other means prior to the filing date of the patent application or, whereappropriate, of the priority claimed.
Solely for the purpose of determining novelty, the contents of a patent application pending before the
competent national office and having a filing date or priority application date earlier than the date of the patent
or patent priority application under examination shall likewise be considered part of the state of the art, provided
that the said contents are included in the earlier app lication when published or that the period stipulated in
Article 40 has concluded.
46 Article 18 . - An invention shall be regarded as involving an inventive step if, for a person in the
trade with average skills in the technical field concerned, the said invention is neither obvious nor obviouslyderived from the state of the art.
47 Article 19 . - An invention shall be regarded as industrially applicable when its subject-matter may be
produced or used in any type of industry;  industry being understood as that involving any productive activity,including services.
48 Article 15 . - The following shall not be considered inventions:
(a) Discoveries, scientific theories, and mathematical methods;
(b) any living thing, either complete or partial, as found in nature, natural biological processes, and
biological material, as existing in nature, or able to be separated, including the genome or germ plasm of anyliving thing;
(c) literary and artistic works or any other aesthetic creation protected by copyright;(d) plans, rules, and methods for the pursuit of intellectual activities, playing of games, or economic
and business activities;
(e) computer programs and software, as such;  and,
(f) methods for presenting information.
49 Article 20 . - The following shall not be patentable:
(a) Inventions, the prevention of whose commercial exploitation within the territory of the respective
Member Country is necessary to protect public order or morality, provided that such exclusion is not merelybecause the exploitation is prohibited or regulat ed by a legal or administrative provision;
(b) inventions, the prevention of whose commercial exploitation within the respective Member Country
is necessary to protect human or animal life or hea lth or to avoid serious prejudice to plant life and the
environment, provided that such exclusion is not merely because the exploitation is prohibited or regulated by a
legal or administrative provision;IP/C/W/252
Page 32
25. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on ordre public  or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Article 20(a) of Decision 486 excludes from patentability inventions whose commercial
exploitation in Venezuela must be prevented in order to protect public order or morality.
26. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Article 20(d) of Decision 486 excludes from patentability inventions that concern therapeutic
or surgical methods for the treatment of humans or animals, as well as diagnostic methods applicable
to humans or animals.
27. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Essentially biological processes for the production of plants and animals, and plants and
animals, are excluded from patentability in accordance with Article 20(c) of Decision 486.  Pursuantto Article 15(b) of Decision 486, natural biological processes are not considered inventions, as
allowed by Article 27.3 of the TRIPS Agreement.
28. Please describe how and under what provisions micro-organisms, non-essentially
biological processes and plant varieties are protected  in your legislation.  Please explain, in this
respect, the relevant sections of your legislation.
According to Decision 486, the transitional provision states that micro-organisms shall be
patentable (provided that they are not material existing in nature – Article 15(b)).  The protection of
plant varieties is covered by Decision 345 of the Andean Community.
Non-biological and microbiological processes are eligible for patents (provided that they are
not natural biological processes – Article 15( b)) pursuant to Article 14 of Decision 486.
29. Please explain how your legislation protects  patent right holders against the importing
and against the offering for sale of a protected invention.
Subparagraph (a)(ii) of Article 52
50 of Decision 486 gives a patent owner the right to prevent
third parties from offering for sale, selling or using the product, or importing it for any of these
purposes without his authorization.
                                                                                                                                                                    
(c) plants, animals, and essentially biological processes for the production of plants or animals other
than non-biological or microbiological processes;
(d) diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.
Article 21 . - Products or processes already patented and included in the state of the art within the
meaning of Article 16 of this Decision may not be the subject of new patents on the sole ground of having beenput to a use different from that originally contemplated by the initial patent.
50 Article 52 . - A patent shall confer on its owner the right to prevent third parties not having the
owner's consent from:
(a) Where the subject-matter of a patent is a product:
(i) making the product;(ii) offering for sale, selling, or using the product; or importing it for these purposes;  and
(b) where the subject-matter of a patent is a process:IP/C/W/252
Page 33
30. Please state if your legislation provides for patent product protection of pharmaceutical
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference.
Article 1451 of Decision 486 allows the granting of patents for all inventions, whether
processes or products.  This naturally includes agricultural and pharmaceutical products, provided that
they are new, involve an inventive step and are industrially applicable.
31. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
Yes, pursuant to Article 14 of Decision 486, which provides that:
"Article 14.- The Member Countries shall grant patents for inventions, whether goods or
processes, in all areas of technology, provided that they are new, involve an inventive step,
and are industrially applicable."
32. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prior informed consent to its use).  If such
additional conditions exist, please point out the relevant legislation and describe the additional
conditions in detail.
Pursuant to the National Constitution of the Bolivarian Republic of Venezuela (Articles 124 and
127), Article 26(h) and (i) of Decision 486 impose on Member Countries of the Andean Community of
Nations the obligation to ensure that the protection granted to industrial property safeguards and respects
the biological and genetic resource s of indigenous, Afro-American or local communities, as well as their
traditional knowledge.
Article 26(h) states that, where applicable, a copy of the contract for access must be submitted if
the products or processes for which a patent applica tion is being filed have been obtained or developed
from genetic resources or by-products originating in one of the Member Countries.
Article 26(i) provides that, where applicable, a copy of the document certifying the licence or
authorization to use the traditional knowledge of indigenous, Afro-American or local communities in the
Member Countries must be submitted if the product s or processes whose protection is being requested
have been obtained or developed on the basis of knowledge originating in any one of the Member
Countries, pursuant to the provis ions of Decision 391, its amendments and regulations in effect.
The provisions in subparagraphs (h) and (i) of Article 26 of Decision 486 lay down the legal
requirements for granting a patent.  Like other requ irements for the granting of a patent, these are not
dealt with in the TRIPS Agreement and are left up to the domestic legislation of the Members of the
WTO.
                                                                                                                                                                    
(i) using the process;
(ii) carrying out any of the acts that are specifi ed under paragraph (a) above with respect to a
product obtained directly by that process.
51 Article 14 . - The Member Countries shall grant patents for inventions, whether goods or processes,
in all areas of technology, provided that they are new, involve an inventive step, and are industrially applicable.IP/C/W/252
Page 34
33. Please explain whether or not your legislatio n provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.
Yes, the compulsory licensing regime is covered by Articles 61 to 69 of Decision 486, which
read as follows:
Article 61 . - At the expiry of a period of three years following a patent grant or of four years
following the application for a patent, whichever is  longer, the competent national office may grant a
compulsory licence mainly for the industrial manufacture of the product covered by the patent, or for
full use of the patented process, at the request of any interested party, but only if, at the time of the
request, the patent had not been exploited in the manner specified in Articles 59 and 60, in the
Member Country in which the licence is sought, or if the exploitation of the invention had beensuspended for more than one year.
Compulsory licences shall not be granted if patent owners are able to give valid reasons for
their failure to act, which may be reasons of force majeure or an act of God, in accordance with the
domestic provisions in effect in each Member Country.
A compulsory licence shall be granted only if, prior to applying for it, the proposed user has
made efforts to obtain a contractual licence from the patent holder on reasonable commercial terms
and conditions and that such efforts were not successful within a reasonable period of time.
Article 62 . - Decisions to grant a compulsory licence, as stipulated in the previous Article, shall be
taken after the patent owners have been notified to  present their arguments as they see fit within the
following sixty days.
The competent national office shall specify the scope or coverage of the licence, and in
particular shall specify the period for which it is granted, the subject matter of the licence, the amount
of the remuneration, and the conditions for the payment thereof. The remuneration shall be set at an
adequate level in accordance with the individual circumstances of each case and, in particular, the
economic value of the authorization.
Opposition to a compulsory licence shall not prevent its exploitation or have any effect on any
periods that may be running. The filing of an objection shall not prevent the patent owner, in themeantime, from collecting the remuneration specifie d by the competent national office on the part
unaffected by the objection.
Article 63 . - At the request of the owner of the patent or the licensee, the conditions governing the
compulsory licence may be changed by the competent national office where new circumstances so
dictate and, in particular, when the patent holder grants another licence on terms that are more
favourable than the existing ones.
Article 64 . - The licensee shall exploit the licensed inve ntion within a period of two years following
the date the licence was granted, unless that licensee is able to give valid reasons for inaction
consisting of force majeure or an act of God.  Othe rwise, at the patent owner's request, the competent
national office shall revoke the compulsory licence.
Article 65 . - Following the declaration by a Member Country of the existence of public interest, an
emergency, or national security considerations, and only for so long as those considerations exist, the
patent may be subject to compulsory licensing at an y time.  In that case, the competent national office
shall grant the licences that are applied for.  The owner of the patent so licensed shall be notified as
soon as is reasonably possible.IP/C/W/252
Page 35
The competent national office shall specify the scope or extent of the compulsory licence and,
in particular, the term for which it is granted, the subject-matter of the licence, and the amount of
remuneration and the conditions for its payment.
The grant of a compulsory licence for reasons of public interest shall not reduce the right of
the patent owner to continue exploiting it.
Article 66 . - The competent national office may, either ex officio or at the request of a party, and after
having obtained the consent of the national antitrust authority, grant compulsory licences where
practices are noted that are detrimental to the exercise of free competition, especially where they
constitute an abuse by the patent owner of a dominant position in the market.
The need to correct anti-competitive practices shall be taken into account in determining the
amount of remuneration to be paid in such cases.
The competent national office shall refuse termination of a compulsory licence if and when
the conditions which led to the granting of the licence are likely to recur.
Article 67 . - The competent national office shall grant a licence, upon request by the owner of a
patent whose exploitation necessarily requires the use of another patent, and that right holder has been
unable to secure a contractual licence to the other patent on reasonable commercial terms.  That
licence shall, without prejudice to the provisions of  Article 68, be subject to the following 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 owner of the first patent shall be entitled to a cross-licence on reasonable terms to
use the invention claimed in the second patent; and,
(c) the licence authorized in respect of the first patent shall be non-assignable except with
the assignment of the second patent.
Article 68 . - In addition to the conditions provided for in the preceding Articles, compulsory licences
shall be subject to the following:
(a) They shall be non-exclusive and may not be sublicensed;
(b) they shall be non-assignable, except with the part of the business or goodwill which
permits their  industrial use. This shall be evidenced in writing and registered with thecompetent national office. Otherwise, those assignments or transfers shall not be
legally binding;
(c) they shall be liable, subject to adequate protection of the legitimate interests of the
persons so authorized, to be terminated if and when the circumstances which led tothem cease to exist and are unlikely to recur;
(d) their scope and duration shall be limited to the purposes for which they were
authorized;
(e) in the case of patents protecting semi-conductor technology, a compulsory licence
shall be authorized only for public non-commercial use or to remedy a practiceIP/C/W/252
Page 36
declared by the competent national authority to be anti-competitive in accordance
with Articles 65 and 66;
(f) they provide for payment of adequate remuneration according to the circumstances of
each case, taking into account the economic value of the licence, without prejudice tothe stipulations of Article 66; and,
(g) they shall be used predominantly for the supply of the domestic market.
Article 69 . - Compulsory licences that fail to comply with the provisions of this Chapter shall be
devoid of any legal effect whatsoever.
34. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ t holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time.  In
this context, how do you define "reasonable period of time"?  Please also explain how your
legislation ensures that the use of a compulsory  licence shall be author ized predominantly for
the supply to the domestic market of the Member authorizing such use.
At present, there is no definition of the term "reasonable period of time", because in
Venezuela only one compulsory licence has been requested and it was then abandoned.
35. Please state if your legislation grants addi tional protection for innovations after the
20 years of patent protection has lapsed.
Decision 486 does not allow an additional period of protection beyond the 20 years laid down
in Article 50.
36. Please explain how your legislation provides for the enhanced protection of patents or
patent applications pending on 1 January 1995.
Decision 486 does not provide for any additional protection.
37. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Decision 486 provides for the reversal of the burden of proof for process patents in
Article 240.52
                                                     
52 Article 240 . - In cases where infringement of a patent for a process for obtaining a product is
claimed, defendants shall be liable to prove a difference between the process they have used to obtain theproduct and the process protected by the patent whose infringement is claimed.  For this purpose, any identicalproduct when produced without the consent of the patent owner shall, in the absence of proof to the contrary, bedeemed to have been obtained by the patented process:
(a) If the product obtained by the patented process is new;  or
(b) if there is a substantial likelihood that the identical product was made by the process and the owner
of the patent has been unable through reasonable efforts to determine the process actually used.
In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting their
business secrets shall be taken into account.IP/C/W/252
Page 37
38. Please explain the consequences for the patent applicant if he does not submit the
information requested under Article 29.1 of the TRIPS Agreement.
Among the essential requirements allowing a patent application to be considered and given a
filing date is the "description" that must be submitted pursuant to Article 33 of Decision 486 of theAndean Community:
"Article 33. - The date of its receipt by the competent national office shall be considered the
application filing date, providing that the application contained the following elements:
(a) A statement that the applicant is applying for a patent;(b) data identifying the applicant or person filing the application or that enable the
competent national office to communicate with that person;
(c) a description of the invention;(d) the drawings, if pertinent;  and(e) the proof of payment of the prescribed fees.Failure to comply with any of the requirements specified in this Article shall cause the
competent national office to reject the application for processing and no filing date shall beassigned to it."
If the description is submitted, the competent national office shall carry out an examination of
its form within the follow ing thirty (30) days and, if some elements are missing, it shall request the
applicant to complete the requirements.  If the applicant fails to do so, the application shall beconsidered abandoned and shall lose its order of priority.  If this is the case, the competent national
office shall ensure that the information in the ap plication remains confidential, in accordance with
Articles 38 and 39 of Decision 486 of the Andean Community.
In the course of processing the application, the competent national office may request
clarification regarding the description submitted and the applicant shall respond, on penalty of
rejection of the patent application, as set out in Article 45 of Decision 486 of the Andean Community.
39. Please explain whether or not in your legisl ation patents or otherwise patent rights are
enjoyed without any exclusions or exceptions.   If exclusions or exceptions (other than
compulsory licences) are provided for, please desc ribe in detail how these exclusions are applied
in legal as well as practical terms.  If affirmative, please make a reference to relevant legislation.
According to Articles 53 and 54 of Decision 486 of the Andean Community, in addition to the
limitations imposed under the compulsory licensing re gime (Articles 61 to 69 of the Decision), the
right conferred by a patent does not allow the ow ner to prevent third persons from marketing the
product in its broadest sense without his consent if the product has been introduced into the market forthe first time by the owner or to prevent them using a process that is the subject of a patent or the
product in private circles, for experimental purposes, or for teaching, scientific research or non-
commercial purposes.
"Article 53.- A patent owner may not exercise the right referred to in the previous Article
with respect to the following acts:
(a) acts carried out in a private circle and for non-commercial purposes;IP/C/W/252
Page 38
(b) acts carried out exclusively to experiment with the subject matter of the patented
invention;
(c) acts carried out exclusively for the purposes of teaching or scientific or academic
research;
(d) the acts referred to in Article 5 ter of the Paris Convention for the Protection of
Industrial Property;
(e) where the patent protects biological material that is capable of being reproduced,
using that material as a basis for obtaining a viable new biological material, exceptwhere the patented material must be used repeatedly to obtain the new material."
Article 54.- "A patent shall not confer on its owner the right to proceed against a third party
making commercial use of a product protected by a patent once that product has been
introduced into trade in any country by the ow ner or another person authorized by or with
economic ties to the right holder.
For the purposes of the preceding paragraph, two persons shall be considered to have
economic ties when one of the persons is able to exercise a decisive influence on the other,
either directly or indirectly, with respect to the exploitation of the patent or when a third partyis able to exert that influence over both persons.
Where the patent protects biological material that is capable of being reproduced, the patent
coverage shall not extend to the biological material that is obtained by means of the
reproduction, multiplication, or propagation of the material that was introduced into trade asdescribed in the first paragraph, provided that it was necessary to reproduce, multiply, or
propagate the material in order to fulfil the purposes for which it was introduced into trade
and that the material so obtained is not used for multiplication or propagation purposes."
G. 
LAY-OUT DESIGNS OF INTEGRATED CIRCUITS
41. Please describe how your legislation protects topographies.
Decision 486 of the Commission of the Andean  Community, following the guidelines laid
down in the TRIPS Agreement, incorporates lay-out de signs of integrated circuits as a special legal
concept and regulates them under Title IV in eight Chapters (Articles 86-11253) entitled:   Definitions;
                                                     
53 Chapter I
DefinitionsArticle 86 . - The following definitions shall apply for purposes of this Title:
(a) Integrated circuit: a product, in final or intermediate form, of which at least one element is an active
element and some or all of whose interconnections are an integral part of the body or surface of a piece of
material that is intended to be used electronically;
(b) lay-out design: the three-dimensional arrangement of the elements, regardless of form, of which at
least one is an active element, and their interconnectio n into an integrated circuit, as well as that three-
dimensional arrangement prepared for use in an integrated circuit to be manufactured.
Chapter II
On the Requirements for Protection of Lay-Out Designs of Integrated Circuits
Article 87 . - A lay-out design shall be protected if it is an original design.
A lay-out design shall be considered original when it is the result of its creator's intellectual efforts and
is not in common use in the integrated circuit industry.IP/C/W/252
Page 39
                                                                                                                                                                    
Where composed of two or more elements in common use in the integrated circuit industry, a lay-out
design shall be considered original only if the comb ination of those elements, as an assembly, meets this
requirement.
Chapter  III
On the Right Holders
Article 88 . - The right to register a lay-out design of an integrated circuit belongs to its designer.  That
right may be assigned or transferred by succession.
If two or more persons jointly prepare a lay-out design, those persons shall share the right to protect it.The right to protection of a lay-out design created und er a project or service contract entered into for
this purpose or within the framework of an employment relationship in which the designer has such function,shall belong to the person who commissioned the project or service, or the employer, unless otherwise stipulated
under a contract.
Chapter IV
On the Application for Registration
Article 89 . - The application to register a lay-out design of an integrated circuit shall be filed with the
competent national office and shall contain the following information:
(a) The petition;
(b) a copy or drawing of the lay-out design and, if commercially exploited, a sample of that integrated
circuit;
(c) if pertinent, a statement of the date of first commercial exploitation of the integrated circuit
anywhere in the world;
(d) if pertinent, the statement of the year the integrated circuit was created;
(e) a description of the electronic operation to be pe rformed by the integrated circuit incorporating the
lay-out design;
(f) copies of any applications for registration or other protection filed for or obtained abroad by the
applicants or their assignees, referring to all or part of the lay-out design for which a registration application is
being filed in the Member Country;
(g) such powers of attorney as may be needed;  and
(h) a proof of payment of the prescribed fee.
Article 90 . - The petition to register an application for a lay-out design of an integrated circuit shall be
on a form and shall include the following information:
(a) The request for the registration;(b) the name and address of the applicant;(c) the nationality or domicile of the applicant and, if the applicant is a legal person, the place of
incorporation;
(d) the name and domicile of the creator of the lay-out design, if a person other than the applicant;(e) the name and address of the applicant's legal representative, if pertinent;(f) the date, number, and office where any other application for registration or other protection was
filed or obtained abroad by the applicant or assignee in respect of all or part of the same lay-out design being
applied for in the Member Country, if pertinent;  and
(g) the signature of the applicant or the applicant's legal representative.Article 91 . - Where the lay-out design for which a registration application has been filed includes a
business secret, the applicant shall file, in addition to the graphic representation required, a representation of thelayout omitting, erasing, or distorting the parts containing that secret.  It is necessary for the remaining parts to
be sufficient to allow for identification of the lay-out design.
Article 92 . - The date of receipt of an application by the competent national office shall be considered
its filing date, provided that the application contained at least the following elements:
(a) An express or implicit statement that the application is being filed for the registration of a lay-out
design;
(b) data that shall permit identification of the applicant or person filing the application or enable the
competent national office to communicate with that person;
(c) a graphic representation of the lay-out design for which registration is being applied for; and
(d) the proof of payment of the prescribed fees.Failure to comply with any one of the requirements specified in this Article shall result in refusal by the
competent national office to process the application and no filing date shall be assigned to it.
Chapter V
On the Processing of the ApplicationIP/C/W/252
Page 40
                                                                                                                                                                    
Article 93 . - The competent national office shall examine whether the subject matter of the application
constitutes a lay-out design as defined in Article 86 and whether the application contains the informationrequested in Articles 89, 90, and 91.  The competent national office shall not examine the originality of the lay-out design ex officio, unless reasoned oppos ition to the applicatio n has been presented.
Should any omission or defect be noted, the applicant shall be notified so that he may make the
necessary correction within a period of three months, an d failure to do so shall be considered abandonment of
the application and it shall be placed in the archives ex officio.  If the applicant does not make the correction
within the allotted period, the competent national office shall make that warning effective through a reasoneddecision.
Article 94 . - Having examined the application, the competent national office shall order its
announcement through the publication in the official govern ment gazette of a notice to be paid by the interested
party.
The pertinent provisions in respect of applications for patents for inventions shall be applicable to the
publication of the notice.
Article 95 . - Any interested person may lodge a substantiated objection with the competent national
office, including information and documents that would be useful for ascertaining the eligibility for registration
of a lay-out design.
Pertinent provisions in respect of applications for invention patents shall be applicable to the
objections.
Article 96 . - If the stipulated requirements are fulfilled, the competent national office shall register the
layout design and issue a registration certificate containing the data included in the corresponding registry.
Chapter VI
On the Rights conferred by Registration
Article 97 . - If the lay-out design has been exploited commercially anywhere in the world, the
application for registration shall be filed with the co mpetent national office of the Member Country concerned
within a period of two years from the date of its first comm ercial exploitation.  If the application is filed after the
expiration of that period, the registration shall be denied.
A lay-out design not having been commercially exploited anywhere in the world may be registered
only if applied for to a competent national office of a Member Country no later than 15 years after the last day
of the year the layout was created. If the application is filed after that period has expired, its registration shall be
denied.
Article 98 . - Exclusive rights over a registered lay-out design shall have a term of ten years from the
earliest of the following dates:
(a) The last day of the year the lay-out design was first commercially exploited anywhere in the world;
or
(b) the filing date of an application for registration with the competent national office of the Member
Country concerned.
The term of protection of a registered lay-out design shall lapse in any case at the conclusion of a
period of 15 years counted from the last day of the year in which the lay-out design was created.
Article 99 . - The protection shall apply irrespective of whether the integrated circuit incorporating the
protected lay-out design has been incorporated into an article and irrespective of whether the lay-out designhas been incorporated into an integrated circuit.
Registration of a lay-out design of an integrated circuit confers on its holder the right to prevent third
persons from performing any of the following acts:
(a) Reproducing, through incorporation into an integrated circuit or in any other way, all or part of the
protected lay-out design that complies with the requirements for originality stipulated in Article 87;
(b) marketing, importing, offering for sale, selling, or otherwise distributing a protected lay-out design
or an integrated circuit in which a prot ected lay-out design is incorporated;  or
(c) marketing, importing, offering for sale, selling, or otherwise distributing an article incorporating
such a protected integrated circuit, only insofar as it continues to contain an unlawfully reproduced lay-out
design.
Protection conferred by registration shall cover only the lay-out design itself, and shall not extend to
any idea, process, system, technique, or data encoded or incorporated into the lay-out design .
Article 100 . - The right conferred by registration of the lay-out design only may be asserted against
acts having industrial or commercial purposes.  Registration shall not confer the right to prevent the followingacts:
(a) Acts carried out in a private circle and for non-commercial purposes;
(b) acts carried out exclusively for purposes of evaluation, analysis, or experimentation;IP/C/W/252
Page 41
                                                                                                                                                                    
(c) acts carried out exclusively for purposes of teaching or scientific or academic research;
(d) acts referred to in Article 5 ter of the Paris Convention for the Protection of Industrial Property.
Article 101 . - Registration of a lay-out design shall not give the holder the right to prevent third parties
from engaging in acts of commerce in respect of registered lay-out designs, integrated circuits in which aprotected lay-out design is incorporated , or articles containing those integrated circuits after the introduction of
the lay-out design into trade in any country by the right holder or by any other person with the consent of or
having economic ties to that right holder.
For the purposes of the preceding paragraph, two pe rsons shall be considered to have economic ties
when one of the persons is able to exercise a decisive in fluence over the other, either directly or indirectly, with
respect to exploitation of the lay-out design, or when a third party is able to exert that influence over bothpersons.
Article 102 . - The right holder of a registered lay-out design may not prevent a third party from
engaging in acts of industrial or commercial exploitation in  respect of a lay-out design created by another person
through the evaluation or analysis of the protected lay-out design, provided that the lay-out design therebycreated fulfils the requirements for originality stipulated in Article 87.  Nor may that right holder prevent thoseacts in respect of integrated circuits in which the lay- out designs so created are incorporated or of articles
incorporating those integrated circuits.
Article 103 . - The right holder of a registered lay-out design may not prevent a third party from
carrying out the acts cited in Article 99 with respect to another original lay-out design created independently by
a third party, even if identical.
Article 104 . - Performance of any of the acts referred to in Article 99 in respect of an integrated circuit
incorporating an unlawfully reproduced lay-out design or any article incorporating such an integrated circuit
shall not be considered an infringement of rights to a registered design, where the person performing or ordering
such acts did not know and had no reasonable ground to know, when acquiring the integrated circuit or articleincorporating such an integrated circuit, that it incor porated an unlawfully reproduced lay-out design.  After the
time that such person has received sufficient notice that the lay-out design was unlawfully reproduced, thatperson may perform any of the acts with respect to the stock on hand or ordered before such time, but shall beliable to pay the right holder a sum equivalent to a reas onable royalty such as would be payable under a freely
negotiated licence in respect of such a lay-out design.
Article 105 . - A lay-out design registration that has been granted or is being processed may be assigned
or transferred by succession.
Any assignment or transfer of a lay-out design registration shall be filed with the competent national
office.  Failure to register that assignment or transfer shall render it legally invalid in respect of third parties.
Assignments or transfers, in order to be registered, shall be in writing.
Any interested person may apply for registration of an assignment or transfer.
Chapter VII
On the Licensing System
Article 106 . - The right holder of a lay-out design that is registered or for which registration has been
filed may license one or more parties to exploit that lay-out design.
Any licence to use the lay-out design shall be regist ered with the competent national office.  Failure to
register the licence shall render it invalid with respect to third parties.
Licences, in order to be registered, shall be in writing.Any interested party may file for registration of a licence.The registered right holder shall inform the competent national office of any change in the name or
address of the registered lay-out design right holder during the term of the licensing contract.  Otherwise, any
notification that may be made on the basis of the data entered in the registry shall be considered valid.
Article 107 . - The competent national authority may, given a lack of exploitation or for reasons of
public interest, in particular a national emergency, or fo r public health or natural security considerations, or to
remedy an anti-competitive practice, and at the request of an interested party or of a competent authority, order
the following at any time:
(a) That lay-out designs that are registered or for which registration has been filed shall be used or
exploited industrially or commercially by a government institution or by one or more public or private legal
entities that have been expressly appointed to do so;  or
(b) that the said lay-out design shall be subject to the granting of one or more compulsory licences, in
which case the competent authority may grant such a licen ce to any person who applies for it, subject to the
conditions that have been stipulated for that purpose.
The conditions that have been stipulated for granting compulsory licences with respect to patents for
inventions shall be applicable to the granting of compulsory licences in regard to lay-out designs.IP/C/W/252
Page 42
On the Requirements for Protection of Lay-out designs of Integrated Circuits;  On the Right Holders;
On the Application for Registration;  On the Processing of the Application;  On the Rights conferred
by Registration;  On the Licensing System;  On the Invalidation of the Registration.
42. Please explain what protection your national  legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies,
including integrated circuits or other articles in which a topography is incorporated in
accordance with Article 36 of the TRIPS Agreement.
Article 99 of Decision 486 cited above gives the owner of a protected lay-out design the right
to prevent third persons from carrying out the following acts:  reproduction by incorporating in an
integrated circuit all or part of a protected lay-out design, provided that the part is that which meetsthe requirement of originality;  marketing, impor ting, offering for sale, selling or otherwise
distributing:  (1) the protected lay-out design; (2) an integrated circuit incorporating
 the design;  and
(3) an article incorporating the integrated circuit if it contains a lay-out design unlawfully
incorporated.
                                                                                                                                                                    
Chapter VIII
On the Invalidation of the Registration
Article 108 . - The competent national authority may, either ex officio or at the request of a party and at
any time, declare the registration of a lay-out design null and void, where:
(a) The subject matter of the registration is not a lay-out design according to the requirements
stipulated in Article 86;
(b) the registration fails to comply with the requirements for protection set forth in Article 87;
(c) the registration was granted for a lay-out design applied for after the expiration of one of the periods
established in Article 97;  or
(d) there are grounds for declaring the registration to  be null and void according to domestic legislation
covering administrative acts.
Where the grounds specified above are applicable to on ly a part of the lay-out design, invalidation shall
be pronounced only in respect of that part, as pertinent, leaving the registration valid for the other parts,
provided that as a whole the lay-out design complies with the requirements for originality stipulated inArticle 87.
The lay-out design or the part of it that has been invalidated shall be deemed null and void as of the
filing date of the application for its registration.
Article 109 . - Where defects in administrative acts fail to  produce absolute invalidation as specified in
the preceding Article, those acts shall be conditionally invalidated.  In such cases, the competent national
authority may, in conformity with domestic legislation, declare them null and void within a period of five yearscounted from the date of registration.
Article 110 . - The competent national authority may, where a lay-out design registration has been
granted to a person that has no right to it, annul that  registration.  The invalidation proceeding may be brought
only by the person with a right to registration of that lay-out design.  That right of action shall lapse five years
from the date the registration was granted or two years following the date on which the person to whom thatright belongs learned about the marketing in the Member Country of the product incorporating that lay-outdesign, whichever period expires first.
Article 111 . - In invalidation proceedings, the competen t national authority shall request registered
right holders to present their arguments and submit the proof they deem advisable.
Where that authority, under the domestic law of a Member Country, is the competent national office,
the registered right holder shall present the arguments and submit the proof referred to in the previous Articlewithin a period of two months following notification.
Before the expiration of the period stipulated in the previous Article, the interested party may request
an extension of two additional months.
Once the periods stipulated in this Article have expired, the competent national office shall rule on the
invalidation of the registration and notify the parties of its decision.
Article 112 . - The competent national authority may, where necessary to rule on the invalidation of a
registration, request the right holder to submit one or more of the documents referred to in Article 89 withregard to the registration that is the subject matter of the proceeding.IP/C/W/252
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43. Please explain how your legislation provides for the derogation from Article 36 of the
TRIPS Agreement, as specified in Article 37 of the TRIPS Agreement, where a person has no
knowledge or reasonable grounds to know when acquiring an integrated circuit or an article
incorporating such an integr ated circuit that it contains an unlawful topography.
In conformity with Article 37 of the TRIPS Agreement, Article 10454 of Decision 486
provides for such exceptions.
44. Please state the term of protection granted by your legislation to topographies.
Pursuant to Article 98 of Decision 486, registration gives the owner rights in a lay-out design
for a term of ten (10) years as of the earliest of the following dates:  the last day of the year in which
the design was first commercially exploited anywhere in the world;  or the date on which theapplication for registration was filed with the co mpetent national authority in the Member Country;
nevertheless, a lay-out design shall lapse fifteen (15) years after the last day of the year in which it
was created (Article 97 of the Decision).
H. 
UNDISCLOSED INFORMATION
45. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
No, Article 26355 of Decision 486 provides that the protection of business secrets shall last as
long as the conditions laid down in Article 26056 persist.
46. Please explain how your legislation defines "undisclosed information".
Article 260 of Decision 486 defines business secrets as any undisclosed information in the
lawful possession of a natural or legal person that may be used in any production, industrial orcommercial activity and that is capable of being transmitted to a third party provided that the
information:
                                                     
54 Article 104 . - Performance of any of the acts referred to in Article 99 in respect of an integrated
circuit incorporating an unlawfully reproduced lay-out de sign or any article incorporating such an integrated
circuit shall not be considered an infringement of righ ts to a registered design, where the person performing or
ordering such acts did not know and had no reasonable ground to know, when acquiring the integrated circuit orarticle incorporating such an integrated circuit, that it incorporated an unlawfully reproduced lay-out design.
After the time that such person has received sufficient notice that the lay-out design was unlawfully reproduced,that person may perform any of the acts with respect to the stock on hand or ordered before such time, but shall
be liable to pay the right holder a sum equivalent to a reasonable royalty such as would be payable under a
freely negotiated licence in respect of such a lay-out design.
55 Article 263 . - Protection of a business secret shall last as long as the conditions set out in Article 260
exist.
56 Article 260 .- A business secret shall be considered to be any undisclosed information within the
lawful control of an individual person or legal entity that may be used for any production, industrial, or
commercial activity and that is capable of being transmitted to a third party, so long as that information:
(a) Is secret in the sense that it is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons within the circles that normally deal withthe kind of information in question;
(b) has commercial value because it is secret;  and(c) has been the subject of reasonable steps by the pe rson lawfully in control of the information, to keep
it secret.
The information constituting a business secret may be related to the nature, characteristics, or purpose
of the products, production methods or processes, or the means or forms of distribution or marketing of goods orthe supply of services.IP/C/W/252
Page 44
(a) Is secret in the sense that, as a whole or in the precise configuration and assembly of
its components, it is not generally known nor readily accessible to persons within the
circles that normally deal in this kind of information;
(b) has commercial value because it is secret;  and(c) has been the subject of reasonable steps by the person lawfully in control of the
information to keep it secret.
Information constituting a business secret may concern the nature, characteristics or purpose
of the products;  production methods or processes;  or the means or forms of distribution or marketing
of goods or the supply of services.
47. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
Article 266 of Decision 486 – Common Industrial Property Regime – provides that, when
Member Countries require as a condition for approving the marketing of pharmaceutical products or
agricultural chemical products that use new chemical entities, the submission of undisclosed test or
other data the origination of which involved a considerable effort, they shall protect such data against
unfair commercial use.  Furthermore, Member Countries shall protect such data against disclosure,
except where necessary to protect the public or unless steps are taken to ensure that the data areprotected against unfair commercial use.  Member C ountries may take steps to ensure the protection
provided in this Article.
I. 
ENFORCEMENT
48. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
Industrial property:
1. Action for claims:  Title XIV, Article 23757 of Decision 486 – Common Industrial Property
Regime.
2. Action for infringement of rights:  Title XV, Articles 238 to 24458 of Decision 486 – Common
Industrial Property Regime.
                                                     
57 Article 237 . - Where patents or registration of industrial designs have been applied for or obtained
by persons with no right to those patents or registrations, or to the detriment of other parties with the same
rights, the parties affected may claim those rights from the competent national authority and request the transferto them of the applications being processed or the right granted, or their recognition as co-applicants or co-owners of those rights.
Where trademark registrations have been filed for or obtained to the detriment of other parties with the
same rights, the parties affected may claim such rights from the competent national authority by requesting their
recognition as co-applicants or co-owners of the rights in question.
Where the domestic legislation of the Member Country so permits, compensation for damages may be
requested in the same claim.
The right to bring this action shall lapse four years after the date of granting the right or two years as
from the date of first exploitation or use of the subject matter of protection in the country by the person havingobtained the right, whichever period expires first.  There shall be no time-limit on action if the right was
obtained in bad faith.
58 Article 238 . - Owners of a right protected by virtue of this Decision may bring action with the
competent national authority against any persons infringing upon their right and also against any personsperforming acts that are likely to result in the infringement of that right.IP/C/W/252
Page 45
                                                                                                                                                                    
The competent national authority may, ex officio and if permitted by the domestic law of the Member
Country concerned, initiate the proceedings for infringement stipulated in that legislation.
In case of the co-ownership of a right, any one of the co-owners may bring action for infringement
without need for consent from the other parties, unless there is an agreement to the contrary among the co-
owners.
Article 239 . - The owner of a patent shall have the right to take legal action for damages resulting from
unauthorized use of the invention or utility model between the period when it became public knowledge and therespective application was opened to consultation and the patent grant date.  Compensation shall be lawful onlyin respect of the subject matter covered by the patent granted and shall be computed in accordance with thepatent's effective exploitation by the defendant over the period in question.
Article 240 . - In cases where infringement of a patent for a process for obtaining a product is claimed,
defendants shall be liable to prove a difference between the process they have used to obtain the product and theprocess protected by the patent whose infringement is claimed.  For this purpose, any identical product when
produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed tohave been obtained by the patented process:
(a) If the product obtained by the patented process is new;  or
(b) if there is a substantial likelihood that the identical product was made by the process and the owner
of the patent has been unable through reasonable efforts to determine the process actually used.
In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting their
business secrets shall be taken into account.
Article 241 . - The plaintiff or defendant may request the competent national authority to order one or
more of the following measures, among others:
(a) Cessation of all acts that constitute the infringement;(b) compensation for damages;(c) withdrawal from commercial channels of all products resulting from the infringement, including
packaging, wrapping, labels, printed materials or advertising, together with the materials and implements thepredominant use of which has been the commission of the infringement;
(d) prohibition against the importation or exportation of the products, or materials or implements
referred to in the previous item;
(e) adjudication of the ownership of the products or materials or implements referred to in item (c), in
which case the value of such goods shall be charged to the amount of compensation due for damages;
(f) adoption of the necessary measures to avoid continuation or repetition of the infringement,
including destruction of the products or materials or implements referred to in item (c) or the temporary or
definitive closure of the business belonging to the defendant or the accused;  or,
(g) publication of the guilty verdict and notification of interested parties at the infringer's expense.In the case of counterfeit trademark goods, the elimination or removal of that trademark shall be
accompanied by actions to prevent the introduction of thes e products into trade.  Furthermore, such goods shall
not be allowed to be re-exported in an unaltered state or to be subjected to a different customs procedure.
Cases duly qualified by the competent national authority or those expressly authorized by the owner of
the trademark shall be excepted.
Article 242 . - Member Countries may, unless out of proportion to the seriousness of the infringement,
instruct judicial authorities to order infringers to tell right holders the names of third parties having taken part inthe production and distribution of the infringing goods or services, and about the channels used for distributionof such goods.
Article 243 . - The following criteria shall be used, among others, to calculate the amount of
compensation to be paid for damages:
(a) The consequential damage and lost profits su ffered by the right holder as a result of the
infringement;
(b) the amount of profit obtained by the infringer as a result of the acts of infringement;  or,(c) based on the commercial value of the infringed right and such contractual licences as may have
already been granted, the price the infringe r would have paid for a contractual licence.
Article 244 . - The right to action for infringement shall lapse two years counted as of the date the
owner learned about the infringement or, in any case, five years after the infringement was committed for thelast time.IP/C/W/252
Page 46
3. Provisional measures:  Title XV, Chapter II, Articles 245 to 24959 of Decision 486 – Common
Industrial Property Regime.
4. Border measures:  Title XV, Chapter III, Articles 250 to 25660 of Decision 486 – Common
Industrial Property Regime.
                                                     
59 Article 245 . - Any party initiating or who shall initiate an action for infringement may request the
competent national authority to order immediate provisional measures for the purpose of preventing an
infringement from occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring the
effectiveness of the action or compensation for damages.
Provisional measures may be requested before starting the action, together with it, or after it has been
initiated.
Article 246 . - The following provisional measures may be ordered, among others:
(a) Immediate cessation of all acts constituting the alleged infringement;
(b) withdrawal from commercial channels of all products resulting from the alleged infringement,
including packaging, wrapping, labels, printed material or advertising, or other materials, together with thematerials and implements the predominant use of which has been the commission of the infringement;
(c) suspension of the importation or exportation of the goods or materials or implements referred to
under the previous paragraph;
(d) establishment by the alleged infringer of an adequate guarantee;  and,
(e) temporary closure of the business belonging to the defendant or accused, if necessary, to avoid
continuation or repetition of the alleged infringement.
The competent national authority may, if permitted by the domestic law of the Member Country
concerned, order the application of provisional measures ex officio.
Article 247 . - A provisional measure shall be ordered only where the persons requesting it accredit
their lawful right to act and the existence of the infringed right, and provide evidence allowing for a reasonable
presumption of infringement or that infringement is imminent.  The competent national authority may requirepersons requesting the measure to provide security or sufficient equivalent assurance before ordering such ameasure.
The applicant for a provisional measure in respect of particular goods shall supply the necessary
information and a sufficiently detailed and precise description so that the allegedly infringing goods can be
identified
Article 248 . - Where a provisional measure has been adopted inaudita altera parte , the party affected
shall be given notice without delay after the execution of the measures.  The defendant may request thecompetent national authority to conduct a review of the measure imposed.
Unless stipulated otherwise, any provisional measure imposed inaudita altera parte  shall cease to have
effect by operation of law if infringement proceedings are not initiated within ten days following the execution
of the measure.
The competent national authority may modify, revoke, or confirm the provisional measure.Article 249 . - Provisional measures shall be applied to the goods resulting from the alleged
infringement and to the materials or implements the predominant use of which has been the commission of theinfringement.
60 On Border Measures
Article 250 . - The owner of a registered trademark who has valid grounds for suspecting that the
importation or exportation of counterfeit trademark goods  will take place may request the competent national
authority to suspend this customs operation.  The conditions and security stipulated in the domestic legislationof the Member Country concerned shall be applicable to th is request and to such an order as that authority may
issue.
The party requesting measures to be taken at the border shall be required to supply the necessary
information and a sufficiently detailed and precise description of the goods subject to the alleged infringementso they can be identified.
The competent national authority may, if permitted by the domestic laws of the Member Country, order
the application of measures at the border ex officio.
Article 251 . - The competent national authority shall give trademark owners the opportunity to
participate in the inspection of the detained goods in order to substantiate their claims.  The importer or exporter
of those goods shall be entitled to exercise the same right.
The competent national authority shall make all neces sary arrangements for confidential information to
be protected during the inspection procedure.IP/C/W/252
Page 47
5. Unfair trade practices:
(a) Title XVI, Chapter I, Articles 258 and 25961 of Decision 486 – Common Industrial
Property Regime;
(b) Title II, Article 1762 and Titles IV, V, VI and VII, Articles 32 to 56 of the Law on the
Promotion and Protection of Free Competition.
6. Criminal procedures:
(a) Title XV, Chapter IV, Article 25763 of Decision 486 – Common Industrial Property
Regime;
(b) Chapter VII, Articles 97 to 105 of the Industrial Property Law;
                                                                                                                                                                    
Article 252 . - Upon fulfilment of the applicable conditions and the security provisions, the competent
national authority shall order or reject the suspension of the customs operation and shall inform the applicantaccordingly.
In the event that the authority orders the operation to be suspended, the notification to the applicant
shall include the name and address of the consigner, importer, exporter, and consignee of the goods concerned,and the amount of goods to be detained.  The importer or exporter of those goods shall be likewise notified of
the suspension.
Article 253 . - If, within ten working days after the applicant has been served notice of the suspension
of the customs operation, the plaintiff fails to initia te infringement proceedings or the competent national
authority has not taken measures to prolong the suspension, the measure shall be revoked and the detainedgoods shall be released.
Article 254 . - If infringement proceedings have been initiated, the defendant may appeal to the
competent national authority, which shall decide whether to modify, revoke, or confirm the suspension.
Article 255 . - Once the existence of an infringement has been determined, such counterfeit trademark
goods as the competent national authority may have seized may not be re-exported in an unaltered state orsubjected to a different customs pro cedure, except in cases duly qualified by the competent national authority or
expressly authorized by the right holder.
Without prejudice to other rights of action available to the right holder and subject to the right of the
defendant to seek review by a judicial authority, th e competent national authority may order the destruction or
seizure of infringing goods.
Article 256 . - Small quantities of goods of a non-commercial nature contained in travellers' luggage or
sent in small consignments shall be excluded from the application of the provisions of this chapter.
61  Article 258 . - Any act carried out in respect of industri al property in the course of trade that is
contrary to honest commercial prac tices shall be considered unfair.
Article 259 . - The following, among others, constitute industrial property-linked unfair trade practices:
(a) Any act which, by any means whatsoever, is capable of causing confusion with respect to the
business, goods, or industrial or commercial activity of a competitor;
(b) false affirmations made in the course of tr ade that are capable of discrediting a competitor's
business, goods, or industrial or commercial activity;  or,
(c) indications or affirmations whose use in the cour se of trade may mislead the public with regard to
the nature, method of manufacture, characteristics, usefulness, or quantity of the goods in question.
62 Article 17 . – Trade policies aimed at the elimination of competitors through acts of unfair
competition shall be prohibited, in particular the following acts:
1. Misleading or false publicity for the purpose of preventing or restricting free competition;2. Promotion of products and services based on false declarations concerning the disadvantages or risks
of any other product or service of competitors;  and
3. Commercial bribery, infringement of industrial secrets and the imitation of products.
63 Article 257 . - Member Countries shall provide for criminal procedures and penalties to be applied in
cases of trademark counterfeiting.IP/C/W/252
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(c) Title VI, Chapter V, Articles 338 and 33964 of the Venezuelan Criminal Code.
Copyright
(a) Affirmatory action:  Title VI, Article 10965, of the Law on Copyright, which seeks to
obtain a judicial ruling confirming the existence of the right claimed by plaintiff;
(b) Inhibitory, prohibitory or convictive action: Title VI, Article 109, of the Law on
Copyright, which provides that the ow ner of a right who has reason to fear
infringement of his rights or the persistence or recurrence of infringement that has
already occurred may request the courts to prohibit the other person from engaging in
infringement;
(c) Action for withdrawal or destruction: Title VI, Article 11066, of the Law on
Copyright.  Article 57(c) in Chapter VIII of Decision 351 also allows this possibility;
                                                     
64 Article 338 . – Any person who has counterfeited or altered names, trademarks or distinctive signs
belonging to intellectual works or to the products of any industry, and any person who has made use of legallyregistered names, trademarks or signs that have been so counterfeited or altered, even if the act was carried out
by a third person, shall be liable to a term of imprisonment of one to 12 months.
The same penalty shall apply to any person who ha s counterfeited or altered industrial designs or
models or has made use of them, even if the act was carried out by a third person.
The judicial authority may provide that the conviction be published in a newspaper it specifies, at the
expense of the infringer.
Article 339 . - Any person who, for the purpose of trade, has imported into Venezuela and put on sale
or in any way circulated intellectual works or products of any industry bearing counterfeited or altered names,trademarks or distinctive signs likely to mislead the cons umer as to their origin or quality, if the ownership of
the works, trademarks or signs has been legally regi stered in Venezuela, shall be liable to a term of
imprisonment of one to 12 months.
65 Article 109 . - The owner of any of the exploitation rights provided for in this Law who has reason to
fear infringement of his rights or the continuation or recurrence of an infringement that has already occurredmay request the court to declare his rights and prohibit the other person from engaging in infringing acts,without prejudice to any action for moral and material damages that he may bring against the infringer.
In order to make the prohibition effective, the court may give warning in its ruling of a fine payable if
an infringement should occur.  The court shall impose the sanction at the request of the injured party.  The fine
shall not exceed the equivalent of 20 times the minimum urban wage set by the National Executive inaccordance with the Law on the Organization of Labour, and it shall be convertible into detention in the
proportion of Bs 500 to one day of detention.
In the event of a second offence, the fine imposed may be doubled.
66 Article 110 . - The owner of one of the exploitation rights provided for in this Law who has been
prejudiced in the exercise thereof may request the court to  order the destruction or withdrawal of the originals or
copies unlawfully reproduced and of the equipment used for the reproduction, insofar as the latter cannot, bytheir nature, be used for the reproduction or communi cation of other material, without prejudice, where
appropriate, to the right to bring action for damages caused to the owner of any one of the exploitation rightsmentioned.
If part of the equipment concerned can be used for the reproduction or communication of other
material, the person concerned may demand that the part in question be separated at his expense to save it fromdestruction or removal.  If the original, copy or equipment whose removal or destruction is sought is ofparticular artistic or scientific merit, it may not be destroyed, and the court may order ex officio that it be handedover to a public museum.
In any event, the injured party may request that the originals, copies or equipment whose destruction
has been ordered be awarded to him.  The court shall determine the value of the award, which shall be deducted
from the estimated amount of compensation for damages caused.
The measures referred to in this Article shall be without effect on those who have, in good faith and for
their personal use, acquired an unlawfully reproduced original or copy.IP/C/W/252
Page 49
(d) Action for damages: Title VI, Article 109, Article 110 and Article 6467 of the Law on
Copyright.  Article 57(a) and (b) in Chapter VIII of Decision 351 – Common
Provisions on Copyright and Neighbouring Rights – empower the competent
authorities to order the infringer of any pr otected rights to pay adequate compensation
for injury caused to the plaintiff, in addition to the procedural costs.
49. Please explain whether or not your legislation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
Venezuela observes and applies the principle of dual jurisdiction under which administrative
decisions may be reviewed by the competent jurisdictional bodies.  Consequently, the Basic Law on
Administrative Procedures allows for discretionary (Article 94), and hierarchical remedies(Article 95) and for review, but also for appeals through the administrative courts so that disputes
concerning final decisions taken by administrative  bodies can be settled through judicial channels.
Decisions taken by the Autonomous Intellectual Property Service are subject to appeals for
review before the Service itself and at a higher level before the Minister for Employment.  Decisions
taken by the latter, which exhaust administrative channels, are subject to appeal for judicial review
before the First Court of Judicial Review, whose decision is subject to appeal before the Supreme
Court of Justice, in conformity with Articles 121 and 134 of the Basic Law on the Supreme Court of
Justice.
50. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensure
the protection of confidential information.
In Venezuela's legal system there is a means of proof called "presentation of documents".
This is based on Article 436 of the Code of Civil Procedure, which reads as follows:
"Article 436. - A party seeking to utilize a document that, according to its declaration, lies
within the control of the other party, may request its presentation.
The request for presentation shall be accompanied by a copy of the document or, failing that,
by a statement of the facts known to the requesting party concerning the content of thedocument and evidence showing that there is at least a serious presumption that the document
is or has been within the control of the other party.
The court shall require the other party to present or hand over the document within the period
it indicates or be subject to a penalty.
If the document is not presented within the time-limit fixed and no evidence is provided to
show that it does not lie within the control of the other party, the text of the document as it
appears in the copy presented by the requesting party shall be presumed to be accurate, or in
its absence, the information provided by the requesting party concerning the content of the
document shall be deemed to be correct (…)".  (Emphasis added)
                                                     
67 Article 64 . - Any person who exploits a work, product or production administered by a collective
administration organization without having been assigned the corresponding rights or without having been
granted the appropriate licence for use, shall pay, by way of indemnification, a charge of 50 per cent of theremuneration specified in the tariff, applicable to th e entire period during which th e exploitation took place,
provided that there is no evidence of a more serious prejudice in the specific case.IP/C/W/252
Page 50
This means of proof can be used in both criminal and civil proceedings in Venezuela, where
the principle of freedom of evidence exists, allowing  the use of any evidential means provided in any
legislative text.
In addition to the foregoing, Article 240 of Decision 486 of the Andean Community provides
that the burden of proof shall lie with the defendant in cases of infringement of a patented process
used to obtain a product.  For this purpose, there is a juris tantum  presumption against the defendant,
who must prove during the proceedings that the process used to obtain the product is not the process
protected by the patent.  The protection of the defendant's business secrets must also be taken into
account.
With regard to mechanisms for maintaining confidentiality, we should point out that, in
criminal proceedings, all investigative acts are restri cted as far as third parties are concerned so only
parties directly involved in the cas e, together with the judicial authorities and the Public Prosecutor's
Office, have access to the records of the proceedin gs and consequently to the evidence furnished.
Officials involved in the investigation and persons  who, for any reason, have knowledge of the action
taken thus have a duty of confidentiality (Article  313 of the Basic Code of  Criminal Procedure).
The principle of public information governs civ il proceedings so all the records of proceedings
are public.  The sole exception to this principle is where the court determines otherwise for reasons of
public morality, depending on the nature of the case (Article 24 of the Code of Civil Procedure).
51. Please quote provisions of your legislation th at authorize judges to order a defendant to
desist from an infringement.
The competent national authority may order the cessation of the acts that constitute the
infringement;  the withdrawal from commercial chan nels of products resulting from the infringement;
a ban on the import or export of the products;  adjudication of the ownership of the products;  the
adoption of the measures necessary to prevent the continuation or recurrence of the infringement,
including the destruction of the products or the temporary or definitive closure of the business
belonging to the defendant or accused; publication of the ruling and its notification to interested
parties at the expense of the infringer (Article 241 of Decision 486 of the Commission of the Andean
Community – Common Industrial Property Regime).
Article 110 of the Law on Copyright and Articl e 56 of Decision 351 of the Commission of the
Cartagena Agreement – Common Provisions on Copy right and Neighbouring Rights – provide for the
destruction or withdrawal from commercial channels by any means of the infringing goods and the
materials or implements used for their reproduction.
In the case of industrial property, such a measure is laid down in Article 241 of Decision 486
of the Andean Community – Common Industrial Property Regime.
52. Please quote what provisions of your legislation authorize judges to order the payment
to the right holder of adequate damages to compensate the injury he suffered.
Article 239 of Decision 486 provides that the owner of a patent may take legal action for
damages resulting from unauthorized use of the invention or utility model between the period when it
became public knowledge and the respective application was opened for consultation and the date the
patent was granted.
Venezuela's law, more specifically Article 1185 of the Civil Code, lays down the principle
that "Any person who intentionally or by negligen ce or imprudence, causes damage to another person
shall be obliged to compensate for it".  This is the principle of civil liability for unlawful acts where,
once the liability of the perpetrator and the inju ry caused have been established, compensation isIP/C/W/252
Page 51
determined according to the economic loss to the victim ( damnum emergens ) or the loss of profits
(lucrum cessans ) resulting from the unlawful act in civil cases or as the result of the commission of an
offence (civil action resulting from an offence) in  criminal proceedings.  Along the same lines,
Article 241(b) of Decision 486 of the Andean Community – Common Industrial Property Regime –
and Article 243 thereof establish criteria for calculating damages.
The Law on Copyright also provides for action for damages (Articles 109, 110 and 64).
53. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
Venezuela's ordinary law lays down the principl e that "Any person who intentionally or by
negligence or imprudence, causes damage to another person shall be obliged to compensate for it"
(Article 1185 of the Civil Code).  This includes si tuations where damage is proved and the competent
court issues a ruling ordering the payment of a sum of money for damages, irrespective of the subject
matter of the case.  The owner of an intellectual property right is also covered by this principle.
Venezuela's judicial system contains several provisions on the costs of proceedings and
attorneys' fees, which Venezuelan legislation terms "court costs".  These include the costs incurred by
each party in bringing the case to court and the fees paid to attorneys, experts and other professionals
involved in the proceedings.  According to these provisions, as a general principle, the court will order
the losing party to pay the court costs (Articles 274 to 287 of the Code of Civil Procedure).
54. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
Courts may order the withdrawal from comm ercial channels of goods which infringe
intellectual property rights and their destruction, either as a provisional measure ordered by a court or
as a penalty following a conviction.  For example:
As regards border measures, the competent intellectual property authority may request the
customs authorities, subject to substantiation, to prevent the customs clearance of goods at any time,
upon submission of sufficient security to protect the owner of the right if there is any infringement,
the amount being fixed by the competent authority.
The customs authorities shall notify the owne r, importer or consignee that the goods in
question have been withheld (Article 87 of the Basic Customs Law).
Articles 250 to 255 of Chapter III (On Border Measures), of Title XV (On Actions for
Infringement of Rights), of the Community text Decision 486 – Common Industrial Property
Regime – also provide for such a procedure.
With regard to industrial property, Article 105 of the Law specifies that:
"Any sentence pronouncing a conviction in an industrial property case shall order the
destruction of the elements that had been used or prepared in order to commit the offence, as
well as the objects resulting from the offence."
The Law on Copyright (Article 110) allows action or claims for the purpose of obtaining the
destruction or withdrawal of the originals or copies unlawfully reproduced and of the equipment used
for the unlawful reproduction.IP/C/W/252
Page 52
The judicial ruling must endorse or refuse the withdrawal or destruction, but the equipment
used for the reproduction may not be destroyed if it can be used for the reproduction or
communication of other material (Article 110).
In exceptional cases, the unauthorized copy of a work, performance or production, or the
equipment used for the offence, may have special artist ic or scientific merit and if this is the case the
court will not order its destruction and is empowered to order ex officio that it be handed over to a
public museum.  Action for removal and destruction always leaves open the possibility of action for
damages.
55. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
It is not only the plaintiff or owner of intellectual property rights who has the right to bring
action for damages and indemnification for damages is also available to any person who has been a
victim of the plaintiff's imprudence so the principle laid down in Article 1185 of Venezuela's Civil
Code applies in such cases, together with the provisions mentioned in the reply to question 51.
It is also important to point out that courts may require the plaintiff to deposit sufficient
security before ordering a provisional measure (Article 247 of Decision 486 of the Andean
Community).  This is a power given to courts, which may require security or a guarantee from the
plaintiff before ordering provisional measures so as to ensure that no imprudence has been committedby the plaintiff when requesting the measure.
56. Please explain how your legislation implements Article 50 of the TRIPS Agreement .
Provisional measures
JUDICIAL MEASURES
Copyright
The courts may order the sequestration of everythi ng that constitutes infringement of the right
of exploitation and seizure of the revenue accruing to  the right holder provided that proof constituting a
serious presumption of the right claimed is fu rnished (Article 111 of the Law on Copyright).
The competent national authority may, as a precautionary measure, order the immediate
cessation of the unlawful activities;  the attachment, sequestration, confiscation or preventive seizure, as
appropriate, of the copies produced in violation of rights, and the attachment, seizure, confiscation or
sequestration of the apparatus or materials used fo r the commission of the unlawful act (Article 56 of
Decision 351 of the Commission of the Cartagena Agreement – Common Provisions on Copyright and
Neighbouring Rights.
Industrial property
The following provisional measures may be ordered:  immediate cessation of all acts
constituting the alleged infringement;  withdrawal from commercial channels of all products resulting
from the alleged infringement;  suspension of the impor tation or exportation of the goods;  establishment
by the alleged infringer of an adequate guarantee;   and temporary closure of the business belonging to
the defendant or the accused, if necessary, to avoid continuation or repetition of the alleged infringement
(Article 246 of Decision 486 – Co mmon Industrial Property Regime).
Suspension of the effects of the administrative act  of registering a patent or trademark whose
annulment has been sought may be requested when permitted by the law or if suspension is necessary toIP/C/W/252
Page 53
prevent irreparable injury or injury which it would be difficult to repair definitively, and the court may
require an appropriate guarantee for this purpose (Article 136 of the Basic Law on the Supreme Court of
Justice).
As a provisional measure, suspension of the effe cts of the administrative act of registering a
patent or trademark may be requested before the competent court, under the constitutional guarantee for
the protection of rights, on the grounds of unconsti tutionality and provided that the requirements
applicable to provisional measures are met, those of colour of title and risk in delay (Article 5 of the
Basic Law on the Protecti on of Constitutional Rights and Guarantees).
In both cases, copyright and industrial property, any type of provisional measure or
"innominate measure" may be requested provided that the requirements laid down in the law are met(First Paragraph of Article 588 of  the Code of Civil Procedure).
57. Please identify the competent authorities in your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customs
authorities.
It should be noted that Article 87 of th e Basic Customs Law empowers the customs
authorities to impose border measures, but as these must be requested in judicial proceedings resulting
from an investigation based on a complaint or petition, it is in fact the judicial authorities that have the
competence to order them.
In the case of a criminal complaint, the comp etent court is the Criminal Court of First
Instance and, in the case of a civil petition, measures are ordered by the Judge of First Instance in
Civil and Commercial Matters.
The customs authorities shall notify the owne r, importer or consignee that the goods in
question have been withheld (Article 87 of the Basic Customs Law).
58. Please quote what provisions of your legisl ation authorize the competent authorities to
order the destruction or disposal of infringing goods.
According to Article 250 of Decision 486 of the Andean Community – Common Industrial
Property Regime - the owner of a registered trademark who has valid grounds for suspecting that
products infringing the trademark are to be imported or exported may request the competent national
authority to suspend customs clearance.
Where the existence of infringement has been determined, the goods bearing counterfeit
trademarks that have been seized may not be re-exported nor made subject to any other customs
procedure, except with the express authorization of the owner of the trademark.
Similarly, when goods have been withdrawn from the customs zone but all the requirements
specified in the Law or the criteria governing their import or export have not been met or the dutiesapplicable have not been paid, the National Tax Authority may seize the goods (Article 11 of the
Basic Customs Law).  Authority is also given to enter warehouses, freight yards, offices, vehicles and
other private or public places subject to the legal authority of the customs without the need for any
special authorization (Article 10 of the Basic Customs Law).
59. Please quote what provisions of your legisl ation authorize the competent authorities to
order the destruction or disposal of infringing goods.
Without prejudice to the reply to question 52 in this list of questions regarding border
measures, Article 255 of Decision 486 of the Andean Community provides that the competentIP/C/W/252
Page 54
national authority may order the destruction or seizure of infringing goods without prejudice to other
rights of action available to the right holder and subject to the right of the defendant to seek review by
a judicial authority.
60. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
The regime governing the application of border measures described above does not apply to
small quantities of goods of a non-commercial nature contained in travellers' luggage or sent in small
consignments, as provided in Article 256 of Decision 486 of the Andean Community.
61. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
The Criminal Code provides penalties for the infringement of industrial property rights and
copyright.  Article 338 of the Criminal Code, for example, specifies a term of imprisonment of one to
12 months for any person who has counterfeited or altered names, trademarks or distinctive signs
belonging to intellectual works or to the products of any industry, and for any person who has madeuse of legally registered names, trademarks or signs that have been so counterfeited or altered, even if
the act was carried out by a third person.  The same penalty applies to any person who has
counterfeited or altered industrial designs or has made use of them, even if the act was carried out by
a third person.
Article 339 of the Criminal Code imposes a term of imprisonment of one to 12 months on any
person who, for the purpose of trade, has imported into Venezuela and put on sale or in any way
circulated intellectual works or products of any industry bearing counterfeited or altered names,
trademarks or distinctive signs likely to mislead the consumer as to their origin or quality, if the
ownership of the works, trademarks or signs has been legally registered in Venezuela.
Article 340 of the Code imposes a term of imprisonment of 15 days to three months on any
person who has disclosed information concerning an invention, scientific discovery or industrial
process that should have been kept secret and who has become aware of it because of their position or
employment or as a result of their profession, art or industry, as well as a term of imprisonment of
15 days to six months if the disclosure was made to a foreigner not resident in Venezuela or the
latter's agent.
Likewise, the Industrial Property Law imposes a term of imprisonment of one to 12 months
on any person who infringes the rights of the legitimate owner or holder of a patent, by
manufacturing, making, transmitting or using for industrial purposes and for profit unlawful or
fraudulent copies of the subject matter of the patent , without the express or tacit consent of the owner,
as well as any person who, in order to prejudice the rights or interests of the legitimate owner, uses,
manufactures or makes registered trademarks, models or designs or others likely to be confused with
them (Articles 98 and 99).
Any person who designates a business as a branch of another business which has a registered
trade name and who maliciously takes advantage of an industrial or commercial reputation earned by
the efforts of another whose property is protected under the Industrial Property Law shall be liable to
a term of imprisonment of one to 12 months (Articles 100 and 101 respectively).
As regards copyright, use of the title of a work, communication in the original or a developed
form, in their entirety or in part, of intellectual works, editions of the works of others, or of texts or
photographs or products obtained by a process e quivalent to photography or images recorded on
cinematographic film, being equivalent to photography, or the distribution of intellectual works
including copies of phonograms and unauthorized broadcasting or retransmission by broadcastingIP/C/W/252
Page 55
organizations, without the consent of the owner of the rights concerned, are punishable by a term of
imprisonment of six to 18 months (Article 119 of the Law on Copyright).
A term of imprisonment of one to four years is imposed on any person who intentionally
reproduces in the original or a developed form, in their entirety or in part, intellectual works, editionsof the works of others or texts or photographs or products obtained by a process equivalent to
photography or who imports into Venezuela, stocks , distributes, sells, or circulates unlawful
reproductions thereof (Article 120 of the Law on Copyright).  The same penalty applies to any person
who copies, by any means, the performance of an actor or performer, a phonogram or a broadcast in
its entirety or in part, or who imports into Venezuela, stocks, distributes, sells or circulates such
reproductions or copies (Article 121 of the Law on Copyright).
JAPAN
A. 
GENERAL
1. Please explain how Decisions 344, 345, 3 51, 391 and 486 of the Commission of the
Cartagena Agreement are implemented in your country, indicating whether they are applied
directly or through national legislation.
Decision 486 of the Commission of the Cart agena Agreement – Common Industrial Property
Regime – which replaces Decision 344 of the Co mmission;  Decision 345 – Common Provisions on
the Protection of the Rights of Breeders of New Plant Varieties;  Decision 351 – Common Provisions
on Copyright and Neighbouring Rights;  and Decision 391 – Common Regime on Access to Genetic
Resources – are applied directly in Venezuelan legislation by virtue of Article 153 of the Constitution
of the Bolivarian Republic of Venezuela.68
Article 369 of the Treaty creating the Court of Justice of the Andean Community provides that
the Commission's decisions shall be directly applicable in Member Countries.
It should be noted that these Community regulations must be applied equally in the whole of
the sub-region, in other words they must have simultaneous and uniform effect in the five Member
Countries of the Agreement.  In Community law, therefore, supranationality takes the form of two
basic principles that must serve as the basis for the legal structure of integration, namely, directapplication
70 and pre-eminence.71
Consequently, Community regulations are integrated in the national affirmative legal system
without any intermediate legislative or executive instances.
                                                     
68 Article 153 . – (…) The Republic may assign to supranational organizations, by means of treaties, the
exercise of the competence necessary for implementing these integration processes.  Among the integration andunion policies with Latin America and the Caribbean, the Republic shall give priority to relations with Ibero-
America, so as to achieve a common policy for all our Latin American countries.  The rules adopted under
integration agreements shall be considered an integral part of the legislation in force and shall be applied
directly and take precedence over domestic legislation. (Emphasis added)
69 Article 3 . – Decisions of (…) the Commission (…) shall be directly applicable in Member Countries
as of the date they are published in the Official Gazette of the Agreement, unless they indicate a later date.
70 Direct application :  means a regulation's capacity to have legal effects in a Member Country
without the need for any complementary regulations in do mestic legislation, in accordance with Article 3 of the
Treaty creating the Court of Justice of the Andean Community.
71 Pre-eminence :  means the possibility that a regulation under Community law prevails over a
provision of domestic law that is contrary to it, irrespective of the hierarchical level of the latter.IP/C/W/252
Page 56
B. COPYRIGHT
2. Please explain exceptions or exemptions to  the national treatment and most-favoured-
nation treatment under the Law on Copyright and Neighbouring Rights, if any, as permitted by
Articles 3 and 4 of the TRIPS Agreement.
Venezuela's domestic legislation on copyright and neighbouring rights (Decision 351 –
Common Provisions on Copyright and Neighbouring Rights) does not provide for any exceptions to
application of the principles of national treatment and most-favoured-nation treatment provided in
Articles 3 and 4 of the TRIPS Agreement respectively.
Consequently, the principles of national treatment and most-favoured-nation treatment as set
out in Articles 3 and 4 of the Agreement on Trade- Related Aspects of Intellectual Property Rights
(TRIPS) have been granted to nationals of countries Members of the World Trade Organization
(WTO) since Venezuela's ratification of the Uruguay Round Agreements.  These principles thus form
part of Venezuela's legislation.
Nevertheless, Venezuela is party to the Cartagena Agreement, which entered into force before
ratification of the Agreement Establishing the Worl d Trade Organization, and is thus exempt from the
principle of most-favoured-nation treatment pursuant to Article 4(d) of the TRIPS Agreement as it
made the relevant notification to the TRIPS Council before the entry into force of the aforementioned
Agreement.
C. PATENTS
3(1) Please describe how Decision 486 of the Commission of the Cartagena Agreement and, if
applicable, your national legislation, define the no tion of "invention" in the light of Article 27.1
of the TRIPS Agreement stipulating that patents shall be available for any "inventions" in all
fields of technology, provided that they are ne w, involve an inventive step and are capable of
industrial application.  What is the reasoning that the subject matters prescribed in
Article 15(b) of Decision 486 are deemed non-inventions;  is it because they exist in nature or
because they are related to living things or biological material?
Article 14 of Decision 486 defines patentability in the same terms as Article 27.1 of the
TRIPS Agreement, even though there is no specific definition of invention, which is not provided in
domestic legislation either.  Nevertheless, the relevant theory and case law recognize that, for thepurposes of patent legislation, an invention is a technical solution to a technical problem.  "Technical"
is understood to mean anything that requires the use of natural forces (material, energy) by humans in
order to satisfy material needs. Human intervention in  nature is essential to the concept of inventions.
These criteria are implicit in the rules on patents for inventions laid down in Decision 486.
The material referred to in Decision 486, Article 15(b), is not considered an invention because
it is a question of products of nature and not of inventions made by humans.  Material existing in
nature cannot be claimed as an invention by anybody.  For an invention to exist, something already
existing in nature must be transformed by a person.
3(2) If a living thing, its part or biological material that has no previously recognized
existence has been first isolated or purified artificially from its surroundings in nature (i.e. if it
involves "human intervention"), is it deemed an invention under Article 15 of Decision 486?
Otherwise, is it automatically deemed a non-invention regardless of the extent of human
intervention involved?
Biological material existing in nature is not considered an invention purely because its
existence was not previously known.  Recognition of the existence of material or a phenomenon inIP/C/W/252
Page 57
nature constitutes a discovery, not an invention.  Human intervention in nature by a person who
makes a discovery cannot be assimilated to an intervention made by an inventor.  A discoverer simply
identifies something that already ex ists in nature and may separate it or isolate it from its medium in
order to understand it better.  An inventor goes further because he transforms something that is found
in nature in order to resolve a technical problem and this transformation can be repeated and appliedin practice.  Merely isolating or purifying material already existing in nature does not make it
patentable, whether the material is living or inert.  For example, treating the sand from a river bed in
order to separate or isolate a mineral in powder form contained in the sand (gold for example) does
not make the mineral isolated or purified patentable.  In the same way, the mere fact of finding or
discovering an animal, plant or micro-organism in nature does not make it patentable, even if it was
not previously known.  A product of nature must be transformed by a person before it can be
considered an invention.
Without prejudice to the foregoing, any process for separation, isolation or purification which
meets the requirements for patentability may be the subject of a process patent.
3(3) Where a particular type of chemical substance exists in nature but is neither a part nor
whole of a living thing nor a biological material  (such as carbon beads isolated from the oil
residue which is produced through the oil refin ement process when lamp oil and light oil are
removed from crude oil), is it deemed an invention under Article 15 of Decision 486 if it is first
isolated or purified artificially from its surroundings?
The indications given in the reply to question 3(2) apply.  The work carried out by a
discoverer, however intensive it may be, cannot be assimilated to that of an inventor.  The separation,
isolation or purification of material existing in nature does not make the separated, isolated or purified
material patentable unless it has been intrinsically transformed.  The processes for separation,
isolation or purification can nevertheless be patented if they meet the criteria laid down in the law.
4. Please explain whether or not the subject ma tters listed below are deemed an invention
under Article 15 of Decision 486 and, if applicable, your national legislation.  If any of these
subject matters is deemed a non-invention, please specify the reason.  Please suppose that (a),
(h), (i), (l), (m), (n) and (o) have no previously recognized exis tence and have first been isolated
or purified artificially from their surroundings in  nature and that all of those listed meet other
requirements for patenting, such as novelty (in the sense that they have not been known to thepublic), an inventive step, and industrial applicability.
(a) Human insulin isolated or purified from beta cells of a human pancreas.
This is not considered an invention.  See the replies to questions 3(2) and 3(3).
(b) A gene which encodes the said human insulin.
If the gene already exists in the human body, in other words it has been discovered and
isolated from the human body, it is not considered an invention.  If it is a gene created by a person (forexample, through genetic engineering) and when introduced into the human body or into an
appropriate medium encodes and expresses itself by producing human insulin, yes, it would be
considered an invention.
(c) An expression vector which carries the said gene.
If the expression vector already exists in the human body or in nature, it is not considered an
invention.  If it is an expression vector created by a person, yes, it would be considered an invention.IP/C/W/252
Page 58
(d) Escherichia coli transformed by the said expression vector.
Micro-organisms modified by persons are considered inventions.  Escherichia coli
transformed using the expression vector in question (or any other method) is considered an invention
because it is not the E. coli existing in nature.
(e) A process for producing human insulin by culturing the said escherichia coli.
Yes, it is considered an invention.
(f) Recombinant human insulin ob tained by the said process.
Yes, it is considered an invention.
(g) A mutant obtained by genetically modifying the said recombinant human
insulin.
Yes, it is considered an invention.
(h) Baker's yeast isolated or purified artificially from its surroundings in nature.
It is not considered an invention.  See the replies to questions 3(2) and 3(3).
(i) A micro-organism which is isolated or purified artificially from its surroundings
in nature and produces an antibiotic mycin X.
If the micro-organism has not been modified by human intervention, it would be a product of
nature and would not be considered an invention.  See the replies to questions 3(2) and 3(3).
(j) An antibiotic mycin X produ ced by the said micro-organism.
If the micro-organism naturally produced the antibiotic before it was isolated or purified, the
antibiotic would be considered a product of nature and not an invention.  If, however, as a result of
human intervention through the isolation or purification of the micro-organism, something isproduced (an antibiotic) which it does not normally prod uce in its natural state, it would be considered
that the antibiotic is the result of human interventi on in nature.  In which case, the antibiotic could be
considered an invention.
(k) A mutant obtained by artificially mutating the said organism with UV rays.
Yes, it is considered an invention.
(l) A hybridoma which produced an antibody recognizing antigen A.
Yes, it is considered an invention.
(m) Human hepatocyte Y.
If the hepatocyte already exists in the human body (or in nature), it is not considered an
invention.  If it is a hepatocyte created by a person, it would be considered an invention.IP/C/W/252
Page 59
(n) Human liver tissue Z
If the human liver tissue already exists in the human body (or in nature), it is not considered
an invention.  If it is human liver tissue created by a person, it would be considered an invention.
(o) Carbon beads isolated from the oil residue which is produced through the oil
refinement process when lamp oil and light oil are removed from crude oil.
This is not considered an invention.  See the replies to questions 3(2) and 3(3).
5. Please explain the relationship between  Article 29.1 of the TRIPS Agreement and
Article 26(h) and (i) of Decision 486, which oblige  patent applicants to submit a copy of the
contract for access to genetic resources and a copy of the documents certifying the authorization
to use traditional knowledge.  Does your country consider the above-mentioned applicants'
obligation as enablement requirements, which is clearly stipulated in Article 29.1 of the TRIPS
Agreement, or as an additional requirement, which is not stipulated in that Article?
There is no relationship between Article 29.1 of the TRIPS Agreement and Article 26(h) and
(i) of Decision 486 of the Andean Community.  Article 29.1 of the TRIPS Agreement concerns
sufficient disclosure of the invention.  This aspect is covered by Articles 28 and 29 of Decision 486.
The provisions in Article 26(h) and (i) of Decision 486 do not refer to the requirement to
disclose the invention.  Their purpose is rather to  ensure respect for and compliance with the national,
Andean Community and international legal provisi ons (for example, the Convention on Biological
Diversity) concerning access to genetic resources and traditional knowledge.  Access to genetic
resources and traditional knowledge does concern industrial property in the sense that the genetic
resource or traditional knowledge can give rise to a patentable technological development.  In order to
deal with such cases, the provisions in Decision 486, which are consistent with those in Decision 391
on Access to Genetic Resources, seek to ensure that a patent cannot be obtained for an invention made
on the basis of an unlawfully obtained genetic resource or traditional knowledge.  Patents for
inventions are granted by the State as an incentive or encouragement for lawful activities, namely, the
development of new technologies.  If such activities are conducted on the basis of unlawfully obtained
material or information (illegal access to a genetic resource or traditional knowledge), the State has
the authority not to grant a patent.  This is consistent with the State policy on the protection of geneticresources and traditional knowledge, which is implemented at several different levels.
The provisions in Article 26(h) and (i) of Decision 486 lay down legal requirements related to
the granting of a patent.  Like other requirements for granting patents, these are not dealt with in the
TRIPS Agreement but are left up to the domestic legislation of the Members of the WTO.
6. Please explain the rationale of Article 21  of Decision 486 stipulating that a product
which has already been patented and included in the state of the art may not be the subject of a
new patent solely because the product is put to a use different from that originally contemplated
by the initial patent.  Please also explain how Article 21 of Decision 486 complies withArticle 27.1 of the TRIPS Agreement stipulat ing that patents shall be available for any
inventions in all fields of technology, provided th at they are new, involve an inventive step and
are capable of industrial application.  Is the rationale of Article 21 based on the lack of novelty?
If so, can a patent claim directed to a new "use" (not a "product" as such) be deemed a new
invention?  What other types of patent claims for a new use can be patentable?
Article 21 of Decision 486 states that a product or process already patented and included in
the state of the art may not be the subject of a new patent on the sole ground of having been put to a
use different from that originally contemplated.  This provision makes it clear that an invention (for a
product or process) cannot be patented anew if it does not meet the condition of novelty requiredIP/C/W/252
Page 60
under patent law.  The requirement of novelty cannot be avoided by stating that the product or process
in question is the subject of new use.  If a product or process already known is capable of a use or
application that is different from those already known and this new use meets the requirements of
patentability (industrially applicable, totally new, and involving an inventive step), such use would
constitute a patentable technical solution.
It is understood that such a patent can only claim the new use and not the product itself
because the latter does not meet the criterion of novelty.
Any invention, whether for a product or a process, can be patented if it meets the criteria for
patentability (industrially applicable, totally new, and involving an inventive step).  Processes also
include methods, applications, and uses, inter alia .  In principle, there is no restriction on the type of
process that may be claimed in a patent provided that it meets the aforementioned criteria for
patentability, as well as the other requirements laid down in the relevant legislation.
SWITZERLAND
A. PATENTS
1. Please explain whether, in the field of patents, the relevant Articles of Decision 486 of
the Commission of the Andean Community – Common Industrial Property Regime – are
directly applicable in your legislation or wh ether you have adopted national implementing
legislation.  If through national legislation, please specify the relevant legislation.
Decision 486 – Common Industrial Property Re gime – of the Commission of the Andean
Community applies directly in Venezuelan legislation by virtue of Article 153 of the Constitution of
the Bolivarian Republic of Venezuela.72
Article 373 of the Treaty creating the Court of Justice of the Andean Community provides that
the Commission's decisions shall be directly applicable in Member Countries.
It should be noted that these Community regulations must be applied equally in the whole of
the sub-region, in other words they must have simultaneous and uniform effect in the five Member
Countries of the Agreement.  In Community law, therefore, supranationality takes the form of two
basic principles that must serve as the basis for the legal structure of integration, namely, direct
application74 and pre-eminence.75
Consequently, Community regulations are integrated in the national affirmative legal system
without any intermediate legislative or executive bodies.
                                                     
72 Article 153 . – (…) The Republic may assign to supranational organizations, by means of treaties, the
exercise of the competence necessary for implementing these integration processes.  Among the integration andunion policies with Latin America and the Caribbean, the Republic shall give priority to relations with
Ibero-America, so as to achieve a common policy for all our Latin American countries.  The rules adopted under
integration agreements shall be considered an integral part of the legislation in force and shall be applied
directly and take precedence over domestic legislation. (Emphasis added)
73 Article 3 . – Decisions of (…) the Commission (…) shall be directly applicable in Member Countries
as of the date they are published in the Official Gazette of the Agreement, unless they indicate a later date.
74 Direct application :  means a regulation's capacity to have legal effects in a Member Country
without the need for any complementary regulations in do mestic legislation, in accordance with Article 3 of the
Treaty creating the Court of Justice of the Andean Community.
75 Pre-eminence :  means the possibility that a regulation under Community law prevails over a
provision of domestic law that is contrary to it, irrespective of the hierarchical level of the latter.IP/C/W/252
Page 61
It should also be mentioned that the Agreement itself, its Protocols and complementary
Treaties are also directly applicable because they have the status of constitutional provisions in the
countries which have freely ratified them in accordance with their own National Constitutions.
Consequently, no Member Country can avoid applyi ng the Community rules fully and directly as
rules of its Constitution.
In this connection, it should be noted that a Member Country has to adopt all the laws,
decrees, resolutions or regulations needed for the full application of Community law in its territory.
B. PROTECTION OF UNDISCLOSED INFORMATION
2. Referring to the issue of unfair commercial use of data submitted by an applicant to the
responsible authorities in the procedure for market authorization of a pharmaceutical or of anagricultural chemical product, please explain if and how your law prevents the responsible
authorities or a second applicant from relying on or referring to the original data of the first
applicant for the market authorization procedure of a second product equivalent to the product
of the first party.  Does your legislation provide for time-limits before the expiration of which
such data cannot be relied upon or referred to by the authorities or a second applicant?
Decision 486 provides that, when Member Countries require as a condition for approving the
marketing of pharmaceutical products or agricultural chemical products that use new chemical
entities, the submission of undisclosed test or other data whose formulation required a considerable
effort, they shall protect such data against unfair  commercial use.  Furthermore, Member Countries
shall protect such data against any disclosure, except where necessary to protect the public or unless
steps are taken to ensure that the data are protected against unfair commercial use.
UNITED STATES
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 national treatment and
most-favoured-nation treatment are provided to nationals of other WTO Members.
The principles of national treatment and most-favoured-nation treatment as set out in
Articles 3 and 4 of the Agreement on Trade-Relate d Aspects of Intellectual Property Rights (TRIPS)
have been granted to nationals of countries Members of the World Trade Organization (WTO) since
Venezuela's ratification of the Uruguay Round Agreements.  These principles thus form part of
Venezuela's legislation.
Nevertheless, Venezuela is party to the Cartagena Agreement, which entered into force before
ratification of the Agreement Establishing the Worl d Trade Organization and is thus exempt from the
principle of most-favoured-nation treatment pursuant to Article 4(d) of the TRIPS Agreement as it
made the relevant notification to the TRIPS Council before the entry into force of the aforementioned
Agreement.IP/C/W/252
Page 62
In this connection, the new Decision 486 – Common Industrial Property Regime – includes
among its General Provisions the principles of national treatment76 and most-favoured-national
treatment.77
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the Copyright Law of Venezuela complies with
Article 9 of the TRIPS Agreement requiring that  Members comply with all Articles 1 through
21 of the Berne Convention (1971), except Articl e 6 bis, since Members do not have rights or
obligations relating to the latter Article under the TRIPS Agreement.
Venezuela acceded to the Berne Convention for the Protection of Literary and Artistic Works
on 11 May 1982.  Nevertheless, both the Venezuelan Law on Copyright and Decision 351 – Common
Provisions on Copyright and Neighbouring Rights – include provisions which fully reflect theregulations in the Berne Convention and thus wholly comply with the provision in Article 9 of the
TRIPS Agreement.
With regard to the exception in Article 11 concerning Article 6 bis of the Berne Convention,
the Venezuelan Law departs from this exclusion and includes in the Law on Copyright the scope ofmoral rights laid down in Articles 18 to 20 and Articles 11 and 12 of Decision 351 of the Commission
of the Cartagena Agreement.
3. Please explain how the Copyright Law of Venezuela protects computer programs as
literary works and compilations of data as required by Article 10 of the TRIPS Agreement.
Article 2
78 of the Law on Copyright includes computer programs as intellectual works.
Article 1779 of the Law defines what is meant by a computer program and contains provisions on their
ownership as far as the relationship between the producer of the program and its authors is concerned.
                                                     
76 Article 1 . - Each Member Country shall accord the nationals of other members of the Andean
Community, the World Trade Organization, and the Paris Convention for the Protection of Industrial Property,treatment no less favourable than it accords to its own nationals with re gard to the protection of industrial
property, subject to the exceptions already provided in  Articles 3 and 5 of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) and in Article 2 of the Paris Convention for the Protection ofIndustrial Property.
77 Article 2 . - With regard to the protection of industrial property, any advantage, favour, privilege, or
immunity granted by a Member Country to the nationals of any other Andean Community Member Country
shall be accorded to the na tionals of all other Members of the World Trade Organization or of the Paris
Convention for the Protection of Industrial Property.
78 Article 2 . - The following in particular shall be considered included among the intellectual works
referred to in the foregoing Article:  books, pamphlets and other literary, artistic and scientific writings,including computer programs and the associated technical literature and users' manuals;  lectures, addresses,sermons and other works of the same nature;  dramatic or dramatic-musical works, choreographic and mimed
works the stage movements for which have been set down in writing or otherwise;  musical compositions with
or without words;  cinematographic works and other audiovisual works expressed by any process;  works ofdrawing, painting, architecture, engraving or lithography;  works of applied art that are not mere industrialdesigns;  geographical illustrations and maps;  plans, three-dimensional works and sketches relating togeography, topography, architecture or science;  and, finally, any literary, scientific or artistic productsusceptible of disclosure or publication by any means or process.
79 "Article 17 . - Computer program shall be understood to mean the expression, in whatever mode,
language, notation or code, of a set of instructions the purpose of which is to make a computer perform aspecific task or function, whatever the manner in which it is expressed and the physical medium on which thesubject matter has been fixed.IP/C/W/252
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Article 1080 of the Regulations of the Law on Copyright expressly state that computer
programs are protected on the same terms as literary works.
Article 381 of Decision 351 – Common Provisions on  Copyright and Neighbouring Rights –
defines what is meant by a computer program (software).  Article 482 of the Andean Decision includes
computer programs as subjects of protection.  Likewise, Article 2383 states that computer programs
are subject matter for protection by providing that they are protected on the same terms as literary
works.
With regard to databases, Article 384 of the Law on Copyright specifically states that
databases shall be protected.
Article 2.385 of the Regulations of the Law on Copyright define what is meant by databases.
Article 1286 of the Regulations recognizes protection of databases provided that the selection or
arrangement of the contents constitute an intellectual creation.
Article 4 (ll)87 of Decision 351 – Common Provisions on Copyright and Neighbouring Rights
– includes databases among the subject matter of protection.  Article 2888 of the same Decision gives
databases protection provided that the selection or arrangement of the contents constitute an
intellectual creation.
                                                     
80 Article 10 . - Computer programs shall be protected on the same terms as literary works (…)
(Regulations of the Law on Copyright and Decision 351 of the Commission of the Cartagena Agreement).
81 Article 3 . - Computer program (software):  means the expression in words, codes, plans or any other
form of a set of instructions which, on being incorporated in automated reading apparatus, is capable of causinga computer – an electronic or similar device capable of pr ocessing information – to execute a particular task or
produce a particular result.  The computer program shall likewise include technical documentation and users'manuals.
82 Article 4 . - The protection granted by this Decision shall accrue to all literary, artistic and scientific
works that may be reproduced or disclosed by any known or future means, including the following in particular:
(…) (I)  Computer programs.
83 Article 23 . - Computer programs are protected on the same terms as literary works.  That protection
shall extend not only to operating programs but also to application programs, in the form of either source codesor object codes.
84 Article 3 . - Translations, adaptations, transformations or arrangements of other works, and also
anthologies or compilations of various works and databases shall be considered intellectual works distinct fromthe original work where, owing to the selection or arrangement of their subject matter, they constitute personalcreations.
85 Article 2 . – ( …) (3) Databases:  the compilation of works, facts or data in printed form, in computer
storage units or in any other form.
86 Article 12 . - Databases shall be protected insofar as the selection or arrangement of the contents
constitute an intellectual creation.  The protection granted shall not extend to compiled data or information, butit shall not affect any rights subsisting in the works or material constituting the said database.
87 Article 4 . - The protection granted by this Decision shall accrue to all literary, artistic and scientific
works that may be reproduced or disclosed by any known or future means, including the following in particular:(…) (II) Anthologies or compilations of  assorted works and also databases, which, by the selection and
arrangement of their contents, constitute personal creations.
88 Article 28 . - Databases shall be protected insofar as the selection or arrangement of the contents
constitute an intellectual creation.  The protection granted shall not extend to compiled data or information, butit shall not affect any rights subsisting in the works or material constituting the said database.IP/C/W/252
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4. Article 11 of the TRIPS Agreement requires that rental rights for computer programs
and cinematographic works be available.  Please cite the corresponding provision of the
Copyright Law of Venezuela.
The Law on Copyright gives the author the righ t to authorize or prohibit the communication
to the public of the original or copies of the work, irrespective of its nature, by means of sale or any
other form of transfer of property, rental, or any other form of use, against payment.  This right also
applies to the exploitation of computer programs and cinematographic works.  The right of
distribution is covered by Article 4189 of the Law on Copyright.
Article 13(c)90 of Decision 351 – Common Provisions on Copyright and Neighbouring Rights
– grants the author the right of distribution of his work, which also includes the right to authorize orprohibit inter alia  leasing or rental of the work.
By establishing the right of distribution to the public without any limitations on its scope,
Venezuela's legislation is consistent with the Agreement and in fact provides more comprehensive
protection.
5. Please state the length and terms of protec tion the Copyright Law of Venezuela provides
for a work other than a photographic work or a work of applied art and cite the relevant
provision of the Law.
Article 25
91 of the Law on Copyright states that copyright shall last for the author's lifetime
and shall expire after 60 years as of 1 January of the year following his death, including copyright in
works not disclosed in his lifetime.  The Law also determines that the term for certain works shall be
calculated from the date of first publication or completion, in which case it shall also be 60 years as of
first publication or completion (Articles 26 and 2792 of the Law on Copyright).
                                                     
89 Article 41 . - (…) The right of reproduction shall also cover distribution, which consists in the
making available to the public of the original or copies of the work by means of sale or other transfer ofownership, rental or other form of use for a consideration.
90 Article 13 . - The author, or his successors in title where applicable, shall have the exclusive right to
carry out, authorize, or prohibit:  (…) (c)  The distribution of copies of the work to the public by means of sale,
lending or hiring.
91 Article 25 . - Copyright shall subsist for the lifetime of the author and shall expire after 60 years
counted from January 1 of the year following his death, including the copyright in works not disclosed in hislifetime.
92 Article 26 . - For works of joint authorship, the 60 years referred to in the foregoing Article shall be
counted as from January 1 of the year following that of the death of the last surviving co-author.
Nevertheless, the right of exploitation in an audiovisual work, a broadcast work or a computer program
shall expire after 60 years counted from January 1 of the year following that of the first publication thereof or,failing that, of its completion.  This limitation shall not affect the moral rights of each of the co-authors, or theright laid down in the last paragraph of Article 10 of this Law.
Article 27 . - The copyright in anonymous or pseudonymous works shall expire after 60 years counted
from January 1 of the year following that of the first publication thereof.  The date of first publication shall be
established by any form of proof, including especially the legal deposit of the work.
The said limitation shall not apply in the cases provided for in the sole paragraph of Article 7 or where,
within the specified period, the author or his successors in title reveal the former's identity in accordance withArticle 8 of this Law.
With regard to anonymous or pseudonymous works published in instalments, the period shall begin to
run on January 1 of the year following that of the publication of each instalment.  Nevertheless, if the whole of
the work is published within the 20 years following the year of publication of the first instalment, the copyrightin the whole work shall expire after 60 years counted from January 1 of the year following that of thepublication of the last such instalment.IP/C/W/252
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With respect to photographs, Article 3893 of the Law on Copyright provides that the rights of
the photographer and his successors in title shall expire after 60 years following the disclosure of the
work.  Nevertheless, they shall expire 60 years after having been made if they have not been disclosed
during that period.  Such periods shall be counted from 1 January of the year following that of
disclosure or making, as the case may be.
The term of protection for works of applied art would be governed by the general rule laid
down in Article 2594 of the Law on Copyright.
6. Please describe the protection the Copyright Law of Venezuela provides for performers
and the term of the protection.
Pursuant to Article 9295 of the Law on Copyright, performers96 have the exclusive right to
authorize or prohibit the fixing, reproduction or communication to the public, by whatever means or
process, of their performances.
The term of protection of performers' rights is 60 years as of 1 January of the year following
the performance, in the case of live performances, or following publication where the performance is
recorded on a sound or audiovisual medium, in accordance with Article 9497 of the Law on Copyright.
Decision 351 – Common Provisions on Copyright and Neighbouring Rights – gives
performers similar rights pursuant to Articles 3498, 3599 and 36100 of the aforementioned Decision.
                                                     
93 Article 38 . - Photographs and also reproductions and prints obtained by a comparable process shall
be protected in the same way as the intellectual works mentioned in Article 1 of this Law.  The rights of the
photographer and his successors in title shall expire after 60 years following the disclosure of the work.
Nevertheless, they shall expire 60 years after having been made if they have not been disclosed during thatperiod.  Such periods shall be counted from January 1 of the year following that of disclosure or making, as thecase may be.
94 Article 25 . - Op.cit .
95 Article 92 . - Performers or their successors in title shall have the exclusive right to authorize or
prohibit the fixing, reproduction or communication to th e public, by whatever means or process, of their
performances.  They may not however object to communication when it is effected on the basis of a recordingmade with their prior consent and published for commercial purposes.
96 Article 2 . – (…)  (2) Performer means the person who performs, sings, reads, recites, interprets or in
any way executes a work." (Regulations of the Law on Copyright and Decision 351 of the Commission of the
Cartagena Agreement).
97 Article 94 . - The term of protection granted to performers shall be 60 years, counted from
January 1 of the year following the performance in the case of live performances, or following publicationwhere the performance is recorded on a sound or audiovisual medium.
98 Article 34 . - Performers shall have the right to authorize or prohibit the communication to the public
of their live performances in any form and the fixing and reproduction of their performances.
Nevertheless, performers may not object to the communication to the public of their performances
where they in themselves are broadcast performances or are made from a previously authorized fixation.
99 Article 35 . - In addition to the rights recognized in the foregoing Article, performers shall have the
right to:
(a) Demand that their names be mentioned at or associated with every performance that takes place;
(b) object to any distortion or mutilation of their performances or other act prejudicial thereto that
might adversely affect their prestige or reputation.
100 Article 36 . - The term of protection of the economic rights of performers may not be less than
50 years counted from January 1 of the year following that in which the performance took place or in which thefixation, if any, was made.IP/C/W/252
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7. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to
enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.
Article 14.2 requires that producers of phonograms are to have the right to authorize or
prohibit the commercial rental to the public of originals or copies of their phonograms.  Please
describe how the Copyright Law of Venezuela implements these obligations and indicate theterm of protection.
Article 95
101 of the Law on Copyright reproduces textually Article 14.2 of the TRIPS
Agreement, stating that phonogram producers have the exclusive right to authorize or prohibit the
direct or indirect reproduction of their phonograms, as well as the import, distribution to the public,
rental or other use, in whatever form and by whatever means, of copies of their phonograms.
Consequently, the exception allowed by Article 14.4 of the TRIPS Agreement does not apply inVenezuela as Decision 351 – Common Provisions on Copyright and Neighbouring Rights – and the
Law on Copyright recognize the producer's exclusive right to authorize or prohibit rental, whether or
not for commercial purposes.
With regard to the term of protection, Article 100
102 of the Law provides that it shall be
60 years as of 1 January of the year following the first publication of the phonogram.
In this connection, Article 37 of Decision 351 – Common Provisions on Copyright and
Neighbouring Rights – gives producers of phonograms the right to authorize or prohibit the direct or
indirect reproduction of their phonograms;  to prevent the importation of copies of phonograms madewithout the authorization of the owner of the rights;  to authorize or prohibit public distribution of the
original and any copy thereof by sale, rental or any other means of distribution to the public.  Lastly,
Article 38 of Decision 351 – Common Provisions on C opyright and Neighbouring Rights – covers the
term of protection to be given, which may not be less than 50 years as of the date following the
fixation.
C. 
TRADEMARKS
8. Please describe the subject matter than can comprise a trademark under the
Trademark Law of Venezuela.
Article 134103 of Decision 486 – Common Industrial Property Regime – lays down the criteria
for signs for the purpose of their registration as a trademark and provides an indicative list whichgives examples of several signs that may be registered.
                                                     
101  Article 95 . - Producers of phonograms shall have the exclusive right to authorize or prohibit the
reproduction of their phonograms, and also the importation, distribution to the public, rental or other use, in
whatever form and by whatever means, of copies of their phonograms.
102  Article 100 . - The protection granted to the producer of phonograms shall be for 60 years counted
from January 1 of the year following the first publication of the phonogram.
103 Article 134 . -  For purposes of this system, any sign that is capable of distinguishing goods and
services on the market shall constitute a trademark.  Signs that are capable of graphic representation shall be
eligible for registration as trademarks.  The nature of the goods or services to which a trademark is to be applied
shall in no case form an obstacle to the registration of the trademark.
The following signs, among others, shall be capable of constituting a trademark:(a) Words or a combination of words;(b) pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels, and emblems;(c) sounds and smells;
(d) letters and numbers;
(e) a colour demarcated to give it a speci fic shape, or a combination of colours;
(f) the shape of a product, its packaging or wrapping;(g) any combination of the signs or means indicated in the items above.IP/C/W/252
Page 67
9. Please describe the procedure that must be followed to register a trademark in
Venezuela, citing the relevant provisions of the la w, and describe the rights that the owner of a
registered mark can exercise.
The procedure to be followed when applying for registration of a trademark in Venezuela is
laid down in the provisions contained in Chapter II, Articles 138 to 151104  of Decision 486 –
Common Industrial Property Regime.
                                                     
104 Article 138 . - The application for registration of a trademark shall be filed with the competent
national office.  It shall cover a single category of goods or services and shall meet the following requirements:
(a) The petition;(b) a reproduction of the trademark where it is a de nomination containing graphic elements, shape, or
colour, or a figurative, mixed or three-dimensiona l trademark with or without the use of colour;
(c) such powers of attorney as may be needed;
(d) proof of payment of the prescribed fees;(e) the authorizations required for the cases stipulated in Articles 135 and 136, where applicable;  and(f) where applicable, the certificate of registration in the country of origin issued by the granting
authority and, if so stipulated in domestic legislatio n, the receipt for payment of the prescribed fee, should
applicants wish to avail themselves of the right provided for in Article 6 quinquies of the Paris Convention.
Article 139 . - The petition for registration of the trademark application shall be on a form and shall
include the following information:
(a) The request for registration of a trademark;(b) the name and address of the applicant;(c) the nationality or domicile of the applicant and, should the applicant be a legal entity, the place of
incorporation;
(d) the name and address of the applicant's legal representative, if pertinent;(e) a statement of the trademark to be registered, where such trademark is denominative only, without
graphics, shape or colour;
(f) a list of the specific goods or services for which the trademark registration application is being filed;(g) a statement of the category to which th e products or services correspond;  and,
(h) the signature of the applicant or the applicant's legal representative.
Article 140 . - The date of its receipt by the competent national office shall be considered the
application's filing date, provided that the application contained at least the following elements:
(a) A statement that the applicant is filing for registration of a trademark;(b) data that permit identification of the applicant or person filing the application or enable the
competent national office to communicate with that person;
(c) the trademark for which registration is being applied for, or a reproduction of the trademark in the
case of trademarks that are denominations with special graphic elements, shapes or colours, or of figurative,
mixed or three-dimensional trademarks, whether in colour or not;
(d) a list of the specific goods or services in respect of which the trademark protection is being applied
for;  and,
(e) proof of payment of the prescribed fees.
Failure to provide any of the requirements listed in this Article shall cause the competent national
office to reject the application for processing and no filing date shall be assigned to it.
Article 141 . - An applicant may claim as the filing date of  an application for registration of a trademark
the date that the trademark was used to distinguish goods or services at an officially recognized exhibition held
in any country when applied for within six months following the date on which the said goods or services were
first exhibited under that trademark.  In that case, the a pplication may be considered filed as from the date of the
exhibition.
The acts referred to in this Article shall be certified by the competent authority responsible for the
exhibition, which shall state the date on which the trademark was first used in connection with the goods orservices in question.
Article 142 . - An applicant wishing to invoke the right provided for in Article 6 quinquies of the Paris
Convention for the Protection of Industrial Property shal l submit the certificate of trademark registration in the
country of origin within a period of three months after the application filing date.
Article 143 . - Applicants for registration of a trademark may ask to modify their applications at any
time during their processing or to correct any material mistakes.IP/C/W/252
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The competent national office may, at any stage of  the processing, suggest that applicants make
changes in their applications.  The said proposal of  amendment shall be processed in accordance with the
provisions of Article 144. (Emphasis added)
In no case may the application be amended by making important changes in the trademark or adding to
the products or services initially specified.
Fees may be prescribed for the amendment application, if domestic legislation so provides.
Article 144.  - The competent national office shall, within 15 days following filing, conduct an
examination to determine whether the application complies with the conditions of form specified in Articles 135and 136.
Should the examination reveal that the application does not comply with the conditions of form
specified in the preceding paragraph, the competent natio nal office shall request the applicant to remedy those
defects within a period of 60 days following notification.
If the applicant fails to fulfil the requirements by the end of the stipulated term, the application shall be
considered abandoned and shall lose its position within the order of priority.
Article 145 . - If the application meets the conditions of form laid down in this Chapter, the competent
national office shall order its publication.
Article 146 . - Within 30 days following such publication, any person having a legitimate interest may,
one time only, file a valid objection that could result in invalidation of the trademark registration.
The competent national office may, at the request of a party and once only, grant an additional 30-day
period in which to provide valid reasons for opposing registration of the trademark.
Reckless objections may be sanctioned if provided for by domestic legislation.No objections based on such trademarks as may have existed at the same time as that being applied for
may be lodged against the application within six months following expiry of the grace period referred to in
Article 153.
Article 147 . - For the purposes of the previous Article, it shall be understood that both the owner of an
identical or similar trademark for goods or services in respect of which use of the other trademark would belikely to lead to confusion, and the person that first applied for registration of the trademark in any MemberCountry, have a legitimate interest in lodging objections in the other Member Countries.  In either case, suchopponents shall demonstrate real interest in operating in the market of the Member Country where they are
filing an objection by applying for registration of the trademark at the moment they express their opposition.
If an objection is lodged on the basis of a tradem ark previously registered in any Member Country
under the provisions of this Article, the competent national office shall have the authority to deny registry of thesecond trademark.
The filing of an objection based on an application for trademark registration previously filed in any
Member Country under the provisions of this Article shall result in the suspension of the registration of the
second trademark until such time as the registration of the first has been conferred.  In that event, the
stipulations of the previous paragraph shall be applicable.
Article 148 . - The competent national office shall, in the event of any opposition having been
presented, request applicants to submit such arguments and evidence as they deem fit within 30 days followingthat notification.
The competent national office shall, at the request of one of the parties, grant for one time only a period
of 30 additional days in which to provide valid reasons for the refutation.
Article 149 . - The competent national office shall no t accept for considera tion objections that:
(a) Are lodged without an indication being given of the essential data identifying the opponent and the
application against which the objection is being filed;
(b) are lodged after the deadlines have lapsed;
(c) have not paid the prescribed processing fees.
Article 150 . - At the expiration of the period stipulated in Article 148, or if no objections have been
filed, the competent national office sh all proceed to conduct the examina tion of eligibility for registration.
Should any opposition have been presented, the competent national office shall rule on those objections and onthe grant or refusal of registration of the trademark.
Article 151 . - Member Countries shall use the International Classification of Goods and Services for
the Purposes of the Registration of Marks established by the Nice Agreement of June 15, 1957 and its effective
amendments to classify the goods and services to which the trademarks shall be applied.
The categories of the International Classification named in the previous paragraph shall not be used to
determine whether the expressly listed products or services are similar or different.IP/C/W/252
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Regarding the legal provisions under which owners can exercise their rights, Articles 155 and
156105 of Decision 486 set out the exclusive rights conferred by registration.  The text of the Decision
provides for a series of actions to be taken to claim the aforementioned rights, including the
following:  Action for Cancellation, Action for Claims, Action for Infringement of Rights, Provisional
Measures, Measures at the Border, and Unfair Trade Practices.
10. Please provide the length and terms of protection that the Trademark Law of Venezuela
provides for a trademark.
Article 152106 of Decision 486 – Common Industrial Property Regime – establishes an initial
period of protection of ten (10) years for trademarks, calculated from the date of their grant.
Nevertheless, their term may be indefinite because they can be renewed indefinitely for
further periods of ten (10) years provided that the requirements on time-limits and payment of the fees
laid down in Article 153 are met, so no proof of use is required for renewal of the right107.
                                                     
105 Article 155 .- The owner of a registered trademark shall have the exclusive right to prevent all third
parties not having the owner's consent from engaging in the following acts:
(a) Using or affixing the trademark or a similar or id entical distinguishing sign to products in respect of
which the trademark is registered; to products connected with the services fo r which the trademark is registered;
or to the packages, wrapping, packing, or outfitting of those products;
(b) removing or changing the trademark, once it has b een placed on or affixed to the products in respect
of which the trademark is registered, for commercial pu rposes; to products connected with the services for
which it is registered; or to the packages, wrapping, packing, or outfitting of those products;
(c) manufacturing labels, packages, wrapping, packing, or such other materials as may reproduce or
contain the trademark, and selling or storing such materials;
(d) using, in the course of trade, identical or similar signs to the trademark for goods or services, where
such use would result in a likelihood of confusion or mistaken association with the registration owner.  In thecase of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed;
(e) using in the course of trade identical or similar signs to a well-known trademark with respect to any
goods or services, where such use, by weakening the distinctive force or the value of that trademark for
commercial or advertising purposes or by taking unfair  advantage of the prestige of the trademark or of its
owner, could unjustly damage the registration owner's economic or commercial interests;
(f) making public use of identical or similar signs to a well-known trademark, even for purposes that
are non-commercial, where such use could weaken the distinctive force or value of that trademark forcommercial or advertising purposes or take unfair advantage of its prestige.
Article 156.  - For the purposes of the provisions stipulated under subparagraphs (e) and (f) of the
previous Article, the following acts, among others, shall constitute use of a trademark by a third party in thecourse of trade:
(a) Introducing into trade, selling, offering for sale, or distributing products or services that bear the
said trademark;
(b) importing, exporting, storing, or transporting products that bear the said trademark;  or,
(c) using the said trademark, independently of the means of communication employed and without
prejudice to such standards as may be applicable to advertising, in advertising, publications, commercial
documents, or written or oral communications.
106 Article 152 . - Registration of a trademark shall be for a term of ten years counted from the grant
date and may be renewed for successive ten-year periods.
107 Article 153 . - The owner of a registered trademark or any party with a legitimate interest shall apply
to the competent national office for its renewal within six months before expiry of its registration.Notwithstanding the foregoing stipulation, both the owner of the registered trademark and any party having alegitimate interest shall be given a grace period of six months following the date of expiration of the registrationin which to apply for renewal.  Such persons shall accord ingly attach receipts for payment of the prescribed fees
and shall, at the same time, pay any such surcharge as the domestic legislation of the Member Countries may
prescribe.  The registered trademark sha ll retain its full validity over that period.
Renewal shall not require proof of trademark use and shall be granted automatically on the same terms
as the original registration.  The owner of the registered trademark may, however, reduce or limit the goods orservices listed in the original registration.IP/C/W/252
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11. Please explain how the Venezuelan law provid es for the protection of well-known marks
for dissimilar products, as required by Article 16.3 of the TRIPS Agreement.  Please cite the
relevant provisions of the laws and regulations.
As required by Article 16.3 of the TRIPS Agreement, Article 226108 prohibits the
unauthorized use of well-known signs for products or services that are dissimilar.
12. Please explain whether Venezuelan law permits the registration of generic terms, which
are in the English or Spanish language, citing any relevant laws or regulations.
In Title VI, Chapter I, of Decision 486 – Common Industrial Property Regime - which sets
out the registration requirements for trademarks, Article 135(f)109 and (g)110 prohibit the use of generic
signs.
Nevertheless, the last paragraph of Article 135111 allows the possibility of registering generic
signs when, for the purposes of use, the sign has acquired distinctiveness in respect of the products orservices to which it applies.
This type of distinctiveness that has been acquired or has come about with use, called
"secondary meaning" in trademark theory, means that a sign has acquired new significance in the
mind of consumers for the identification of a product.
                                                     
108 Article 226 . - Use of all or a part of a well-known distinctive sign or of a reproduction, imitation,
translation or transliteration thereof that may create co nfusion in respect of identical or similar businesses,
activities, products or services to those to which it is applied shall constitute unauthorized use of that distinctive
sign.
Also constituting unauthorized use of a well-known distinctive sign is the use of all or of an  essential
part of that sign, or the reproduction, imitation, transl ation, or transliteration thereof, even if in respect of
businesses, activities, goods, or services other than those to which that well-known distinctive sign is applied or
its use for non-commercial purposes, where such use could be liable to produce any of the following effects:
(a) The risk of confusion or of association with the owner of the sign, or with the businesses, activities,
goods, or services belonging to that owner;
(b) unjust economic or commercial injury to the owner of the sign by reason of the weakening of the
distinctive force or commercial or advertising value of that sign;  or,
(c) unfair exploitation of the sign's prestige or fame.
Use of a distinctive sign may be verified by any means of communication, including electronic media.
(Emphasis added)
109 Article 135. - (…) (f) consist exclusively of a sign or statement that is the common or technical
name of the product or service concerned;
110 Article 135. - (…)  (g) consist solely of or have become a sign or statement which, in everyday
language or normal use within the country, is the common or usual designation for the goods or services in
question.
111 Article 135 , last paragraph. - Notwithstanding the provisions stipulated under items (b), (e), (f), (g)
and (h), a sign may be registered as a trademark where its continued use in a Member Country by the applicantor assignor has endowed it with a distinctiveness in respect of the products or services to which it is applied.IP/C/W/252
Page 71
D. GEOGRAPHICAL INDICATIONS
13. Please describe in detail how the laws of Venezuela provide for the recognition and
protection of geographical indications required by Article 22.2 of the TRIPS Agreement, citing
the relevant provisions of law or regulation, and provide examples of geographical indications
so protected.
Article 214112 of Decision 486 provides for the recognition and protection required by
Article 22.2 of the TRIPS Agreement.
This provision is consistent with Article 22.2(a) of the TRIPS Agreement and the legal
measures available to interested parties to prevent such action are to be found in Chapter XV of
Decision 486, with deals with action for infringe ment of rights, provisional measures, border
measures, and criminal procedures.
As a complement to Article 22.2(b) of the TRIPS Agreement, Articles 258113 and 259114 of
Decision 486 punish any industrial property-linked unfair competition in the course of trade that is
contrary to honest commercial practices and usage, within the meaning of Article 10 bis of the Paris
Convention (1967).
Pursuant to Article 222115 of Decision 486, an indication of origin that is false or misleading
in respect of the origin of the product inter alia  may not be used.  If such use does occur, any
interested person may bring the administrative and civil action allowed by the law.  It should be notedthat the concept of indication of origin defined in Article 221
116 of Decision 486 is broader than the
concept of geographical indication contained in Article 22.1 of the TRIPS Agreement so the former
therefore encompasses the latter.
                                                     
112 Article 214 .- (…) Use by unauthorized persons of appellations of origin, including cases where
such use is accompanied by indications of gender, type, imitation and other similar indications, in such manneras is likely to cause confusion among consumers, shall be  considered an infringement of that industrial property
right and, as such, sanctionable by punishment.
113 Article 258 . - Any act carried out in respect of industri al property in the course of trade that is
contrary to honest commercial prac tices shall be considered unfair.
114 Article 259 . - The following, among others, constitute industrial property-linked unfair trade
practices:
(a) Any act which, by any means whatsoever, is capable of causing confusion with respect to the
business, goods, or industrial or commercial activity of a competitor;
(b) false affirmations made in the course of tr ade that are capable of discrediting a competitor's
business, goods, or industrial or commercial activity;  or,
(c) indications or affirmations whose use in the cour se of trade may mislead the public with regard to
the nature, method of manufacture, characteristics, usefulness, or quantity of the goods in question.
115 Article 222 . - An indication of origin may not be used in the course of trade for a good or service
where that indication is false or misleading or where its us e is likely to cause confusion in the public as to the
origin, source, quality, or any other characteristic of the good or service in question.
116 Article 221 . - An indication of origin shall be understood to be a name, expression, image, or sign
that indicates or evokes a particular country, region, locality, or place.IP/C/W/252
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14. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Agreement is implemented, citing the relevant
provisions of law or regulation, and provide examples of geographical indications for such
products.
The protection required under Article 23 of the TRIPS Agreement for wines and spirits is
provided in Article 215117 of Decision 486.
E. INDUSTRIAL DESIGNS
15. Please describe the procedure that must be followed to obtain protection for industrial
designs, citing the provisions of the law of Venezuela, and describe the nature of the protection
provided.
The procedure to be followed for registering an industrial design in Venezuela is laid down in
Articles 117 to 127118 of Decision 486 – Common Industrial Property Regime.
                                                     
117 Article 215 . - Member Countries shall prevent use of an appellation of origin identifying wines or
spirits for goods of this kind not originating in the pl ace indicated by the appellation of origin in question, even
where the true origin of the goods is indicated or the geographical indication is used in translation oraccompanied by expressions such as "kind", "type", "style", "imitation," or the like.
Member Countries may not prevent continued and similar use of a particular appellation of origin of
another country identifying wines and spirits in connection with goods or services by any of their nationals who
have used that appellation of origin in a continuous manner with regard to the same or related goods or services
within the territory of the respective Member Country for at least 10 years preceding April 15, 1994 or, in goodfaith, preceding that date.
118 Article 117 .- An application to register an industrial design shall be filed with the competent
national office and shall contain the following:
(a) The petition;
(b) a graphic or photographic representation of the industrial design.  This representation, in the case of
two-dimensional designs incorporated onto a flat ma terial, may be replaced by a sample of the product
incorporating the design;
(c) such powers of attorney as may be needed;(d) proof of payment of the prescribed fees;(e) a copy of the document recording the ceding or tran sfer to the applicant of the right to register the
industrial design, if applicable;  and,
(f) where applicable, copies of any applications for registration or other protection of an industrial
design filed or obtained abroad by the applicant or assignee in respect of the same design for which aregistration application or claim is being filed in the respective Member Country.
Article 118 .- The petition for the industrial design registration application shall be on a form and shall
include the following information:
(a) The request for registration of the industrial design;(b) the name and address of the applicant;(c) the nationality and domicile of the applicant and, if the applicant is a legal entity, the place of
incorporation;
(d) an indication of the kind or type of product to which the design shall be applied and the category
and sub-category of such products;
(e) the name and address of the designer, if other than the applicant;(f) the date, number, and identification of the office where any applications for registration or other
protection of an industrial design were filed or obtained abroad by the applicant or assignee in respect of thesame design claimed in the application being filed in the respective Member Country, if applicable;
(g) the name and address of the applicant's legal representative, if pertinent;  and,
(h) the signature of the applicant or the applicant's legal representative.
Article 119 .- The date of its receipt by the competent nati onal office shall be cons idered the application
filing date, provided that the application contained at least the following elements:
(a) A statement that the applicant is filing for the registration of an industrial design;IP/C/W/252
Page 73
The scope and nature of the rights conferred by registration of an industrial design and the
limitations on these rights are specified in Articles 128 to 133119 of Decision 486.
                                                                                                                                                                    
(b) data identifying the applicant or person filing the application that will enable the competent national
office to communicate with that person;
(c) a graphic or photographic representation of the industrial design.  This representation, in the case of
two-dimensional designs incorporated onto a flat ma terial, may be replaced by a sample of the product
incorporating the design;  and,
(d) a proof of payment of the prescribed fees.Failure to comply with any of the requirements sp ecified in this Article shall cause the competent
national office to reject the application for processing and no filing date shall be assigned to it.
Article 120 .- The competent national office shall examine the application within 15 days following the
filing to ascertain whether it meets the terms and conditions of form specified in Articles 117 and 118.
If the examination as to form reveals that the application does not fulfil the requirements referred to in
the preceding paragraph, the competent national office sha ll notify the applicant to complete those requirements
within a period of thirty days following the date of notification.  The said period may be extended once, upon
request, for an equal length of time without loss of priority.
If, on expiration of the specified period, the applicant has failed to comply with the required conditions,
the application shall be considered abandoned and shall lose its order of priority.  Without prejudice to this, thecompetent national office shall maintain the information contained in the application confidential.
Article 121 . - If the application fulfils the stipulated requirements, the competent national office shall
order its publication.
Article 122 . - Within a period of 30 days following the date of publication, any person with a
legitimate interest may, one time only, present valid reasons for contesting the registration of the industrialdesign.
The competent national office shall grant such persons once, upon request, an additional period of
thirty days in which to present valid reasons for their opposition.
Reckless objections may be sanctioned if so stipulated by domestic legislation.
Article 123 . - If any objections have been lodged, the competent national office shall request that the
applicants present their arguments or submit documents as they see fit within 30 days following thatnotification.
The competent national office shall, upon request, grant an additional period of 30 days in which to
respond to the objections that have been raised.
Article 124 . - Upon expiration of the period stipulated in  the preceding Article or should no objections
have been raised, the competent national office shall conduct an examination to ascertain whether the subject
matter of the application complies with the requirements established in Articles 113 and 116.
The competent national office shall not make an examination ex officio of the novelty of the subject
matter of the application if no valid reasons are presented based upon the existence of a prior right or the noveltyof the industrial design.
Without prejudice to the foregoing, if the lack of novelty of an industrial design is quite obvious, the
competent national office shall reject the application ex officio.
Article 125 . - An application for registration of an industrial design may not be consulted by third
parties until publication has been ordered at the conclusion of the stipulated period, except where writtenconsent has been obtained from the applicant.
Any parties who prove that the applicant for registration of an industrial design is attempting to use
against them rights derived from the application may consult the file before its publication without the consent
of the applicant.
Article 126 . - The competent national office shall grant the registration of the industrial design and
issue the corresponding certificate to the right holder upon  fulfilment of the stipulated requirements.  Failure to
comply with those requirements shall cause the co mpetent national office to reject the application.
Article 127 . - Member Countries shall use the International Classification for Industrial Designs
established by the Locarno Agreement of 8 October 1968 and its effective amendments to organize and classify
industrial designs.
119 Article 128 . -  Registration of an industrial design shall be for a term of ten years, counted from the
filing of the application in the Member Country.IP/C/W/252
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16. Please describe the procedure that must be followed to obtain protection for textile
designs and cite the relevant provisions of law or regulation.
The procedure to be followed to obtain protection for textile designs is the same as that for
industrial designs inasmuch as textile designs are covered by Article 113120, which defines industrial
designs and is consistent with the TRIPS Agreement because it does not oblige Member Countries to
institute a special procedure.
                                                                                                                                                                    
Article 129 . - Registration of an industrial design shall confer on the owner thereof the right to prevent
third parties from making use of the design concerned.  By virtue of that prohibition, the owner of theregistration shall be entitled to proceed against any third party who, without the consent of the right holder,manufactures, imports, offers for sale, markets, or ma kes commercial use of pr oducts that incorporate or
reproduce the industrial design.
Registration shall likewise confer the right to pro ceed against any person who produces or markets an
article whose design only presents minor differences with respect to the protected design or whose appearance is
the same as the protected design.
Article 130 . - The protection accorded to an industrial design shall not apply to elements or
characteristics of the design dictated essentially by technical or functional considerations or that fail to
incorporate any arbitrary co ntribution by the designer.
The protection accorded to an industrial design shall not apply to the exact reproduction of such
elements or characteristics as may be  needed to allow the product incor porating the design to be mechanically
assembled or joined to another product of which it is a part.  This restriction shall not apply where the designassumes a particular form to allow for the assembly or multiple connections of the products or the connection ofthose products within a modular system.
Article 131 . - Registration of an industrial design shall not confer the right to proceed against a third
party who makes commercial use of a product incorporating or reproducing the design once it has been
introduced into the commerce of any country by the righ t holders or another person authorized by or with
economic ties to those right holders.
For the purposes of the preceding paragraph, two pe rsons shall be considered to have economic ties
when one of the persons is able to exercise a decisive in fluence over the other, either directly or indirectly, with
respect to the exploitation of the industrial design, or when a third party is able to exert that influence over both
persons.
Article 132 . - The competent national authority may, either ex officio or at the request of a party and at
any time, declare the registration of an industrial design null and void, when:
(a) The subject matter of the registration is not an industrial design according to the requirements
established in Article 113;
(b) the industrial design fails to comply with the requirements for protection set forth in Article 115;
(c) the registration was granted for subject matter that is excluded from protection by the stipulations of
Article 116;  or,
(d) there are grounds for declaring the registratio n null and void according to domestic legislation
covering administrative acts.
Article 133 . - The provisions stipulated in Articles 17, 34, 53 paragraphs (a), (b), (c) and (d), 56, 57,
70, 74, 76, 77, 78, and 79 shall be applied in respect of industrial designs.
120 Article 113 . - The particular appearance of a product that results from any arrangement of lines or
combination of colours, or any two-dimensional or three-dimensional outward shape, line, outline, form, texture,or material, without the intended use or purpose of the said product being thereby changed, shall be considered
an industrial design.IP/C/W/252
Page 75
F. PATENTS
17. Please describe in detail the way in which the patent law of Venezuela implements
Article 27 of the TRIPS Agreement, indicating any exceptions provided for, and including
details regarding the protection for micro-organisms and non-biological and microbiological
processes and plant varieties, please cite the relevant provisions of the law.
Article 14121 of Decision 486 – Common Industrial Property Regime – reproduces the terms
of Article 27.1 of the TRIPS Agreement.
With regard to the exceptions in Article 27.2 and 27.3 of the TRIPS Agreement, Article 20122
of Decision 486 specifies what is not patentable.
18. Please describe in detail the rights provided patent holders under the patent law of
Venezuela and cite the relevant provisions of law.
The rights conferred by patents in Venezuela are set out in Title II, Chapter V, Articles 50 to
58123, of Decision 486 – Common Industrial Property Regime.
                                                     
121 Article 14 . - The Member Countries shall grant patents for inventions, whether goods or processes,
in all areas of technology, provided that they are new, involve an inventive step, and are industrially applicable.
122 Article 20 . - The following shall not be patentable:
(a) Inventions, the prevention of whose commercial exploitation within the territory of the respective
Member Country is necessary to protect public order or morality, provided that such exclusion is not merelybecause the exploitation is prohibited or regulat ed by a legal or administrative provision;
(b) inventions, the prevention of whose commercial exploitation within the respective Member Country
is necessary to protect human or animal life or hea lth or to avoid serious prejudice to plant life and the
environment, provided that such exclusion is not merely because the exploitation is prohibited or regulated by a
legal or administrative provision;
(c) plants, animals, and essentially biological processes for the production of plants or animals other
than non-biological or microbiological processes;
(d) diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.
123 Article 50 . - Patents shall have a term of twenty years counted from the filing date of the
corresponding application in the Member Country.
Article 51 . - The scope of the protection conferred by a patent shall be determined by the wording of
the claims. The description and drawings, or the deposit of biological material where applicable, shall be usedfor the interpretation of the claims.
Article 52 . - A patent shall confer on its owner the right to prevent third parties not having the owner's
consent from:
(a) Where the subject matter of a patent is a product:
(i) making the product;
(ii) offering for sale, selling, or using the product; or importing it for these purposes; and,
(b) where the subject matter of a patent is a process:
(i) using the process;(ii) carrying out any of the acts that are specifi ed under paragraph (a) above with respect to a
product obtained directly by that process.
Article 53 . - A patent owner may not exercise the right referred to in the previous Article with respect
to the following acts:
(a) Acts carried out in a private circle and for non-commercial purposes;(b) acts carried out exclusively to experiment with the subject matter of the patented invention;(c) acts carried out exclusively for the purposes of teaching or scientific or academic research;
(d) the acts referred to in Article 5 ter of the Paris Convention for the Protection of Industrial Property;
(e) where the patent protects biolog ical material that is capable of  being reproduced, except for plants,
using that material as a basis for obtaining a viable ne w biological material, except where the patented material
must be used repeatedly to obtain the new material.IP/C/W/252
Page 76
19. Please describe in detail any provisions in the laws of Venezuela permitting
unauthorized use of a patent, citing the relevant provisions of law, and describe in detail the
conditions under which such can occur.
Articles 61 to 69124 of Chapter VII of Decision 486 – Common Industrial Property Regime –
cover the compulsory licensing regime and specify when and under what terms the Venezuelan State
                                                                                                                                                                    
Article 54 . - A patent shall not confer on its owner the right to proceed against a third party making
commercial use of a product protected by a patent once that product has been introduced into trade in any
country by the owner or another person authorized by the or with economic ties to the right holder.
For the purposes of the preceding paragraph, two pe rsons shall be considered to have economic ties
when one of the persons is able to exercise a decisive in fluence on the other, either directly or indirectly, with
respect to the exploitation of the patent or when a third party is able to exert that influence over both persons.
Where the patent protects biological  material that is capable of being reproduced, the patent coverage
shall not extend to the biological material that is obtained by means of the reproduction, multiplication, orpropagation of the material that was introduced into trade as described in the first paragraph, provided that it
was necessary to reproduce, multiply, or propagate the material in order to fulfil the purposes for which it was
introduced into commerce and that the material so obtained is not used for multiplication or propagationpurposes.
Article 55 . - Without prejudice to the provisions stipulated in this Decision with respect to patent
nullity, the rights conferred by a patent may not be asserted against a third party that, in good faith and beforethe priority date or the filing date of the application on which the patent was granted, was already using or
exploiting the invention, or had already made effective and serious preparations for such use or exploitation.
In such cases, the said third party shall have the right to start or continue using or exploiting the
invention, but that right may only be assigned or transferred together with the business or company in which thatuse or exploitation is taking place.
Article 56 . - A patent grant or a patent application be ing processed may be assigned or transferred by
succession.
Any patent assignment or transfer shall be regist ered with the competent national office.  Failure to
register shall render the assignment or tran sfer invalid with respect to third parties.
Patent assignments or transfers, in order be registered, shall be in writing.Any interested party may file for registration of a patent assignment or transfer.Article 57 . - The owner of a patent or of a patent application that is being processed may license one or
more third parties to exploit the invention it covers.
Any licence that is granted for the exploitation of a patent shall be registered with the competent
national office.  Failure to register shall render  the licence invalid with respect to third parties.
Licences, in order to be registered, shall be in writing.Any interested party may file for registration of a licence.The registered patent owner shall inform the competent national office about any change in the name or
address of the right holder during the term of the licence contract.  Otherwise, any notification that may be made
on the basis of the data entered in the registry shall be considered valid.
Article 58 . - The competent national authority shall not register any licence agreements for patent
exploitation that do not conform to the provisions of the Common Regime for the Treatment of Foreign Capitaland for Trademarks, Patents, Licences, and Royalties, or that do not conform to Andean Community ordomestic antitrust provisions.
124 Article 59 . – Owners of patents shall be under the obligation to exploit their patented inventions in
any Member Country, either directly or through a person they authorize to do so.
Article 60 . – For the purposes of this Chapter, exploitation shall be understood to mean the industrial
manufacture of the patented product or the full use of the patented process, including the distribution and
marketing of the results thereof on a scale sufficient to satisfy the demands of the market.  Exploitation shallalso be understood to mean the importation of the patented product, including its distribution and marketing,
where this is done on a scale sufficient to satisfy the demands of the market.  Where the patent refers to a
process that does not result in a product, the requirements for marketing and distribution shall not be enforced.
Chapter VII
On the Regime of Compulsory LicensingIP/C/W/252
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Article 61 . - At the expiry of a period of three years following a patent grant or of four years following
the application for a patent, whichever is longer, the competent national office may grant a compulsory licencemainly for the industrial manufacture of the product covered by the patent, or for full use of the patentedprocess, at the request of any interested party, but only if, at the time of the request, the patent had not beenexploited in the manner specified in Articles 59 and 60, in the Member Country in which the licence is sought,
or if the exploitation of the invention had been suspended for more than one year.
Compulsory licences shall not be granted if patent owners are able to give valid reasons for their failure
to act, which may be reasons of force majeure or an act of God, in accordance with the domestic provisions ineffect in each Member Country.
A compulsory licence shall be granted only if, prior to applying for it, the proposed user has made
efforts to obtain a contractual licence from the patent holder on reasonable commercial terms and conditions and
that such efforts were not successful within a reasonable period of time.
Article 62 . - Decisions to grant a compulsory licence, as stipulated in the previous Article, shall be
taken after the patent owners have been notified to present their arguments as they see fit within the followingsixty days.
The competent national office shall specify the scope or  coverage of the licence, and in particular shall
specify the period for which it is granted, the subject matter of the licence, the amount of the remuneration, and
the conditions for the payment thereof.  The remuneratio n shall be set at an adequate level in accordance with
the individual circumstances of each case and, in particular, the economic value of the authorization.
Opposition to a compulsory licence shall not prevent it s exploitation or have any effect on any periods
that may be running.  The filing of an objection shall not prevent the patent owner, in the meantime, fromcollecting the remuneration specified by the competent na tional office on the part unaffected by the objection.
Article 63 . - At the request of the owner of the patent or the licensee, the conditions governing the
compulsory licence may be changed by the competent national office where new circumstances so dictate and,in particular, when the patent holder grants another licence on terms that are more favourable than the existingones.
Article 64 . - The licensee shall exploit the licensed inve ntion within a period of two years following
the date the licence was granted, unless that licensee is able to give valid reasons for inaction consisting of force
majeure or an act of God.  Otherwise, at the patent owner's request, the competent national office shall revoke
the compulsory licence.
Article 65 . - Following the declaration by a Member Coun try of the existence of public interest, an
emergency, or national security considerations, and only for so long as those considerations exist, the patent
may be subject to compulsory licensing at any time.  In that case, the competent national office shall grant thelicences that are applied for.  The owner of the patent so licensed shall be notified as soon as is reasonably
possible.
The competent national office shall specify the scope or extent of the compulsory licence and, in
particular, the term for which it is granted, the subject matter of the licence, and the amount of remuneration andthe conditions for its payment.
The grant of a compulsory licence for reasons of public interest shall not reduce the right of the patent
owner to continue exploiting it.
Article 66 . - The competent national office may, either ex of ficio or at the request of a party, and after
having obtained the consent of the national antitrust authority, grant compulsory licences where practices arenoted that are detrimental to the exercise of free competition, especially where they constitute an abuse by thepatent owner of a dominant position in the market.
The need to correct anti-competitive practices shall be taken into account in determining the amount of
remuneration to be paid in such cases.
The competent national office shall refuse termination of a compulsory licence if and when the
conditions which led to the granting of the licence are likely to recur.
Article 67 . - The competent national office shall grant a licence, upon request by the owner of a patent
whose exploitation necessarily requires the use of another patent, and that right holder has been unable to securea contractual licence to the other patent on reasonable commercial terms.  That licence shall, without prejudice
to the provisions of Article 68, be subject to the following conditions:
(a) The invention claimed in the second patent shall involve an important technical advance of
considerable economic significan ce in relation to the invention claimed in the first patent;
(b) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the
invention claimed in the second patent;  and
(c) the licence authorized in respect of the first patent shall be non-assignable except with the
assignment of the second patent.IP/C/W/252
Page 78
may grant a compulsory licence, which are in harm ony with the terms in Article 31 of the TRIPS
Agreement.
20. What term of protection does the patent law of Venezuela provide for patents.  Please
describe any provisions for extension of the term of protection, and cite the relevant provisionsof law.
The term of protection is established in Article 50
125 of Decision 486 – Common Industrial
Property Regime.
Venezuela's legislation does not have any provisions on extending the term of protection for
patents.
G. LAY-OUT DESIGNS OF INTEGRATED CIRCUITS
21. Please describe in detail the protection  for lay-out designs of integrated circuits
provided under the laws of Venezuela, including the term of protection, and cite the relevant
provisions of law.
The question of integrated circuits is dealt with in Articles 86 to 107126 of Decision 486 –
Common Industrial Property Regime – in Title IV, which contains the following:  Definitions
                                                                                                                                                                    
Article 68 . - In addition to the conditions provided for in the preceding Articles, compulsory licences
shall be subject to the following:
(a) They shall be non-exclusive and may not be sublicensed;(b) they shall be non-assignable, except with the part of the business or goodwill which permits their
industrial use.  This shall be evidenced in writing and registered with the competent national office.  Otherwise,those assignments or transfers shall not be legally binding;
(c) they shall be liable, subject to adequate protection of the legitimate interests of the persons so
authorized, to be terminated if and when the circumst ances which led to them cease to exist and are unlikely to
recur;
(d) their scope and duration shall be limited to the purposes for which they were authorized;(e) in the case of patents protecting semi-conductor technology, a compulsory licence shall be
authorized only for public non-commercial use or to  remedy a practice declared by the competent national
authority to be anti-competitive in accordance with Articles 65 and 66;
(f) they provide for payment of adequate remune ration according to the circumstances of each case,
taking into account the economic value of the licence, without prejudice to the stipulations of Article 66;  and
(g) they shall be used predominantly for the supply of the domestic market.Article 69 . - Compulsory licences that fail to comply with the provisions of this Chapter shall be
devoid of any legal effect whatsoever.
125 Article 50 . - Patents shall have a term of twenty years counted from the filing date of the
corresponding application in the Member Country.
126 Title IV
On the Lay-out designs (Topographies) of Integrated Circuits
Chapter I
Definitions
Article 86 . - The following definitions shall apply for purposes of this Title:
(a) Integrated circuit: a product, in final or intermediate form, of which at least one element is an active
element and some or all of whose interconnections are an integral part of the body or surface of a piece of
material that is intended to be used electronically;
(b) lay-out design: the three-dimensional arrangement of the elements, regardless of form, of which at
least one is an active element, and their interconnectio n into an integrated circuit, as well as that three-
dimensional arrangement prepared for use in an integrated circuit to be manufactured.
Chapter II
On the Requirements for Protection of Lay-out designs of Integrated Circuits
Article 87 . - A lay-out design shall be protected if it is an original design.IP/C/W/252
Page 79
                                                                                                                                                                    
A lay-out design shall be considered original when it is the result of its creator's intellectual efforts and
is not in common use in the integrated circuit industry.
Where composed of two or more elements in common use in the integrated circuit industry, a lay-out
design shall be considered original only if the comb ination of those elements, as an assembly, meets this
requirement.
Chapter III
On the Right Holders
Article 88 . - The right to register a lay-out design of an integrated circuit belongs to its designer.  That
right may be assigned or transferred by succession.
If two or more persons jointly prepare a lay-out design, those persons shall share the right to protect it.The right to protection of a lay-out design created und er a project or service contract entered into for
this purpose or within the framework of an employment relationship in which the designer has such function,
shall belong to the person who commissioned the project or service, or the employer, unless otherwise stipulatedunder a contract.
Chapter IV
On the Application for Registration
Article 89 . - The application to register a lay-out design of an integrated circuit shall be filed with the
competent national office and shall contain the following information:
(a) The petition;(b) a copy or drawing of the lay-out design and, if commercially exploited, a sample of that integrated
circuit;
(c) if pertinent, a statement of the date of first commercial exploitation of the integrated circuit
anywhere in the world;
(d) if pertinent, the statement of the year the integrated circuit was created;
(e) a description of the electronic operation to be pe rformed by the integrated circuit incorporating the
lay-out design;
(f) copies of any applications for registration or other protection filed for or obtained abroad by the
applicants or their assignees, referring to all or part of the lay-out design for which a registration application is
being filed in the Member Country;
(g) such powers of attorney as may be needed;  and(h) a proof of payment of the prescribed fee.Article 90 . - The petition to register an application for a lay-out design of an integrated circuit shall be
on a form and shall include the following information:
(a) The request for the registration;
(b) the name and address of the applicant;
(c) the nationality or domicile of the applicant and, if the applicant is a legal person, the place of
incorporation;
(d) the name and domicile of the creator of the lay-out design, if a person other than the applicant;(e) the name and address of the applicant's legal representative, if pertinent;
(f) the date, number, and office where any other application for registration or other protection was
filed or obtained abroad by the applicant or assignee in respect of all or part of the same lay-out design beingapplied for in the Member Country, if pertinent;  and
(g) the signature of the applicant or the applicant's legal representative.Article 91 . - Where the lay-out design for which a registration application has been filed includes a
business secret, the applicant shall file, in addition to the graphic representation required, a representation of the
layout omitting, erasing, or distorting the parts containing that secret.  It is necessary for the remaining parts to
be sufficient to allow for identification of the lay-out design.
Article 92 . - The date of receipt of an application by the competent national office shall be considered
its filing date, provided that the application contained at least the following elements:
(a) An express or implicit statement that the application is being filed for the registration of a lay-out
design;
(b) data that shall permit identification of the applicant or person filing the application or enable the
competent national office to communicate with that person;
(c) a graphic representation of the lay-out design for which registration is being applied for;  and(d) the proof of payment of the prescribed fees.Failure to comply with any one of the requirements specified in this Article shall result in refusal by the
competent national office to process the application and no filing date shall be assigned to it.IP/C/W/252
Page 80
                                                                                                                                                                    
Chapter V
On the Processing of the Application
Article 93 . - The competent national office shall examine whether the subject matter of the application
constitutes a lay-out design as defined in Article 86 and whether the application contains the informationrequested in Articles 89, 90, and 91.  The competent national office shall not examine the originality of the lay-
out design ex officio, unless reasoned oppos ition to the applicatio n has been presented.
Should any omission or defect be noted, the applicant shall be notified so that he may make the
necessary correction within a period of three months, an d failure to do so shall be considered abandonment of
the application and it shall be placed in the archives ex officio.  If the applicant does not make the correction
within the allotted period, the competent national office shall make that warning effective through a reasoneddecision.
Article 94 . - Having examined the application, the competent national office shall order its
announcement through the publication in the official govern ment gazette of a notice to be paid by the interested
party.
The pertinent provisions in respect of applications for patents for inventions shall be applicable to the
publication of the notice.
Article 95 . - Any interested person may lodge a substantiated objection with the competent national
office, including information and documents that would be useful for ascertaining the eligibility for registrationof a lay-out design.
Pertinent provisions in respect of applications for invention patents shall be applicable to the
objections.
Article 96 . - If the stipulated requirements are fulfilled, the competent national office shall register the
lay-out design and issue a registration certificate containi ng the data included in the corresponding registry.
Chapter VI
On the Rights conferred by Registration
Article 97 . - If the lay-out design has been exploited commercially anywhere in the world, the
application for registration shall be filed with the competent national office of the Member Country concernedwithin a period of two years from the date of its first comm ercial exploitation.  If the application is filed after the
expiration of that period, the registration shall be denied.
A lay-out design not having been commercially exploited anywhere in the world may be registered
only if applied for to a competent national office of a Member Country no later than 15 years after the last dayof the year the layout was created.  If the application is filed after that period has expired, its registration shall bedenied.
Article 98 . - Exclusive rights over a registered lay-out design shall have a term of ten years from the
earliest of the following dates:
(a) The last day of the year the lay-out design was first commercially exploited anywhere in the world;
or
(b) the filing date of an application for registration with the competent national office of the Member
Country concerned.
The term of protection of a registered lay-out design shall lapse in any case at the conclusion of a
period of 15 years counted from the last day of the year in which the lay-out design was created.
Article 99 . - The protection shall apply irrespective of wh ether the integrated circuit incorporating the
protected lay-out design has been incor porated into an article and irrespective of whether the lay-out design has
been incorporated into an integrated circuit.
Registration of a lay-out design of an integrated circuit confers on its holder the right to prevent third
persons from performing any of the following acts:
(a) Reproducing, through incorporation into an integrated circuit or in any other way, all or part of the
protected lay-out design that complies with the requirements for originality stipulated in Article 87;
(b) marketing, importing, offering for sale, selling, or otherwise distributing a protected lay-out design
or an integrated circuit in which a prot ected lay-out design is incorporated;  or
(c) marketing, importing, offering for sale, selling, or otherwise distributing an article incorporating
such a protected integrated circuit, only insofar as it continues to contain an unlawfully reproduced lay-out
design.
Protection conferred by registration shall cover only the lay-out design itself, and shall not extend to
any idea, process, system, technique, or data encoded or incorporated into the lay-out design.
Article 100 . - The right conferred by registration of the lay-out design only may be asserted against
acts having industrial or commercial purposes.  Registration shall not confer the right to prevent the following
acts:IP/C/W/252
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(a) Acts carried out in a private circle and for non-commercial purposes;
(b) acts carried out exclusively for purposes of evaluation, analysis, or experimentation;
(c) acts carried out exclusively for purposes of teaching or scientific or academic research;(d) acts referred to in Article 5 ter of the Paris Convention for the Protection of Industrial Property.Article 101 . - Registration of a lay-out design shall not give the holder the right to prevent third parties
from engaging in acts of commerce in respect of registered lay-out designs, integrated circuits in which a
protected lay-out design is incorporated , or articles containing those integrated circuits after the introduction of
the lay-out design into trade in any country by the right holder or by any other person with the consent of orhaving economic ties to that right holder.
For the purposes of the preceding paragraph, two pe rsons shall be considered to have economic ties
when one of the persons is able to exercise a decisive in fluence over the other, either directly or indirectly, with
respect to exploitation of the lay-out design, or when a third party is able to exert that influence over both
persons.
Article 102 . - The right holder of a registered lay-out design may not prevent a third party from
engaging in acts of industrial or commercial exploitation in  respect of a lay-out design created by another person
through the evaluation or analysis of the protected lay-out design, provided that the lay-out design thereby
created fulfils the requirements for originality stipulated in Article 87.  Nor may that right holder prevent those
acts in respect of integrated circuits in which the lay- out designs so created are incorporated or of articles
incorporating those integrated circuits.
Article 103 . - The right holder of a registered lay-out design may not prevent a third party from
carrying out the acts cited in Article 99 with respect to another original lay-out design created independently by
a third party, even if identical.
Article 104 . - Performance of any of the acts referred to in Article 99 in respect of an integrated circuit
incorporating an unlawfully reproduced lay-out design or any article incorporating such an integrated circuitshall not be considered an infringement of rights to a registered design, where the person performing or orderingsuch acts did not know and had no reasonable ground to know, when acquiring the integrated circuit or articleincorporating such an integrated circuit, that it incor porated an unlawfully reproduced lay-out design.  After the
time that such person has received sufficient notice that the lay-out design was unlawfully reproduced, that
person may perform any of the acts with respect to the stock on hand or ordered before such time, but shall be
liable to pay the right holder a sum equivalent to a reas onable royalty such as would be payable under a freely
negotiated licence in respect of such a lay-out design.
Article 105 . - A lay-out design registration that has been granted or is being processed may be assigned
or transferred by succession.
Any assignment or transfer of a lay-out design registration shall be filed with the competent national
office.  Failure to register that assignment or transfer shall render it legally invalid in respect of third parties.
Assignments or transfers, in order to be registered, shall be in writing.Any interested person may apply for registration of an assignment or transfer.
Chapter VII
On the Licensing System
Article 106 . - The right holder of a lay-out design that is registered or for which registration has been
filed may license one or more parties to exploit that lay-out design.
Any licence to use the lay-out design shall be regist ered with the competent national office.  Failure to
register the licence shall render it invalid with respect to third parties.
Licences, in order to be registered, shall be in writing.Any interested party may file for registration of a licence.
The registered right holder shall inform the competent national office of any change in the name or
address of the registered lay-out design right holder during the term of the licensing contract.  Otherwise, anynotification that may be made on the basis of the data entered in the registry shall be considered valid.
Article 107 . - The competent national authority may, given a lack of exploitation or for reasons of
public interest, in particular a national emergency, or fo r public health or natural security considerations, or to
remedy an anti-competitive practice, and at the request of an interested party or of a competent authority, order
the following at any time:
(a) That lay-out designs that are registered or for which registration has been filed shall be used or
exploited industrially or commercially by a government institution or by one or more public or private legalentities that have been expressly appointed to do so;  or
(b) that the said lay-out design shall be subject to the granting of one or more compulsory licences, in
which case the competent authority may grant such a licen ce to any person who applies for it, subject to the
conditions that have been stipulated for that purpose.IP/C/W/252
Page 82
(Chapter I);  On the Requirements for Protection of Lay-out designs of Integrated Circuits (Chapter
II); On the Right Holders (Chapter III);  On the Application for Registration (Chapter IV);  On the
Processing of the Application (Chapter V);  On the Rights conferred by Registration (Chapter VI);
and On the Licensing System (Chapter VII).
H. UNDISCLOSED INFORMATION
22. Please describe in detail how the laws of Venezuela provide for the protection of
undisclosed information, as required by Article 39.2 of the TRIPS Agreement, and provide
citations of the relevant provisions of law.
Articles 260 and 262 of Decision 486 – Comm on Industrial Property Regime – (provisions
which correspond to those in Article 39.2 of the TRIPS Agreement) define what should be considereda business secret, who may use this information, the criteria for protecting undisclosed information,
and set out a list of acts concerning business secrets which constitute unfair competition.
23. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical prod ucts submitted to the government in order to
obtain marketing approval in Venezuela a nd cite the relevant provisions of law.
According to Article 266 of Decision 486 – Common Industrial Property Regime – (which
corresponds to Article 39.3 of the TRIPS Agreement) when Member Countries require as a condition
for approving the marketing of pharmaceutical products or agricultural chemical products that usenew chemical entities the submission of undisclosed test or other data whose formulation required a
considerable effort, they shall protect such data against unfair commercial use.  Furthermore, Member
Countries shall protect such data against any disc losure, except where necessary to protect the public
or unless steps are taken to ensure that the data are protected against unfair commercial use.
24. Are other applicants for ma rketing approval for their own versions of a previously
approved pharmaceutical or agricultural chemical product permitted to rely on data submitted
by the earlier applicant?  If so, how long a period of exclusivity is given the earlier applicant
before such reliance becomes possible.
Any person has the right to request and obtain from the competent authorities authorization to
market their own version of a previously approved pharmaceutical or agricultural chemical productprovided that it meets the criteria in the relevant legislation.  The authority which approves marketing
may not discriminate between previous or subsequent applicants and must treat them all equally in
accordance with the law.  Pursuant to Article 266 of Decision 486, the authority approving marketing
shall not permit third parties access to the test data or other undisclosed data whose formulation
required a considerable effort and which has been provided by another person (subject to theexceptions specified in Article 266, which correspond to Article 39.3 of the TRIPS Agreement).  This
protection is for an unlimited term and shall be maintained as long as the conditions which required it
persist.
                                                                                                                                                                    
The conditions that have been stipulated for granting compulsory licences with respect to patents for
inventions shall be applicable to the granting of compulsory licences in regard to lay-out designs.IP/C/W/252
Page 83
I. ENFORCEMENT
25. Please describe in detail the manner in which the laws of Venezuela provide for effective
action against infringement of intellectual property rights, as required by Article 41.1 of the
TRIPS Agreement.
Decision 486 of the Commission of the Cartagena Agreement and domestic legislation
specify action and procedures to counter the infringement of intellectual property rights.  These allow
effective measures to be adopted and prevent infringement.
Industrial property:
1. Action for claims:  Title XIV, Article 237127 of Decision 486 – Common Industrial Property
Regime.
2. Action for nullity:  Title VI, Chapter VII, Article 172 of Decision 486 – Common Industrial
Property Regime.
3. Action for infringement of rights: Title XV, Articles 238 to 244128 of Decision 486 –
Common Industrial Property Regime.
                                                     
127 Article 237 . - Where patents or registration of industrial designs have been applied for or obtained
by persons with no right to those patents or registrations, or to the detriment of other parties with the same
rights, the parties affected may claim those rights from the competent national authority and request the transfer
to them of the applications being processed or the right granted, or their recognition as co-applicants or co-owners of those rights.
Where trademark registrations have been filed for or obtained to the detriment of other parties with the
same rights, the parties affected may claim such rights from the competent national authority by requesting theirrecognition as co-applicants or co-owners of the rights in question.
Where the domestic legislation of the Member Country so permits, compensation for damages may be
requested in the same claim.
The right to bring this action shall lapse four years after the date of granting the right or two years as
from the date of first exploitation or use of the subject matter of protection in the country by the person havingobtained the right, whichever period expires first.  There shall be no time-limit on action if the right wasobtained in bad faith.
128 Article 238 . - Owners of a right protected by virtue of this Decision may bring action with the
competent national authority against any persons infringing upon their right and also against any personsperforming acts that are likely to result in the infringement of that right.
The competent national authority may, ex officio and if permitted by the domestic law of the Member
Country concerned, initiate the proceedings for infringement stipulated in that legislation.
In case of the co-ownership of a right, any one of the co-owners may bring action for infringement
without need for consent from the other parties, unless there is an agreement to the contrary among the co-owners.
Article 239 . - The owner of a patent shall have the right to take legal action for damages resulting from
unauthorized use of the invention or utility model between the period when it became public knowledge and therespective application was opened to consultation and the patent grant date.  Compensation shall be lawful only
in respect of the subject matter covered by the patent granted and shall be computed in accordance with the
patent's effective exploitation by the defendant over the period in question.
Article 240 . - In cases where infringement of a patent for a process for obtaining a product is claimed,
defendants shall be liable to prove a difference between the process they have used to obtain the product and theprocess protected by the patent whose infringement is claimed.  For this purpose, any identical product when
produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to
have been obtained by the patented process:
(a) If the product obtained by the patented process is new;  or(b) if there is a substantial likelihood that the identical product was made by the process and the owner
of the patent has been unable through reasonable efforts to determine the process actually used.IP/C/W/252
Page 84
4. Provisional measures: Title XV, Chapter II, Articles 245 to 249129 of Decision 486 – Common
Industrial Property Regime.
                                                                                                                                                                    
In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting their
business secrets shall be taken into account.
Article 241 . - The plaintiff or defendant may request the competent national authority to order one or
more of the following measures, among others:
(a) Cessation of all acts that constitute the infringement;
(b) compensation for damages;(c) withdrawal from commercial channels of all products resulting from the infringement, including
packaging, wrapping, labels, printed materials or advertising, together with the materials and implements thepredominant use of which has been the commission of the infringement;
(d) prohibition against the importation or exportation of the products, or materials or implements
referred to in the previous item;
(e) adjudication of the ownership of the products or materials or implements referred to in item (c), in
which case the value of such goods shall be charged to the amount of compensation due for damages;
(f) adoption of the necessary measures to avoid continuation or repetition of the infringement,
including destruction of the products or materials or implements referred to in item (c) or the temporary or
definitive closure of the business belonging to the defendant or the accused;  or
(g) publication of the guilty verdict and notification of interested parties at the infringer's expense.In the case of counterfeit trademark goods, the elimination or removal of that trademark shall be
accompanied by actions to prevent the introduction of thes e products into trade.  Furthermore, such goods shall
not be allowed to be re-exported in an unaltered state or to be subjected to a different customs procedure.
Cases duly qualified by the competent national authority or those expressly authorized by the owner of
the trademark shall be excepted.
Article 242 . - Member Countries may, unless out of proportion to the seriousness of the infringement,
instruct judicial authorities to order infringers to tell right holders the names of third parties having taken part inthe production and distribution of the infringing goods or services, and about the channels used for distributionof such goods.
Article 243 . - The following criteria shall be used, among others, to calculate the amount of
compensation to be paid for damages:
(a) The consequential damage and lost profits su ffered by the right holder as a result of the
infringement;
(b) the amount of profit obtained by the infringer as a result of the acts of infringement;  or(c) based on the commercial value of the infringed right and such contractual licences as may have
already been granted, the price the infringe r would have paid for a contractual licence.
Article 244 . - The right to action for infringement shall lapse two years counted as of the date the
owner learned about the infringement or, in any case, five years after the infringement was committed for thelast time.
129 Article 245 . - Any party initiating or who shall initiate an action for infringement may request the
competent national authority to order immediate provisional measures for the purpose of preventing an
infringement from occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring the
effectiveness of the action or compensation for damages.
Provisional measures may be requested before starting the action, together with it, or after it has been
initiated.
Article 246 . - The following provisional measures may be ordered, among others:
(a) Immediate cessation of all acts constituting the alleged infringement;
(b) withdrawal from commercial channels of all products resulting from the alleged infringement,
including packaging, wrapping, labels, printed material or advertising, or other materials, together with thematerials and implements the predominant use of which has been the commission of the infringement;
(c) suspension of the importation or exportation of the goods or materials or implements referred to
under the previous paragraph;
(d) establishment by the alleged infringer of an adequate guarantee;  and
(e) temporary closure of the business belonging to the defendant or accused, if necessary, to avoid
continuation or repetition of the alleged infringement.
The competent national authority may, if permitted by the domestic law of the Member Country
concerned, order the application of provisional measures ex officio.IP/C/W/252
Page 85
5. Border measures: Title XV, Chapter III, Articles 250 to 256130 of Decision 486 – Common
Industrial Property Regime.
                                                                                                                                                                    
Article 247 . - A provisional measure shall be ordered only where the persons requesting it accredit
their lawful right to act and the existence of the infringed right, and provide evidence allowing for a reasonablepresumption of infringement or that infringement is imminent.  The competent national authority may requirepersons requesting the measure to provide security or sufficient equivalent assurance before ordering such a
measure.
The applicant for a provisional measure in respect of particular goods shall supply the necessary
information and a sufficiently detailed and precise description so that the allegedly infringing goods can beidentified.
Article 248 . - Where a provisional measure has been adopted inaudita altera parte , the party affected
shall be given notice without delay after the execution of the measures.  The defendant may request the
competent national authority to conduct a review of the measure imposed.
Unless stipulated otherwise, any provisional measure imposed inaudita altera parte  shall cease to have
effect by operation of law if infringement proceedings are not initiated within ten days following the executionof the measure.
The competent national authority may modify, revoke, or confirm the provisional measure.
Article 249 . - Provisional measures shall be applied to the goods resulting from the alleged
infringement and to the materials or implements the predominant use of which has been the commission of theinfringement.
130 On Border Measures
Article 250 . - The owner of a registered trademark who has valid grounds for suspecting that the
importation or exportation of counterfeit trademark goods  will take place may request the competent national
authority to suspend this customs operation.  The conditions and security stipulated in the domestic legislation
of the Member Country concerned shall be applicable to th is request and to such an order as that authority may
issue.
The party requesting measures to be taken at the border shall be required to supply the necessary
information and a sufficiently detailed and precise description of the goods subject to the alleged infringementso they can be identified.
The competent national authority may, if permitted by the domestic laws of the Member Country, order
the application of measures at the border ex officio.
Article 251 . - The competent national authority shall give trademark owners the opportunity to
participate in the inspection of the detained goods in order to substantiate their claims.  The importer or exporterof those goods shall be entitled to exercise the same right.
The competent national authority shall make all neces sary arrangements for confidential information to
be protected during the inspection procedure.
Article 252 . - Upon fulfilment of the applicable conditions and the security provisions, the competent
national authority shall order or reject the suspension of the customs operation and shall inform the applicantaccordingly.
In the event that the authority orders the operation to be suspended, the notification to the applicant
shall include the name and address of the consigner, importer, exporter, and consignee of the goods concerned,
and the amount of goods to be detained.  The importer or exporter of those goods shall be likewise notified ofthe suspension.
Article 253 . - If, within ten working days after the applicant has been served notice of the suspension
of the customs operation, the plaintiff fails to initia te infringement proceedings or the competent national
authority has not taken measures to prolong the suspension, the measure shall be revoked and the detained
goods shall be released.
Article 254 . - If infringement proceedings have been initiated, the defendant may appeal to the
competent national authority, which shall decide whether to modify, revoke, or confirm the suspension.
Article 255 . - Once the existence of an infringement has been determined, such counterfeit trademark
goods as the competent national authority may have seized may not be re-exported in an unaltered state orsubjected to a different customs pro cedure, except in cases duly qualified by the competent national authority or
expressly authorized by the right holder.
Without prejudice to other rights of action available to the right holder and subject to the right of the
defendant to seek review by a judicial authority, th e competent national authority may order the destruction or
seizure of infringing goods.IP/C/W/252
Page 86
6. Unfair trade practices:
(a) Title XVI, Chapter I, Articles 258 and 259131 of Decision 486 – Common Industrial
Property Regime;
(b) Title II, Article 17132 and Titles IV, V, VI and VII, Articles 32 to 56 of the Law on the
Promotion and Protection of Free Competition.
7. Criminal procedures:
(a) Title XV, Chapter IV, Article 257133 of Decision 486 – Common Industrial Property
Regime;
(b) Chapter VII, Articles 97 to 105 of the Industrial Property Law;(c) Title VI, Chapter V, Articles 338 and 339
134 of the Venezuelan Criminal Code.
                                                                                                                                                                    
Article 256 . - Small quantities of goods of a non-commercial nature contained in travellers' luggage or
sent in small consignments shall be excluded from the application of the provisions of this chapter.
131 Article 258 . - Any act carried out in respect of industri al property in the course of trade that is
contrary to honest commercial prac tices shall be considered unfair.
Article 259 . - The following, among others, constitute industrial property-linked unfair trade practices:
(a) Any act which, by any means whatsoever, is capable of causing confusion with respect to the
business, goods, or industrial or commercial activity of a competitor;
(b) false affirmations made in the course of tr ade that are capable of discrediting a competitor's
business, goods, or industrial or commercial activity; or,
(c) indications or affirmations whose use in the cour se of trade may mislead the public with regard to
the nature, method of manufacture, characteristics, usefulness, or quantity of the goods in question.
132 Article 17 . – Trade policies aimed at the elimination of competitors through acts of unfair
competition shall be prohibited, in particular the following acts:
1. Misleading or false publicity for the purpose of preventing or restricting free competition;2. Promotion of products and services based on false declarations concerning the disadvantages or risks
of any other product or service of competitors;  and
3. Commercial bribery, infringement of industrial secrets and the imitation of products.
133 Article 257 . - Member Countries shall provide for criminal procedures and penalties to be applied
in cases of trademark counterfeiting.
134 Article 338 . – Any person who has counterfeited or altered names, trademarks or distinctive signs
belonging to intellectual works or to the products of any industry, and any person who has made use of legallyregistered names, trademarks or signs that have been so counterfeited or altered, even if the act was carried out
by a third person, shall be liable to a term of imprisonment of one to 12 months.
The same penalty shall apply to any person who ha s counterfeited or altered industrial designs or
models or has made use of them, even if the act was carried out by a third person.
The judicial authority may provide that the conviction be published in a newspaper it specifies, at the
expense of the infringer.
Article 339 . - Any person who, for the purpose of trade, has imported into Venezuela and put on sale
or in any way circulated intellectual works or products of any industry bearing counterfeited or altered names,
trademarks or distinctive signs likely to mislead the cons umer as to their origin or quality, if the ownership of
the works, trademarks or signs has been legally regi stered in Venezuela, shall be liable to a term of
imprisonment of one to 12 months.IP/C/W/252
Page 87
Copyright
(a) Affirmatory action:  Title VI, Article 109135, of the Law on Copyright, which seeks to
obtain a judicial ruling confirming the existence of the right claimed by plaintiff;
(b) Inhibitory, prohibitory or convictive action: Title VI, Article 109, of the Law on
Copyright, which provides that the ow ner of a right who has reason to fear
infringement of his rights or the persistence or recurrence of infringement that has
already occurred may request a court to prohibit the other person from engaging in
infringement;
(c) Action for removal or destruction: Title VI, Article 110136, of the Law on Copyright.
Article 57(c) in Chapter VIII of Decision 351 also allows this possibility;
(d) Action for damages: Title VI, Article 109, Article 110 and Article 64137 of the Law on
Copyright.  Article 57(a) and (b) in Chapter VIII of Decision 351 – Common
Provisions on Copyright and Neighbouring Rights – empowers the competentauthorities to order the infringer of any pr otected rights to pay adequate compensation
for injury caused to the plaintiff, in addition to the procedural costs.
                                                     
135 Article 109 . - The owner of any of the exploitation rights provided for in this Law who has reason
to fear infringement of his rights or the continuation or  recurrence of an infringement that has already occurred
may request the court to declare his rights and prohibit the other person from engaging in infringing acts,without prejudice to any action for moral and material damages that he may bring against the infringer.
In order to make the prohibition effective, the court may give warning in its ruling of a fine payable if
an infringement should occur.  The court shall impose the sanction at the request of the injured party.  The fineshall not exceed the equivalent of 20 times the minimum urban wage set by the National Executive inaccordance with the Law on the Organization of Labour, and it shall be convertible into detention in the
proportion of Bs 500 to one day of detention.
In the event of a second offence, the fine imposed may be doubled.
136 Article 110 . - The owner of one of the exploitation rights provided for in this Law who has been
prejudiced in the exercise thereof may request the court to  order the destruction or withdrawal of the originals or
copies unlawfully reproduced and of the equipment used for the reproduction, insofar as the latter cannot, bytheir nature, be used for the reproduction or communi cation of other material, without prejudice, where
appropriate, to the right to bring action for damages caused to the owner of any one of the exploitation rights
mentioned.
If part of the equipment concerned can be used for the reproduction or communication of other
material, the person concerned may demand that the part in question be separated at his expense to save it fromdestruction or removal.  If the original, copy or equipment whose removal or destruction is sought is ofparticular artistic or scientific merit, it may not be destroyed, and the court may order ex officio that it be handedover to a public museum.
In any event, the injured party may request that the originals, copies or equipment whose destruction
has been ordered be awarded to him.  The court shall determine the value of the award, which shall be deductedfrom the estimated amount of compensation for damages caused.
The measures referred to in this Article shall be without effect on those who have, in good faith and for
their personal use, acquired an unlawfully reproduced original or copy.
137 Article 64 . - Any person who exploits a work, product or production administered by a collective
administration organization without having been assigned the corresponding rights or without having been
granted the appropriate licence for use, shall pay, by way of indemnification, a charge of 50 per cent of theremuneration specified in the tariff, applicable to th e entire period during which th e exploitation took place,
provided that there is no evidence of a more serious prejudice in the specific case.IP/C/W/252
Page 88
26. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order
production of evidence necessary to substantiate a party's claims where that party has been
unable to obtain such evidence from the opposi ng party.  Please describe how the laws or
regulations of Venezuela provide this authorization, citing the relevant provisions or law or
regulation.
In Venezuela's legal system there is a means of proof called "presentation of documents".
This is based on Section II, Article 436, of the Code of Civil Procedure.138
This provision allows the party during the proceedings to request the court to require the other
party to present or hand over the document within its  control.  After the request has been approved,
together with the evidence showing that there is at  least a serious presumption that the document in
question is within the control of the other party, the court shall order the other party to produce it
within the time-limit it specifies and if the document is not produced or handed over, the copy or the
information provided by the requesting party shall be deemed accurate.
This means of proof can be used in both criminal and civil proceedings in Venezuela, where
the principle of freedom of evidence exists, allowing  the use of any evidential means provided in any
legislative text.
In addition to the foregoing, Article 240139 of Decision 486 of the Andean Community of
Nations provides that the burden of proof shall lie with the defendant in cases of infringement of apatented process used to obtain a product. For this purpose, there is a juris tantum  presumption
against the defendant, who must prove during the proceedings that the process used to obtain the
product is not the process protected by the patent.
27. Please describe in detail all of the civil remedies that are available to right holders under
the laws of Venezuela, citing the relevant provisions of law or regulation .
Decision 486 of the Commission of the Cartagena Agreement and the domestic legislation
specify action and procedures to counter the infringement of intellectual property rights.  These allow
effective measures to be adopted and prevent infringement.
                                                     
138 Article 436 . - A party seeking to utilize a document that, according to its declara tion, lies within the
control of the other party, may request its presentation.
The request for presentation shall be accompanied by a copy of the document or, failing that, by a
statement of the facts known to the requesting party concerning the content of the document and evidenceshowing that there is at least a serious presumption that  the document is or has been within the control of the
other party.
The court shall require the other party to present or hand over the document within the period it
indicates or be subject to a penalty.
If the document is not presented within the time-limit fixed and no evidence is provided to show that it
does not lie within the control of the other party, the text of the document as it appears in the copy presented bythe requesting party shall be presumed to be accurate, or in its absence, the information provided by the
requesting party concerning the content of the doc ument shall be deemed to be correct (…)".
139 Article 240 . - In cases where infringement of a patent for a process for obtaining a product is
claimed, defendants shall be liable to prove a difference between the process they have used to obtain theproduct and the process protected by the patent whose infringement is claimed.  For this purpose, any identicalproduct when produced without the consent of the patent owner shall, in the absence of proof to the contrary, bedeemed to have been obtained by the patented process:
(a) If the product obtained by the patented process is new;  or
(b) if there is a substantial likelihood that the identical product was made by the process and the owner
of the patent has been unable through reasonable efforts to determine the process actually used.
In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting their
business secrets shall be taken into account.IP/C/W/252
Page 89
Industrial property:
1. Action for claims:  Title XIV, Article 237140 of Decision 486 – Common Industrial Property
Regime.
2. Action for infringement of rights: Title XV, Articles 238 to 244141 of Decision 486 –
Common Industrial Property Regime.
                                                     
140 Article 237 . - Where patents or registration of industrial designs have been applied for or obtained
by persons with no right to those patents or registrations, or to the detriment of other parties with the samerights, the parties affected may claim those rights from the competent national authority and request the transferto them of the applications being processed or the right granted, or their recognition as co-applicants or co-
owners of those rights.
Where trademark registrations have been filed for or obtained to the detriment of other parties with the
same rights, the parties affected may claim such rights from the competent national authority by requesting theirrecognition as co-applicants or co-owners of the rights in question.
Where the domestic legislation of the Member Country so permits, compensation for damages may be
requested in the same claim.
The right to bring this action shall lapse four years after the date of granting the right or two years as
from the date of first exploitation or use of the subject-matter of protection in the country by the person havingobtained the right, whichever period expires first.  There shall be no time-limit on action if the right wasobtained in bad faith.
141 Article 238 . - Owners of a right protected by virtue of this Decision may bring action with the
competent national authority against any persons infringing upon their right and also against any persons
performing acts that are likely to result in the infringement of that right.
The competent national authority may, ex officio and if permitted by the domestic law of the Member
Country concerned, initiate the proceedings for infringement stipulated in that legislation.
In case of the co-ownership of a right, any one of the co-owners may bring action for infringement
without need for consent from the other parties, unless there is an agreement to the contrary among the co-
owners.
Article 239 . - The owner of a patent shall have the right to take legal action for damages resulting from
unauthorized use of the invention or utility model between the period when it became public knowledge and therespective application was opened to consultation and the patent grant date.  Compensation shall be lawful onlyin respect of the subject matter covered by the patent granted and shall be computed in accordance with thepatent's effective exploitation by the defendant over the period in question.
Article 240 . - In cases where infringement of a patent for a process for obtaining a product is claimed,
defendants shall be liable to prove a difference between the process they have used to obtain the product and theprocess protected by the patent whose infringement is claimed.  For this purpose, any identical product when
produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed tohave been obtained by the patented process:
(a) If the product obtained by the patented process is new;  or
(b) if there is a substantial likelihood that the identical product was made by the process and the owner
of the patent has been unable through reasonable efforts to determine the process actually used.
In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting their
business secrets shall be taken into account.
Article 241 . - The plaintiff or defendant may request the competent national authority to order one or
more of the following measures, among others:
(a) Cessation of all acts that constitute the infringement;(b) compensation for damages;(c) withdrawal from commercial channels of all products resulting from the infringement, including
packaging, wrapping, labels, printed materials or advertising, together with the materials and implements thepredominant use of which has been the commission of the infringement;
(d) prohibition against the importation or exportation of the products, or materials or implements
referred to in the previous item;
(e) adjudication of the ownership of the products or materials or implements referred to in item (c), in
which case the value of such goods shall be charged to the amount of compensation due for damages;IP/C/W/252
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3. Provisional measures: Title XV, Chapter II, Articles 245 to 249142 of Decision 486 – Common
Industrial Property Regime.
                                                                                                                                                                    
(f) adoption of the necessary measures to avoid continuation or repetition of the infringement,
including destruction of the products or materials or implements referred to in item (c) or the temporary ordefinitive closure of the business belonging to the defendant or the accused;  or
(g) publication of the guilty verdict and notification of interested parties at the infringer's expense.In the case of counterfeit trademark goods, the elimination or removal of that trademark shall be
accompanied by actions to prevent the introduction of thes e products into trade.  Furthermore, such goods shall
not be allowed to be re-exported in an unaltered state or to be subjected to a different customs procedure.
Cases duly qualified by the competent national authority or those expressly authorized by the owner of
the trademark shall be excepted.
Article 242 . - Member Countries may, unless out of proportion to the seriousness of the infringement,
instruct judicial authorities to order infringers to tell right holders the names of third parties having taken part in
the production and distribution of the infringing goods or services, and about the channels used for distribution
of such goods.
Article 243 . - The following criteria shall be used, among others, to calculate the amount of
compensation to be paid for damages:
(a) The consequential damage and lost profits su ffered by the right holder as a result of the
infringement;
(b) the amount of profit obtained by the infringer as a result of the acts of infringement;  or(c) based on the commercial value of the infringed right and such contractual licences as may have
already been granted, the price the infringe r would have paid for a contractual licence.
Article 244 . - The right to action for infringement shall lapse two years counted as of the date the
owner learned about the infringement or, in any case, five years after the infringement was committed for the
last time.
142 Article 245 . - Any party initiating or who shall initiate an action for infringement may request the
competent national authority to order immediate provisional measures for the purpose of preventing aninfringement from occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring theeffectiveness of the action or compensation for damages.
Provisional measures may be requested before starting the action, together with it, or after it has been
initiated.
Article 246 . - The following provisional measures may be ordered, among others:
(a) Immediate cessation of all acts constituting the alleged infringement;(b) withdrawal from commercial channels of all products resulting from the alleged infringement,
including packaging, wrapping, labels, printed material or advertising, or other materials, together with thematerials and implements the predominant use of which has been the commission of the infringement;
(c) suspension of the importation or exportation of the goods or materials or implements referred to
under the previous paragraph;
(d) establishment by the alleged infringer of an adequate guarantee;  and(e) temporary closure of the business belonging to the defendant or accused, if necessary, to avoid
continuation or repetition of the alleged infringement.
The competent national authority may, if permitted by the domestic law of the Member Country
concerned, order the application of provisional measures ex officio.
Article 247 . - A provisional measure shall be ordered only where the persons requesting it accredit
their lawful right to act and the existence of the infringed right, and provide evidence allowing for a reasonablepresumption of infringement or that infringement is imminent.  The competent national authority may requirepersons requesting the measure to provide security or sufficient equivalent assurance before ordering such a
measure.
The applicant for a provisional measure in respect of particular goods shall supply the necessary
information and a sufficiently detailed and precise description so that the allegedly infringing goods can beidentified
Article 248 . - Where a provisional measure has been adopted inaudita altera parte , the party affected
shall be given notice without delay after the execution of the measures.  The defendant may request the
competent national authority to conduct a review of the measure imposed.
Unless stipulated otherwise, any provisional measure imposed inaudita altera parte  shall cease to have
effect by operation of law if infringement proceedings are not initiated within ten days following the executionof the measure.IP/C/W/252
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4. Border measures: Title XV, Chapter III, Articles 250 to 256143 of Decision 486 – Common
Industrial Property Regime.
5. Unfair trade practices:
(a) Title XVI, Chapter I, Articles 258 and 259144 of Decision 486 – Common Industrial
Property Regime;
                                                                                                                                                                    
The competent national authority may modify, revoke, or confirm the provisional measure.
Article 249 . - Provisional measures shall be applied to the goods resulting from the alleged
infringement and to the materials or implements the predominant use of which has been the commission of theinfringement.
143 On Border Measures
Article 250 . - The owner of a registered trademark who has valid grounds for suspecting that the
importation or exportation of counterfeit trademark goods  will take place may request the competent national
authority to suspend this customs operation.  The conditions and security stipulated in the domestic legislationof the Member Country concerned shall be applicable to th is request and to such an order as that authority may
issue.
The party requesting measures to be taken at the border shall be required to supply the necessary
information and a sufficiently detailed and precise description of the goods subject to the alleged infringementso they can be identified.
The competent national authority may, if permitted by the domestic laws of the Member Country, order
the application of measures at the border ex officio.
Article 251 . - The competent national authority shall give trademark owners the opportunity to
participate in the inspection of the detained goods in order to substantiate their claims.  The importer or exporter
of those goods shall be entitled to exercise the same right.
The competent national authority shall make all neces sary arrangements for confidential information to
be protected during the inspection procedure.
Article 252 . - Upon fulfilment of the applicable conditions and the security provisions, the competent
national authority shall order or reject the suspension of the customs operation and shall inform the applicant
accordingly.
In the event that the authority orders the operation to be suspended, the notification to the applicant
shall include the name and address of the consigner, importer, exporter, and consignee of the goods concerned,and the amount of goods to be detained.  The importer or exporter of those goods shall be likewise notified ofthe suspension.
Article 253 . - If, within ten working days after the applicant has been served notice of the suspension
of the customs operation, the plaintiff fails to initia te infringement proceedings or the competent national
authority has not taken measures to prolong the suspension, the measure shall be revoked and the detainedgoods shall be released.
Article 254 . - If infringement proceedings have been initiated, the defendant may appeal to the
competent national authority, which shall decide whether to modify, revoke, or confirm the suspension.
Article 255 . - Once the existence of an infringement has been determined, such counterfeit trademark
goods as the competent national authority may have seized may not be re-exported in an unaltered state orsubjected to a different customs pro cedure, except in cases duly qualified by the competent national authority or
expressly authorized by the right holder.
Without prejudice to other rights of action available to the right holder and subject to the right of the
defendant to seek review by a judicial authority, th e competent national authority may order the destruction or
seizure of infringing goods.
Article 256 . - Small quantities of goods of a non-commercial nature contained in travellers' luggage or
sent in small consignments shall be excluded from the application of the provisions of this chapter.
144 Article 258 . - Any act carried out in respect of industri al property in the course of trade that is
contrary to honest commercial prac tices shall be considered unfair.
Article 259 . - The following, among others, constitute industrial property-linked unfair trade practices:
(a) Any act which, by any means whatsoever, is capable of causing confusion with respect to the
business, goods, or industrial or commercial activity of a competitor;
(b) false affirmations made in the course of tr ade that are capable of discrediting a competitor's
business, goods, or industrial or commercial activity;  orIP/C/W/252
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(b) Title II, Article 17145 and Titles IV, V, VI and VII, Articles 32 to 56 of the Law on the
Promotion and Protection of Free Competition.
In addition, the following actions in the field of copyright:(a) Affirmatory action:  Title VI, Article 109, of the Law on Copyright, which seeks to
obtain a judicial ruling confirming the existence of the right claimed by plaintiff;
(b) Inhibitory, prohibitory or convictive action: Title VI, Article 109, of the Law on
Copyright, which provides that the ow ner of a right who has reason to fear
infringement of his rights or the persistence or recurrence of infringement that hasalready occurred may request a court to prohibit the other person from engaging in
infringement;
(c) Action for removal or destruction: Title VI, Article 110, of the Law on Copyright.
Article 57(c) in Chapter VIII of Decision 351 also allows this possibility;
(d) Action for damages: Title VI, Article 109, Article 110 and Article 64 of the Law on
Copyright.  Article 57(a) and (b) in Chapter VIII of Decision 351 – Common
Provisions on Copyright and Neighbouring Rights – gives the competent authorities
the power to order the infringer of any protected rights to pay adequate compensationfor injury caused to the plaintiff, in addition to the procedural costs.
28. Please describe in detail the provisional procedures and remedies available to right
holders under the laws of Venezuela, citing the relevant provisions of law and regulation, and
indicate any condition under which a right holder may avail itself of those procedures andremedies.
Provisional measures
JUDICIAL MEASURES
Copyright
(a) Article 111146 of the Law on Copyright provides that the courts may order the sequestration of
everything that constitutes infringement of the righ t of exploitation and seizure of the revenue accruing
                                                                                                                                                                    
(c) indications or affirmations whose use in the cour se of trade may mislead the public with regard to
the nature, method of manufacture, characteristics, usefulness, or quantity of the goods in question.
145 Article 17 . – Trade policies aimed at the elimination of competitors through acts of unfair
competition shall be prohibited, in particular the following acts:
1. Misleading or false publicity for the purpose of preventing or restricting free competition;2. Promotion of products and services based on false declarations concerning the disadvantages or risks
of any other product or service of competitors;  and
3. Commercial bribery, infringement of industrial secrets and the imitation of products.
146 Article 111 . - For the purposes of the exercise of the actions provided for in the foregoing Articles,
the court may order judicial inspections and expert studies, and also any other form of proof provided for in theCode of Civil Procedure.
The court may order the sequestration of everything that constitutes a violation of the exploitation right.The court may likewise order the seizure of the revenue accruing to the owner of the disputed right of
exploitation.
Sequestration and seizure shall be ordered only if the request is accompanied by proof constituting a
serious presumption of the alleged infringement, or if such presumption emerges from the production of any ofthe proof mentioned in the first paragraph of this Article.IP/C/W/252
Page 93
to the right holder provided that proof constituti ng a serious presumption of the right claimed is
furnished.
(b)  Subparagraphs (a), (b) and (c) of Arti cle 56 of Decision 351 – Common Provisions on
Copyright and Neighbouring Rights – provide that  the competent national authority may, as a
precautionary measure, order the immediate cessati on of the unlawful activities;  the attachment,
sequestration, confiscation or preventive seizure, as appropriate, of the copies produced in violation of
rights, and the attachment, seizure, confiscation or sequestration of the apparatus or materials used for
the commission of the unlawful act.
Industrial property
(a) Title XI, Chapter II, Article 246 of Deci sion 486 – Common Industrial Property Regime –
provides that the following provisional measures may be ordered:  immediate cessation of all acts
constituting the alleged infringement;  withdrawal from commercial channels of all products resulting
from the alleged infringement;  suspension of the impor tation or exportation of the goods;  establishment
by the alleged infringer of an adequate guarantee;   and temporary closure of the business belonging to
the defendant or the accused, if necessary, to avoid continuation or repetition of the alleged
infringement.
(b) Suspension of the effects of the administrative act of registering a patent or trademark whose
annulment has been sought may be requested when permitted by the law or if suspension is necessary toprevent irreparable injury or injury which it would be difficult to repair definitively, and the court may
require an appropriate guarantee for this purpose (Article 136 of the Basic Law on the Supreme Court of
Justice).
(c) As a provisional measure, suspension of the e ffects of the administrative act of registering a
patent or trademark may be requested before the competent court, under the constitutional guarantee for
the protection of rights, on the grounds of unconsti tutionality and provided that the requirements
applicable to provisional measures are met, namely, thos e of colour of title and risk in delay (Article 5 of
the Basic Law on the Protection of Constitutional Rights and Guarantees).
(d) In both cases, copyright and industrial property, any type of provisional measure or
"innominate measure" may be requested provided that the requirements laid down in the law are met(First Paragraph
147 of Article 588 of the C ode of Civil Procedure).
29. Please explain whether civil remedies afforded under the laws of Venezuela are being
applied in practice at levels "adequate to compensate for the injury the right holder has
suffered", as required under Article 45.1 of the TRIPS Agreement.
In Venezuela, the owners of intellectual property rights are increasingly aware of their rights
and the opportunities afforded by the Venezuelan system for claiming them. Action for damages is
one of the most frequently used  and it is assessed according to the profits lost or the economic
prejudice suffered by the owner of the right.  We believe that the exercise and effective application ofsuch action has acted as a deterrent and has led to a gradual reduction in offences in this area.
                                                     
147 Article 588, First paragraph : - In addition to the preventive measures set out above and strictly
subject to the requirements laid down in Article 585, the court may order the provisional measures it deems
necessary when there is a justified fear that one of the parties may cause serious injury or injury which it wouldbe difficult to repair to the rights of the other party.  In such cases, in order to prevent the injury, the court mayauthorize or prohibit the carrying out of certain acts an d adopt measures to ensure that the injury ceases.IP/C/W/252
Page 94
J. ENFORCEMENT – SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
30. Please describe in detail the procedures under the laws of Venezuela that provide for
border enforcement at least for trademark counte rfeiting and copyright piracy, identifying the
competent authority and citing the relevant provisions of law or regulation.
The relevant rules and procedures have to be complemented by domestic legislation and this
is currently under discussion in the National Assembly of the Bolivarian Republic of Venezuela in
connection with the reform of the Basic Customs Law, to which it is proposed to add a Title in this
respect that will be in harmony with the TRIPS Agreement.
Articles 250 to 255148 of Title XV, Chapter III (On Border Measures), of Decision 486 lay
down procedural regulations in this respect.  Th e owner of a registered trademark who has valid
grounds for suspecting that products infringing the trademark are to be imported or exported may
request the competent national authority to suspend customs clearance.  He must supply the authority
with the necessary information and a sufficiently detailed and precise description of the allegedly
infringing goods to allow them to be identified (Article 250 of Decision 486).
                                                     
148 Article 250 . - The owner of a registered trademark who has valid grounds for suspecting that the
importation or exportation of counterfeit trademark goods  will take place may request the competent national
authority to suspend this customs operation.  The conditions and security stipulated in the domestic legislationof the Member Country concerned shall be applicable to th is request and to such an order as that authority may
issue.
The party requesting measures to be taken at the border shall be required to supply the necessary
information and a sufficiently detailed and precise description of the goods subject to the alleged infringement
so they can be identified.
The competent national authority may, if permitted by the domestic laws of the Member Country, order
the application of measures at the border ex officio.
Article 251 . - The competent national authority shall give trademark owners the opportunity to
participate in the inspection of the detained goods in order to substantiate their claims.  The importer or exporter
of those goods shall be entitled to exercise the same right.
The competent national authority shall make all neces sary arrangements for confidential information to
be protected during the inspection procedure.
Article 252 . - Upon fulfilment of the applicable conditions and the security provisions, the competent
national authority shall order or reject the suspension of the customs operation and shall inform the applicantaccordingly.
In the event that the authority orders the operation to be suspended, the notification to the applicant
shall include the name and address of the consigner, importer, exporter, and consignee of the goods concerned,and the amount of goods to be detained.  The importer or exporter of those goods shall be likewise notified ofthe suspension.
Article 253 . - If, within ten working days after the applicant has been served notice of the suspension
of the customs operation, the plaintiff fails to initia te infringement proceedings or the competent national
authority has not taken measures to prolong the suspension, the measure shall be revoked and the detained
goods shall be released.
Article 254 . - If infringement proceedings have been initiated, the defendant may appeal to the
competent national authority, which shall decide whether to modify, revoke, or confirm the suspension.
Article 255 . - Once the existence of an infringement has been determined, such counterfeit trademark
goods as the competent national authority may have seized may not be re-exported in an unaltered state or
subjected to a different customs pro cedure, except in cases duly qualified by the competent national authority or
expressly authorized by the right holder.
Without prejudice to other rights of action available to the right holder and subject to the right of the
defendant to seek review by a judicial authority, th e competent national authority may order the destruction or
seizure of infringing goods.IP/C/W/252
Page 95
In order to substantiate his claims, the owner of the trademark may be allowed to participate
in the inspection of the goods withheld.  The importer or exporter of the goods shall enjoy the same
right.
When carrying out the inspection, the competent national authority shall take the necessary
steps to protect the confidentiality of information, where applicable (Article 251 of Decision 486).
After the applicable criteria have been met and the security deposited, the competent national
authority shall order or refuse the suspension of customs clearance and shall notify the applicant
accordingly.
If the authority orders suspension, the notification shall include the name and address of the
consigner, importer, exporter and consignee of the goods, as well as the quantity of the goods
suspended.  The suspension shall also be notified to the importer or exporter of the goods (Article 252
of Decision 486).
If the plaintiff has not initiated an action for infringement within ten working days of the date
of notification of suspension of customs clearance or the competent national authority has not
extended the suspension, the measure shall be lifted and the goods withheld shall be released
(Article 253 of Decision 486).
Where the existence of infringement has been determined, the goods bearing counterfeit
trademarks that have been seized may not be re-exported nor made subject to any other customs
procedure, except in duly specified cases or with the express authorization of the owner of the
trademark (Article 255 of Decision 486).
After infringement proceedings have been initiated, the defendant may appeal against the
measure and the competent court shall decide whether to modify, revoke or confirm the suspension
(Article 254 of Decision 486).
Without prejudice to any other action open to the owner of the right and subject to the
defendant's right to appeal to the judicial author ities, the competent national authority may order the
destruction or seizure of the infringing goods.
In addition to the aforementioned goods, at the request of the competent intellectual property
body, the customs authorities must prevent the customs clearance of goods which allegedly infringe
intellectual property rights granted in Venezuela or derived from international agreements to which
Venezuela is party.
The competent intellectual property authority may request the customs authorities, subject to
substantiation, to prevent the customs clearance of goods at any time, upon submission of sufficient
security to protect the owner of the right if ther e is any infringement, the amount being fixed by the
competent authority.
The customs authorities shall notify the owne r, importer or consignee that the goods in
question have been withheld (Article 87 of the Basic Customs Law).
31. Please indicate if border enforcement is available to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to eachform of intellectual property, citing the relevant provisions of law.
Pursuant to the Basic Customs Law in force, the procedure laid down in Article 87 applies to
any intellectual property right.  In fact, as mentioned in relation to the previous question, the
competent authority may prevent the customs clearance of goods which allegedly infringe intellectualIP/C/W/252
Page 96
property rights granted in Venezuela or derived from international agreements to which Venezuela is
party.
32. Article 58 of the TRIPS Agreement specifies procedures to be followed where the
competent authorities can act ex officio.  Plea se explain whether the competent authorities in
Venezuela are empowered to act ex officio and, if so, please identify the intellectual property
areas subject to ex officio action.
In principle, in Venezuela there are no ex offici o measures by civil courts;  such measures must
be requested in the context of judicial proceedings .  They may be enforced ex officio if they are
requested by the Public Prosecutor's Office in the course of criminal proceedings, in which case the
goods must be withheld until it is determined whether or not a punishable offence has been committed.In cases of smuggling, the goods may be destroyed.  These measures can be carried out by the frontier
customs guard, i.e. the National Guard in the course  of anti-smuggling operations, for narcotics offences
or as a result of complaints made on the basis of the Criminal Code or the commission of an offence.
It should be noted that Article 87 of th e Basic Customs Law empowers the customs
authorities to impose border measures, but as these must be requested in judicial proceedings resulting
from an investigation based on a complaint or petition, it is in fact the judicial authorities that are
competent to order them.
K. 
ENFORCEMENT – CRIMINAL PROCEDURES
33. Please describe in detail how the laws of Venezuela implement Article 61 of the TRIPS
Agreement that requires Members to have criminal procedures and penalties, including
imprisonment and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful
trademark counterfeiting and copyright infringement on a commercial scale.  Please cite the
relevant provisions of law and regulation and iden tify any pending legislation or regulation that
may affect issues related to criminal penalties and other procedures related to the investigation
and prosecution of trademark and copyright infringement cases.
The Criminal Code provides penalties for the infringement of industrial property rights and
copyright.  Article 338 of the Criminal Code, for example, specifies a term of imprisonment of one (1)
to twelve (12) months for any person who has counterfeited or altered names, trademarks or
distinctive signs belonging to intellectual works or to the products of any industry, and for any personwho has made use of legally registered names, trademarks or signs that have been so counterfeited or
altered, even if the act was carried out by a third person.  The same penalty applies to any person who
has counterfeited or altered industrial designs or has made use of them, even if the act was carried out
by a third person.
Article 339 of the Criminal Code imposes a term of imprisonment of one (1) to
twelve (12) months on any person who, for the purpose of trade, has imported into Venezuela and put
on sale or in any way circulated intellectual works or products of any industry bearing counterfeited
or altered names, trademarks or distinctive signs li kely to mislead the consumer as to their origin or
quality, if the ownership of the works, names, trademarks or signs has been legally registered inVenezuela.
Article 340 of the Code imposes a term of imprisonment of fifteen (15) days to
three (3) months on any person who has disclosed information concerning an invention, scientific
discovery or industrial application that should have  been kept secret and who has become aware of it
because of their position or employment or as a result of their profession, art or industry, as well as a
term of imprisonment of  fifteen (15) days to six (6) months if the disclosure was made to a foreigner
not resident in Venezuela or the latter's agent.IP/C/W/252
Page 97
Industrial property
Likewise, Articles 98 and 99 of the Industrial Property Law provide for a term of
imprisonment of one (1) to twelve (12) months for any person who infringes the rights of the
legitimate owner or holder of a patent, by manufacturing, making, transmitting or using for industrialpurposes and for profit unlawful or fraudulent copies of the subject matter of the patent, without the
express or tacit consent of the owner, as well as any person who, in order to prejudice the rights or
interests of the legitimate owner, uses, manufactures or makes registered trademarks, models or others
likely to be confused with them.
Articles 100 and 101 of the Industrial Property Law provide that any person who designates a
business as a branch of another business which has a registered trade name and who maliciously takesadvantage of an industrial or commercial reputation earned by the efforts of another whose property is
protected under the Industrial Property Law shall be liable to a term of imprisonment of one (1) to
twelve (12) months.
Copyright
The Law on Copyright provides for criminal penalties in Title VII, Articles 119 to 122,
without prejudice to the fact that the offence may merit more severe punishment in accordance with
the Criminal Code.
Article 119 of the Law on Copyright provides that it is an offence subject to a term of
imprisonment of six (6) to eighteen (18) months to use the title of a work, to communicate in the
original or a developed form, in their entirety or in part, intellectual works, editions of the works of
others, or texts or photographs or products obtained by a process equivalent to photography or images
recorded on cinematographic film, being equivalent to photography, or to distribute intellectual worksincluding copies of phonograms and unauthorized broadcasting or retransmission by broadcasting
organizations, without the consent of the owner of the rights concerned.
Article 120 of the Law on Copyright provides for a term of imprisonment of one (1) to
four (4) years for any person who intentionally reprod uces in the original or a developed form, in their
entirety or in part, intellectual works, editions of the works of others or texts or photographs or
products obtained by a process equivalent to photography or who imports into Venezuela, stocks,distributes, sells, or circulates unlawful reproductions thereof.
Article 121 states that the same penalty applies to any person who copies, by any means, the
performance of an actor or performer, a phonogram or a broadcast in its entirety or in part, or who
imports into Venezuela, stocks, distributes, sells or circulates such reproductions or copies(Article 121 of the Law on Copyright).
Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of Venezuela thatprovide for such remedies, and describe the circumstances in which those remedies would be
imposed, citing the relevant provisions of law or regulation.
(a) Imprisonment
Details are given in the reply to question 33 concerning the acts considered as offences in
Venezuelan legislation.  The Industrial Property Law, the Criminal Code, and the Law on Copyright
provide for terms of imprisonment which, depending on the case defined in the texts, may range from
one month to four years as punishment for offenc es which infringe intellectual property rights.IP/C/W/252
Page 98
In addition to the penalties determined therein, the draft revision of the Industrial Property
Law contains a chapter that specifies industrial property offences, for which the punishment is more
severe than that currently imposed under the Criminal Code.
(b) Monetary fines
In addition to the term of imprisonment provided in the Criminal Code and the Industrial
Property Law, a fine of Bs 50 to 1,000 applies to persons who:
(1) Without having obtained a patent or enjoying the privileges it gives, take advantage
of it as though they had obtained it;
(2) use a trademark, industrial design or model without being in possession of the
corresponding certificate of registration and indicate that the trademark, model or
design has been registered;
(3) obtain a trademark for a particular category of product and use it as a registered
trademark on products belonging to another category;  and
(4) maliciously assert that a registration is still valid even though, according to a public
declaration by the competent authority, it no longer has effect.  In cases of recidivism,
the penalty indicated in this Article shall be in the form of a proportionate term ofimprisonment (Article 102 of the Industrial Property Law).
As regards copyright, a monetary fine, independently of the fine applicable at the criminal
level, may accompany the judicial decision imposin g the cessation of the infringing activity.  A fine
was established in the revised Law on Copyright of 1993, not in relation to future infringement as wasthe case in the 1962 Law but as a result of proving the occurrence of an infringement against the
plaintiff's rights in the course of proceedings seeking a restraining order.
This means that if infringement is proved in the course of the proceedings, at the request of
the injured party the court shall order a fine not exceeding the equivalent of twenty (20) minimum
wages, which can be converted into a term of imprisonment at the rate of Bs 500 per day of
imprisonment and in cases of recidivism, the penalty may be doubled.  In addition, the amendment toArticle 95 of the repealed Law on Copyright, whic h has now become Article 109, empowers the court
to impose a fine on the infringer once infringement has been proved without having to wait until
further infringement has occurred, which was the case in the previous text.
A fine is of course independent of any conviction relating to compensation for damages.In harmony with the preceding paragraph, the draft revision of the Industrial Property Law
provides for fines and empowers the administrative authority to impose them.
Seizure, forfeiture and destruction of infringing goods and materials and implements for their
production
In industrial property cases, Article 105 of the relevant Law provides that:"Any sentence pronouncing a conviction for infringement of an industrial property right shall
order the destruction of the elements that had been used or prepared in order to commit the
offence, as well as the objects resulting from the offence."IP/C/W/252
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The Law on Copyright (Article 97) allows action or claims for the purpose of obtaining the
destruction or withdrawal of the originals or copies unlawfully reproduced and of the equipment used
for the unlawful reproduction.
The judicial ruling must endorse or refuse the withdrawal or destruction, but the equipment
used for the reproduction may not be destroyed if it can be used for the reproduction or
communication of other material (Article 110).
In exceptional cases, the unauthorized copy of a work, performance or production, or the
equipment used for the offence may have special artistic or scientific merit and if this is the case the
court will not order its destruction and is empowered to order ex officio that it be handed over to a
public museum.  Action for removal and destruction always leaves open the possibility of action fordamages.
Other measures
In Venezuela, Article 113 of the Law on Copyright provides that, at the request of the party
concerned, the court may order that the text of the ruling given in any of the actions covered by the
Law be published at the expense of the losing party in one or more newspapers specified by the court.
Although this authority can be used at the court's discretion, the order to publish the text of
the ruling has been normal practice in cases heard under civil jurisdiction in Venezuela, provided ofcourse that it has been requested by the person concerned.
In criminal cases, Article 338 of the Criminal Code allows the court to decide that the
conviction should be published in a newspaper specified by it, at the expense of the defendant.  In
contrast to what happens in civil proceedings, this authority is rarely used.
In copyright matters, the court may order the publication in the press of the adverse or
favourable judgement at the expense of the defendant or of the plaintiff, depending on the case
(Article 124 of the Law on Copyright).
Other punitive measures that may also be requested pursuant to Article 111 of the Law on
Copyright include seizure of the revenue accruing to  the owner of the disputed right of exploitation
and the sequestration of anything that constitutes infringement of the right of exploitation.  These
measures may only be ordered under this Article if th ere is proof of a serious presumption of the right
claimed or if the presumption emerges from the production of any of the evidence.  In addition to the
special rules relating to copyright, the provisions in the Code of Civil Procedure also apply so the
measures indicated do not prevent the imposition of others such as a ban on disposing of orencumbering property or measures taken on the basis of the first paragraph of Article 588 of the Code.
Appropriate measures (innominate measures) also a pply to industrial property rights if there is a
justified fear that one of the parties might cause serious injury or injury that it would be difficult to
repair to the rights of another party.
35. Article 61 also indicates that Members may provide for criminal procedures and
penalties in cases of wilful infringement of oth er forms of intellectual property.  Please describe
any provisions of the laws of Venezuela that provide for such procedures and remedies, citing
the relevant provisions of law or regulation.
The criminal procedures and penalties are fully explained in the reply to question 33, and in
criminal matters the principle of " nullum crimen, nulla poena sine lege ", no offence no penalty
without a law regulating them.IP/C/W/252
Page 100
L. STATISTICAL QUESTIONS
36. 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 2000, including the number of ca ses filed;  injunctions issued;  infringing
products seized;  infringing equipment seized;  cases resolved (including settlement);  and theamount of damages awarded.
There are no specific statistics on enforcement measures because these are the responsibility
of different authorities (administrative and judicial) and a large number of bodies.  Nevertheless, as
regards prevention and deterrence in copyright matters, since February this year there have been
102 administrative notifications by the competent national administrative authority.
As regards convictions for copyright infringement, there have not yet been any because the
cases have been resolved by mutual agreement between the parties.
37. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringeme nt for 2000, including the number of raids,
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended), and any other
information establishing that the criminal syst em operates effectively to deter copyright piracy
and trademark counterfeiting.
In the criminal sector, there have been sixty-eight (68) complaints to the judicial authorities
regarding possible infringement of copyright, but no charges have been brought.  Three (3) have
resulted in reparation in the video sector;  one (1) agreement on reparation in the software sector.
Two (2) civil sentences have been pronounced, one (1) in the video sector and one (1) in the computer
sector.
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