RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q/GTM/1
IP/Q2/GTM/1IP/Q3/GTM/1
IP/Q4/GTM/1
11 May 2001
(01-2428)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
GUATEMALA1
The present document reproduces the introductory statement made by the delegation of
Guatemala, the questions put to it and the responses given in connection with the review of legislation
undertaken at the Council's meeting of 27-30 November 2000.2
_______________
I. INTRODUCTORY STATEMENT
For the Government of the Republic of Guatemala, the protection of intellectual property
rights is of the utmost importance and this is reflected precisely in our presence at this meeting and
the opportunity it gives our country to confirm to all the Members of the WTO its firm intention of
continuing to make every effort to ensure the fulfilment and due enforcement of all the commitments
we have made in this respect, as evidenced by our efforts to adapt our legislation, despite the fact that
we are a developing country which emerged only four  years ago from a civil war that had lasted more
than three decades.
Guatemala is a country of contrasts.  Its citizens live together in a multiethnic, multicultural
and multilingual environment;  there have been splendid and worthy periods in its history which
extends from the beginning of the thousand-year old Mayan culture to our own times.  It has a
reputation for its science, its monuments, its art, and its culture, as well as for its distinguished and
humble, honest and peaceful men and women, so much  so that famous Guatemalans have received the
Nobel prize for literature and the Nobel prize for peace.  However, there have also been periods of
conflict which have made it difficult to sustain peaceful co-existence and hasten the country's
economic development.
To our satisfaction, this conflict, which had caused so much grief, ended on
29 December 1996 with the signing of the Firm and Lasting Peace Agreement.  Guatemalans now
have the satisfaction of being able to consign the times of war to the past and the wisdom acquired
from this painful experience is now guiding our nation along the still lengthy path of building real
peace and achieving economic and social development, which holds out the promise of stable
democracy, constitutionality, respect for human rights, the rule of law and economic well-being forthe entire population, to which we Guatemalans are committed.
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Guatemala under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/GTM/1;  IP/N/1/GTM/C/1/Rev.1;IP/N/1/GTM/I/1/Rev.1 and IP/N/6/GTM/1.
2 The minutes of this meeting have been circulated as document IP/C/M/29.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 2
Our people continue to face the challenge of building a new society, which has made
necessary substantial and profound changes in the political, legal and economic system.  In this
context, respect for and promotion of new rights, including the rights of authors and inventorsguaranteed by the Political Constitution of the Repub lic of Guatemala, continue to have first priority
on the national agenda.  Thus, the protection of intellectual property rights has already received the
attention of the present Government, as shown by the fact that since 1 November this year a series of
legal provisions that fully satisfy the requirements  of the TRIPS Agreement have entered into effect.
Before referring to the principle characteristics of the new intellectual property regime, I
would like to say that the legal treatment of these rights has precedents in our history dating from the
19
th century.  Traditionally, Guatemala has been a si gnatory to most of the copyright and industrial
property agreements and conventions drawn up on the American continent and in the regional context
with its sister Central American countries.  Subsequently, Guatemala went on to become a
Contracting Party to the Rome Convention, the Phonograms Convention and the Convention
establishing WIPO.  In recent years, Guatemala has strengthened the international framework for theprotection of these rights by becoming a Member of the WTO, the Berne Convention and the Paris
Convention.  It will shortly be approving the so- called new WIPO treaties of 1996.  Accordingly, we
can safely say that our country has given unequivocal indications of its firm commitment in this field
of activity.
As a result of this firm commitment, Guatemala has adopted two main legal instruments:
• The Law on Copyright and Related Rights, approved in 1998 and recently amended
with a view to improving the regulation of these rights;  and
• the Law on Industrial Property, which came into force this month.
This new body of law has replaced the previous copyright legislation of 1954, the legislation
on patents, utility models and industrial designs of 1985, and the regional convention on trademarks
and other distinctive signs signed in 1968.
The purpose of the Law on Copyright and Related Rights is to protect the rights of authors of
literary and artistic works, performers, phonogram producers and broadcasting organizations.  This
Law is based on and consistent with our country's commitments under the above-mentioned
international agreements.
The experience accumulated in the two years during which this Law has been in force has
revealed the need to broaden and clarify some of its provisions and strengthen the enforcement
regime, in order that its application may benefit authors and holders of the respective rights, byensuring that the latter are real and effectively recognized and protected.  This is reflected in the
recent approval of a series of amendments to the Law on Copyright and Related Rights, which came
into force as from the first of this month.  These amendments take into account the current
requirements imposed by the development of the new technologies for the dissemination of works and
the provisions of the new international treaties in this field agreed within WIPO.
The principal characteristics of the Law on Copyright and Related Rights include the
protection of the work from its creation, without the need for completing formalities;  and the
extension of the term of protection for all categories of works and related rights to 75 years, which
exceeds the internationally required minimum.  The rights granted to authors or holders include theright of distribution, by any means, without distinct ion as to the type of work, including the right ofIP/Q/GTM/1, IP/Q2/GTM/1,
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rental;  and the right to authorize or prohibit the importation of lawful copies of the work.  The Law
contains special provisions for the protection of computer programs and audiovisual works, defining
who may exercise the rights for commercial exploitation.
The Law establishes the important role of the Intellectual Property Registry, not only as the
competent administrative authority but also as the body responsible for spreading awareness of
intellectual property rights.  Likewise, the Law in corporates provisions concerning the organization,
functioning and supervision of collective management societies, to ensure that they fulfil the objective
of facilitating the protection and administration of the economic rights recognized by the Law.
For its part, the new Law on Industrial Property brings together in a single instrument the
rules applicable to rights in trademarks, trade names and other distinctive signs, inventions and
industrial designs, together with those intended to repress unfair competition, including rules on the
protection of trade secrets and undisclosed information.  As expressly stated in its first Article, the
purpose of this Law is "to protect, stimulate and promote intellectual creativity with applications in
industry and trade".
Among the principal characteristics of the new regime are the extension of the protection for
well-known marks to all other distinctive signs and the possibility of legally obtaining the cancellation
of a trademark if it has not been used for more than five years.  There is a prohibition on the
registration and use of geographical indications, including appellations of origin, which indicate orsuggest that the product originates in a geographical area other than the true place of origin.
Moreover, the new legal framework extends to 20 years the period of validity of the rights
derived from a patent and establishes the possibility of accepting the patentability of products and
processes in any field of technology, including  plants and animals produced by non-biological
processes.  The patentability of pharmaceutical and agricultural chemical products is effective from
the entry into force of the Law, notwithstanding the fact that the obligation to protect will be
enforceable from 1 January 2005.  With regard to plant varieties, the Law adopts a combined system
of protection, as the patentability conditions and the scope of the rights are special.
There are two ways in which industrial designs can  be protected:  one without formalities, for
three years from first disclosure, which favours the protection of textile designs;  and the other byregistration, for up to 15 years.  The protection granted without formalities does not exclude the right
to obtain the protection derived from registering the design.
Likewise, the Law provides for modern and flexible administrative procedures designed to
promote the full recognition and exercise of the corresponding rights, including under certainconditions a reduction in the fees payable by the inventor.
With respect to the enforcement of intellectual  property rights, both laws incorporate special
provisions for repressing infringements and preventing future violations.  In fact, the new Guatemalan
intellectual property regime includes an original set of procedural provisions designed to ensureproper observance of the rights that it regulates.  The provisional measures available to right holders
include the seizure of infringing products, the suspension of sanitary licences for unlawful products,
and the suspension by customs of the importation or exportation of goods that infringe trademarks or
copyright to prevent their being illegally marketed.  There is also provision for oral proceedings.
which concentrate the procedural activities in hearings in order to deal with civil claims moreexpeditiously, although, if the parties involved so agree, their disputes may be submitted for arbitral
conciliation under a specific law.  The right of public action for the prosecution of offences against
intellectual property property rights has been re-established together with the creation of a Special
Public Prosecutor's Office.  Similarly, the Penal Code has been amended in order to establish, firstly,IP/Q/GTM/1, IP/Q2/GTM/1,
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an appropriate characterization of the infringing behaviour in accordance with the new substantive
provisions and, secondly, fines and prison sentences to act as a deterrent.
We are aware that the situation is evolving rapidly on a world-wide scale, so that our
commitment calls for a continuing effort.  Among other things, we have the following activities
currently on our agenda:
• Promoting approval of the new 1996 WIPO Treaties;
• promoting approval of the draft law exte nding the protection for lay-out designs of
integrated circuits;
• spreading awareness of intellectual property rights;
• training the authorities responsible for applying the new legislation;
• including in school curricula, together with a knowledge of human rights, the
principles of respect for creativity and human expression in all its forms, with a view
to instilling in new generations of Guatemalans a culture of respect for these rights;
• coordinating the efforts of all the institutions involved to promote and protect
intellectual property rights for the purpose of contributing to the country's socio-
economic development;
• encouraging at Central American regional level the establishment of common
intellectual property provisions that promote the current process of regionalintegration.
Guatemala firmly believes that the effective protection of intellectual property rights is not an
end in itself, but an important factor in economic development which should form part of any national
agenda, since the recognition and encouragement of creativity and innovation stimulate a country's
productive development.  Guatemala will continue making every effort to promote and provide
appropriate and effective protection for intellectual property rights.
II. RESPONSES TO QUESTIONS PUT BY CANADA
1. Please describe the way that the enforcemen t of intellectual property rights has been
implemented (Articles 41-61 of the TRIPS Agreement).
Articles 41 and 42
To ensure the enforcement of intellectual property rights, both the Industrial Property Law
and the Law on Copyright and Related Rights allow the right holder to bring legal proceedings,
whether civil or criminal, to protect his rights against infringement or to prevent or halt aninfringement and avoid its consequences.  There is no provision for such remedies under
administrative procedures.
Civil proceedings follow the trial procedure la id down in the Code of Civil and Commercial
Procedure (Articles 182 of the Industrial Property Law and 133 of the Law on Copyright and RelatedRights), without prejudice to the possibility of the parties involved resorting to alternative means of
dispute settlement such as conciliation and arbitration, which are regulated by a special law.  InIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
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criminal cases, it is for the Public Prosecutor to prosecute those responsible, although the right holder
or licensee may initiate the prosecution by filing a complaint for violation of his rights or join
proceedings initiated ex officio (Articles 206 of the Industrial Property Law and 128 of the Law on
Copyright and Related Rights).
In addition, even before any of the above-mentioned actions is initiated, it is possible to
request precautionary measures or orders to protect rights, prevent infringements or obtain and
preserve evidence (Articles 186 and 207 of the Industrial Property Law and Articles 128 bis and
133bis of the Law on Copyright and Related Rights).  Border measures suspending the importation or
exportation of goods that injure or infringe the rights of a trademark proprietor or copyright holder
may also be ordered (Articles 190 of the Industrial Property Law and 129 of the Law on Copyrightand Related Rights).
Article 43
As regards the powers of the judicial authorities to order a party to a proceeding to produce
evidence which lies within its control, neither the Industrial Property Law nor the Law on Copyright
and Related Rights contains any such provisions.  However, Article 182 of the Code of Civil and
Commercial Procedure, which is residually applicable, does provide for such authority, albeit limited
to documentary evidence.
This Article stipulates that when one of the parties to a proceeding needs to use a document
which, it alleges, lies in the control of the opposing party, it must produce a copy thereof or, at least,
all the information available to it concerning its contents and, moreover, prove that the document is or
was in the possession of the opposing party.
According to the same provision, in these circumstances the Court may order that the
opposing party be warned to hand over the document within the time-limit fixed by the Court itself
and if it does not hand over the document or produce contrary information, the Court may decide to
accept the text of the document provided by the party requesting disclosure or declare that the
information supplied concerning its contents is to be considered accurate for the purposes of the
proceedings.
If the evidence concerning the existence of the document in the control of the opposing party
is contradictory, the Court will reserve the aforementioned ruling for the definitive judgement, on
which occasion it will in its wisdom, draw the appropriate conclusions from the statements of the
parties and the evidence submitted.
There are various provisions in the Guatemalan legislation for the protection of confidential
information.  In principle, while fundamentally guaranteeing that administrative acts, like judicial
proceedings, will be public, the Constitution provides, as an exception, for the case in which someone
may have supplied data under a guarantee of confidentiality.
In Article 194 of the Law on Industrial Property there is an express reference to the obligation
to protect confidential information, where the judicial authorities, having ordered a border measure,
authorize the person granted the measure free access to the goods or products detained in order that he
may inspect them and obtain further evidence in support of his claim.
Likewise, Article 199 of the Law on Industrial Property, which enunciates the principle of
reversal of the burden of proof in cases of claims for infringements of a patent-protected process,
recognizes that in the submission of any evidence to the contrary, account must be taken of theIP/Q/GTM/1, IP/Q2/GTM/1,
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legitimate interests of the defendant regarding protection of his trade secrets, although this does not
relieve him of the burden of proving that he uses a process different from the one protected by patent.
Again, Article 129 of the Code of Civil and Commercial Procedure sets out the general rule
that evidence can be submitted confidentially when, on account of the nature of the evidence, the
judicial authority deems it appropriate.
Finally, Article 63 of the Judicial Organization Law, while enunciating the principle that acts
and proceedings of the courts of the Republic are public, admits as exceptions to that principle cases
where, by legal order or on grounds of public morality or security, they must be kept confidential.
Thus, this provision authorizes the court to declare, in very special cases and under its strictresponsibility, acts or proceedings confidential.
Article 44
In accordance with Article 185 of the Industrial Property Law and Article 134 bis of the Law
on Copyright and Related Rights, in ruling that any of the actions for the protection of intellectual
property rights is applicable, the judicial authorities must, in addition to determining the merits,
depending on the case and in the light of the need  for proportionality between the seriousness of the
infringement, the remedies ordered and the interests of third parties, order the cessation of the
infringing acts or acts of unfair competition and the adoption of the measures necessary to prevent theconsequences and avoid a repetition thereof, as well as the award of damages.  According to express
provisions of both laws, in both civil and criminal actions the Courts may also order, as a precaution,
an immediate halt to the use, application and marketing of the infringing products and any measure
necessary to avoid the continuation or repetition of the infringement.
Article 45
Article 1645 of the Civil Code establishes the general rule that anyone causing harm or
prejudice to another, whether intentionally or by neglect or carelessness, is required to make good the
act, except where it can be demonstrated that the harm or prejudice was a result of inexcusable
negligence or fault on the part of the victim.  The Judicial Organization Law also includes a general
provision establishing that, in the event of an award of damages, the ruling shall specify the net
amount.  The provision adds that, if this is not possible, the ruling shall establish at least, in
accordance with what has been requested, the basis for determining the assessment of the points at
issue, or for the fixing of the amount by experts.
The Industrial Property Law establishes in Article 185(e) that in a judgement declaring any of
the actions provided for in the Law applicable the court must rule on the award of damages.  A similar
rule is set out in Article 134 bis(d) of the Law on Copyright and Related Rights.
As to the matter of attorneys' fees, Article 572 of the Code of Civil and Commercial
Procedure sets out the general rule that each party to the proceeding is directly liable for costsincurred for the actions it takes or requests.  On the other hand, the rule also establishes that in the
event of an order to pay costs, the losing part y shall compensate the other for all the necessary
expenses it has caused.  Indeed, Article 573 of the same Code sets out the general requirement that the
court, in its final ruling, must order the losing party to pay the other party's costs.  This requirement to
pay costs is subject to exceptions in instances where judicial action has obviously been taken in goodfaith, where the claim or counterclaim involves exaggerated pretensions, where the judgement takes
account solely of part of the fundamental pretension s of the claim or counterclaim, where defences of
importance invoked by the losing party are admitte d, where neither party wins or where the defendant
accepts the claim.IP/Q/GTM/1, IP/Q2/GTM/1,
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Furthermore, Article 578 of the Code of Civil and Commercial Procedures specifies the
following as being part of the reimbursable costs:  the fees of the chief attorney, notaries, attorneys,
experts, depositaries and administrators;  as well as costs incurred for seizures, injunctions, orders,publications, certifications, inventories, entries in registers and compensation of witnesses for their
time and travel costs.  This rule makes it clear that judicial orders shall not entail personal costs other
than travel expenses, payments for vehicles, transport and communications and purchases of
substances or other articles necessary to ascertain a fact.
Article 46
The disposal of the infringing goods outside the channels of commerce may be ordered
definitively (in the ruling that closes the proceeding) and/or provisionally.  Article 185(a) of the
Industrial Property Law stipulates that in a judgemen t declaring any of the actions provided for in the
Law applicable, the Court must, as appropriate, order that the infringing goods be disposed of outside
the channels of commerce or destroyed, principally when they affect or may affect human or animalor plant life or health or the environment.
Similarly, Article 185(b) of the Industrial Property Law stipulates that, in the judgement, the
court must also, where appropriate, order that materials/implements the predominant use of which has
been in the creation of the infringing goods be , without compensation of any sort for the owner,
disposed of outside the channels of commerce or destroyed as articles of unlawful trade, in such a
manner as to minimize the risks of further infringements.
Moreover, Article 187(e) of the Industrial Property Law specifies that, among the measures
designed to protect the rights of the plaintiff or petitioner, the court may order the immediate cessationof marketing of the infringing products, together with the seizure and removal to court warehouses of
the infringing products and the materials used to commit the infringement, including their destruction
where they are causing harm or constitute a risk to human, animal or plant life or health or to the
environment.
Likewise, the Law on Copyright and Rela ted Rights establishes in Article 134 bis that in a
judgement declaring any of the actions provided for in the Law applicable the court must, in addition
to determining the merits, order that the infringing goods be disposed of outside the channels of
commerce or destroyed as articles of unlawful trade.  Article 133 bis of the same Law also stipulates
that the court may order, as a provisional remedy, any measure necessary to prevent the continuation
or repetition of the infringement, including seizure of the infringing products and the equipment and
materials resulting from or used to commit the in fringement, and the means used to carry out the
infringement.  According to the same Article, the confiscated products may be destroyed where they
are causing harm or constitute a risk to human, animal or plant life or health or to the environment.
Article 47
Neither the Industrial Property Law nor the Law on Copyright and Related Rights provides
for such a possibility.  Similarly, none of the procedural provisions which residually apply or which
establish the civil and criminal procedures grants an y power to the court to issue an order of this kind.
However, the Law for the Protection of the Subjects of Proceedings and Persons Connected
with the Administration of Criminal Justice establishes, inter alia , protection for witnesses, experts,
consultants, related complainants and other persons exposed to danger on account of their
participation in criminal proceedings.  Such protection may include personal safety measures, change
of residence, change of identity and any other changes that the Administrative Board of this systemIP/Q/GTM/1, IP/Q2/GTM/1,
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may determine.  Any of the benefits contained in the above-mentioned Law may be granted only on
the basis of a prior study that must take into account such factors as the danger to which the person
requesting the benefit is exposed, the gravity of the punishable act and its social significance, as well
as the evidentiary effect of the declaration in in criminating the participants, both intellectual and
material, in the criminal act and whether the declaration might lead to the identification of the
participants in any other criminal acts related to that which is the subject of investigation.
Article 48
Under Article 537 of the Code of Civil an d Commercial Procedure, whoever obtains
enforcement of a protective measure or order shall be required to pay the other party costs anddamages in any of the following circumstances:
- If the application is not filed within the legal time-limit (15 days);- if the order is revoked;  or- if the application is declared inadmissible.The Industrial Property Law (Article 195) and the Law on Copyright and Related Rights
(Article 132) contains similar provisions for de termining the liability of those who request border
measures with respect to the importer, the c onsignee and the owner of the goods detained.
In order to ensure that these provisions are effective, Article 186 of the Industrial Property
Law and Article 133 bis of the Law on Copyright and Related Rights stipulate that in the event of any
application for a protective measure or order, the court may, if it deems it appropriate, include in theruling in which such measures are decreed a requirement, that prior to their application, sufficient
security or other assurance should be provided to prevent abuse and to protect the party affected by
the measure and the authorities themselves against any damage or injury which might ensue.  These
provisions are applicable to border measures (Articles 191 of the Industrial Property Law and 130 of
the Law on Copyright and Related Rights).
The authorities who order a measure will be exempt from liability if they acted in good faith.
Article 49
The Guatemalan legislation does not provide for administrative procedures for enforcing
intellectual property rights.
Article 50
In conformity with Article 530 of the Code of Civil and Commercial Procedure, which is
residually applicable, whoever has good reason to fear that during the time necessary to enforce hisright that right will be threatened by imminent and irreparable damage may request the court in
writing to grant such urgent measures as would appear, according to the circumstances, to be most
appropriate in order provisionally to ensure the effectiveness of the decision on the merits.  This
provision is also included in the first paragraph of Article 186 of the Industrial Property Law and in
Article 133 bis of the Law on Copyright and Related Rights.
Under the Guatemalan legislation, anyone initia ting or intending to initiate an action relating
to industrial property rights or acts of unfair competition may request the court to order protective
measures.  The court, provided it has been given proof of the ownership of the right infringed andIP/Q/GTM/1, IP/Q2/GTM/1,
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evidence indicating a reasonable presumption of in fringement or the imminence thereof, has the
authority to order forthwith the measures requeste d within a period of not more than two days from
the presentation of the application and, if it deems it advisable, can in the same ruling require that
prior to the execution of such measures the applicant shall provide security or other assurancesufficient to protect the party affected by the measure and the authorities themselves and also to
prevent abuse.  In the latter case, the measure must be executed within 48 hours of security being
given (Articles 186 of the Industrial Property Law and 133 ter of the Law on Copyright and Related
Rights).
When a protective measure is ordered before the main action is initiated, it will automatically
lapse if the person obtaining it does not file a complaint within 15 days of the date on which it wasexecuted (Articles 186 of the Industrial Property Law and 133 ter of the Law on Copyright and
Related Rights).
Among the measures that may be taken to prevent an infringement, prevent infringing goods
from entering channels of commerce or preserve evidence relating to an alleged infringement,Articles 187 of the Industrial Property Law and Article 133 bis of the Law on Copyright and Related
Rights stipulate that the judicial authorities may order:
- An immediate halt to the use, application, disposal and marketing of the infringing
products and the unfair acts;
- an immediate halt to the infringement alleged by the right holder;- seizure of the infringing products, including containers, packets, packaging, labels,
printed or advertising materials, machinery or other materials connected with theinfringement or used to commit it, and of the means principally used to carry out the
infringement;
- prohibition of the importation of the aforementioned products, materials or means;- confiscation and removal to court warehouses of the aforementioned products,
materials or means;
- suspension or cancellation of registrations or sanitary licences or licences of any other
kind necessary for the admission, distribution, sale or marketing of the infringing
products;
- judicial inspection of places, documents or objects that have a bearing on the right
infringed;  and
- any other measure necessary to prevent the continuation or repetition of the
infringement or acts of unfair competition.
The last paragraph of the above-mentioned Article 187 of the Industrial Property Law makes
it clear that mere removal of the marks illegally used or affixed will not prevent the protective
measures ordered from remaining in force and neither will it be sufficient for the goods or products to
enter the channels of commerce.
It is important to note, that under Article 188 of the Industrial Property Law and
Article 133 quater  of the Law on Copyright and Related Rights, once a protective measure or order
has been granted to ensure the results of a proceeding regarding a claim for restoration in a civil orIP/Q/GTM/1, IP/Q2/GTM/1,
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commercial action, it cannot be deprived of its ef fect by means of a bond or security, which may only
be lodged so as to lift measures to ensure a claim for compensation.
Again, in accordance with Article 189 of the Industrial Property Law, the petition for
protective measures or the complaint itself may contain a request for a judicial inspection of places,
documents or objects that have a bearing on the right infringed, or where it is alleged that acts leading
to the infringement of industrial property rights or acts of unfair competition are being committed or
prepared, in which case the court will order and execute it without requiring any security.  In order to
follow this up, according to the above-mentioned provision, the ruling ordering a judicial inspection
will implicitly include the use of a search warrant.
Such judicial examination may be supplemented by the presence of experts designated by the
applicant or by the court itself;  likewise, the court may order that movables or documents be
produced.  On application by a party and at the c ourt's discretion, scientific methods of obtaining
evidence may also be used, photographs taken or audiovisual recordings made of the objects or places
inspected, while documents may be examined and copied by any means.
In connection with the judicial inspection the court may order the protective measures that
have been requested and, where appropriate, establish the amount of the corresponding guarantee, in
accordance with the provisions of the above-mentioned Article 186 of the Law.  If, within the next
five days, the applicant has not provided or constituted the security fixed, the court will order thelifting of the measures decreed.
Articles 51, 52, 53, 54, 55, 56, 57, 58, 59 and 60
Both the Industrial Property Law and the Law on Copyright and Related Rights allow the
holders of a registered trademark or a protected work or phonogram, or their licensees, to request the
suspension of customs clearance and release of the goods or the export process, but only in the case of
pirated goods may the suspension of clearance be requested directly from the customs authorities
(Articles 190 of the Industrial Property Law and 129 of the Law on Copyright and Related Rights).  In
both cases, the procedure applicable is the same as that laid down in the two laws for requesting
provisional measures or orders, to which reference has already been made, including with respect to
the submission of the request, the production of evidence and the possibility of security or otherequivalent assurance being required.
The suspension of imports or exports will remain in force for a period of ten days from the
date of notification of the relevant ruling.  This period may be extended for a further ten days only if
the goods are counterfeit goods that infringe a trademark right;  however, where the importation of
counterfeit or pirated goods is concerned, the measure may be confirmed as a precautionary measure
(Articles 193 of the Industrial Property Law and 130 of the Law on Copyright and Related Rights).
Once a measure has been ordered, the person requesting the measure must be allowed to
inspect the products detained to obtain further evidence in support of his claim (Articles 131 of the
Law on Copyright and Related Rights a nd 194 of the Industrial Property Law).
According to Article 190 of the Industrial Property Law, imports of a non-commercial nature
contained in travellers' personal luggage may not be suspended.IP/Q/GTM/1, IP/Q2/GTM/1,
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Article 61
As already indicated, in criminal cases the Department of Public Prosecutions is responsible
for taking criminal proceedings against the accused although the holder or licensee of the rightsinfringed may initiate the prosecution by reporting the infringement of his rights or join in a
prosecution initiated ex officio (Articles 206 of the Industrial Property Law and 128 of the Law on
Copyright and Related Rights).
The courts with jurisdiction in the place where the offence was committed are competent to
try criminal cases of intellectual property right infringement.
With respect to criminal procedures, please consult Guatemala's replies to questions 22, 23,
24 and 25 of the WTO Secretariat's check-list of issues on enforcement.
In keeping with the classification of infringing conduct set forth in Articles 274 and 275 of
the Criminal Code, infringements affecting all intellectual property rights recognized under therelevant laws are subject to the prescribed criminal procedures and penalties.
Article 274 of the Criminal Code determines the following types of conduct as offences
against copyright and related rights:
(a) The false attribution of the status of author and/or copyright holder, performer,
phonographic producer or a broadcasting entity;
(b) the deformation, mutilation, modification or any action that causes injury to the
integrity of the work or to the honour and reputation of the author;
(c) the reproduction of any work, interpretation or performance, phonogram or broadcast,
without the authorization of the author or relevant right holder;
(d) the adaptation, arrangement or transformation of a protected work or part thereof,
without the authorization of the author or the right holder;
(e) the communication to the public by any means or procedure of a protected work or a
phonogram, without the authorization of the relevant right holder;
(f) the distribution of unauthorized reproductions, total or partial, of a protected work or
a phonogram, whether by means of sale, rental, lease, rental with the option to buy,loan or in any other form;
(g) the sound fixing, reproduction or communication to the public, by any means or
procedure, of an artistic performance without  the authorization of the performer or the
right holder;
(h) the sound fixing, reproduction or retransmission of a broadcast, transmitted by
satellite, broadcasting or by wire, cable, fibre optics or any other procedure, without
the authorization of the owner;
(i) the communication to the public of a broadcast or transmission in a place to which the
public can gain access by the payment of an admission fee, or otherwise, for the
purposes of consuming or purchasing product s or services without the authorization
of the relevant right holder;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 12
(j) the publication of a protected work with the title changed or removed, with or without
being altered;
(k) the decodification of programme-carrying signals of any kind transmitted by satellite
or any other means of telecommunication, without the authorization of the legitimatedistributor;
(l) any act that circumvents or attempts to circumvent a technological measure
implemented by the author or the holder of the relative right or the holder of a related
right to avoid the unauthorized use of any kind of work, phonogram, artistic
performance or a broadcast;
(m) any act that induces, permits, facilitates or conceals an infringement of any of the
exclusive rights pertaining to the authors, copyright holders, performers, phonogramproducers or broadcasting organizations;
(n) the unauthorized removal or alteration of any electronic information concerning the
collective management of copyright or related rights;
(o) the unauthorized distribution, marketing, promotion, importation, broadcasting or
communication to the public of works, artistic performances, phonographicproductions or broadcasts, in the knowledge that the electronic information
concerning the collective management of any of those rights has been removed or
altered without authorization;
(p) the transportation, storage or concealment of reproductions or copies, in any physical
medium, of protected works, phonograms, artistic performances or broadcasts, madewithout the consent of the author or relevant right holder concerned;
(q) the collection of financial benefits for the use of protected works, artistic
performances, phonograms or broadcasts belonging to broadcasting organizations, or
engaging in any other activities proper to a collective management company, without
being authorized to do so;
(r) the publication of an unpublished work without the consent of the author or relevant
right holder;
(s) the full or partial translation of a work without the authorization of the author or
relevant right holder;
(t) the unauthorized distribution of original or legitimate reproductions of a protected
work or a phonogram, whether by means of sale, rental, rental with the option to buy,
loan or in any other way;  and
(u) the importation or exportation of the original or reproductions of any protected work
for their commercial exploitation, in any type of medium, or of phonograms, without
the authorization of the relevant right holder.
As regards industrial property, Article 275 of th e Criminal Code establishes that the following
types of conduct are offences against those rights:IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 13
(a) Introducing into commerce, selling, putting up for sale, storing or distributing
products or services covered by a registered distinctive sign or by an imitation or
counterfeit thereof in connection with products or services identical or similar to
those protected by the registration;
(b) using in commerce a protected trade name, advertising emblem or slogan or sign;
(c) introducing into commerce, selling, putting up for sale, storing or distributing
products or services covered by a registered distinctive sign, after having totally or
partially altered, replaced or removed it;
(d) using, putting up for sale, storing or distributing products or services that carry a
registered mark that is similar enough to be confused with another registered mark,
after a decision has been issued ordering cessation of the use of that mark;
(e) manufacturing labels, containers, wrappings, packaging or other similar materials that
reproduce or contain the registered sign or an imitation or counterfeit thereof, as well
as marketing, storing or possessing such materials;
(f) refilling or re-using for any purpose, containers, wrappings or packaging bearing a
registered distinctive sign;
(g) using in commerce any labels, wrappings, containers and other means of packaging
or packing of products or of identifying the services of a trader, or copies, imitations
or reproductions thereof that could prove misleading or create confusion as to the
origin of the products or services;
(h) using or exploiting another person's business secret, as well as any act of marketing,
disclosure or improper acquisition of such secrets;
(i) revealing to a third party a business secret obtained through one's work, position,
post, profession, business relationship or by virtue of a licence of use, after having
been advised of the confidential nature of that information;
(j) procuring a business secret, by any means, without the permission of the person who
keeps it or of its authorized user;
(k) manufacturing, processing, marketing, putting up for sale, placing in circulation,
storing or possessing products covered by a patent belonging to another person;
(l) using a procedure covered by a patent belonging to another person or engaging in any
of the actions set out in the preceding subparagraph, in connection with a product
obtained directly by that procedure;
(m) manufacturing, processing, marketing, putting up for sale, placing in circulation,
storing or possessing products which in themselves or in their presentation reproduce
a protected industrial design;
(n) in connection with a product or service, using in commerce, a false geographical
indication or one that could mislead the public as to the origin of that product or
service or the identity of the product, the ma nufacturer or the trader who distributes it;
andIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 14
(o) in connection with a product, using in commerce, a false or misleading appellation of
origin, even when the true origin of the product is indicated, a translation of the
appellation is used, or is used in conjunction with expressions such as "type", "kind",
"manner", "imitation" and the like.
Articles 274 and 275 of the Criminal Code prescribe one to four years' imprisonment for
persons committing offences against various intellectual property rights and, moreover, specify
monetary penalties in the form of a fine to be set by the court, ranging from a minimum of
1,000 quetzales to a maximum of 500,000 quetzales.
Furthermore, under Article 358 of the Criminal Code:  "Anyone perpetrating an act described
as one of unfair competition, shall, pursuant to the provisions in that regard set forth in the Industrial
Property Law, incur a fine of 50,00 to 100,000 quetzales, except where the act is one of the industrial
property right infringements classified under Article 275 of this Code."
In both cases, in criminal proceedings, in addition to the penalties already indicated, the
aforementioned provisions of Articles of the Industrial Property Law and 134 bis of the Law on
Copyright and Related Rights apply.  These Articl es provide, without distinction as to the right
protected, for the possibility of the judgement ordering the confiscation, seizure or destruction of the
infringing goods and any materials or accessories used predominantly for committing the offence.
2. What protection does your copyright legislation afford to "foreign works"?
Article 7.8 of the Berne Convention establishes that a work's term of protection is the term
established by the law of the country where protection is claimed.  Since both the TRIPS Agreement
and the Berne Convention establish the minimum protection required internationally, Article 18 of the
Convention requires the application of such protection to works which have not fallen into the publicdomain in the country of origin and have not fallen into the public domain of the country where
protection is claimed.
In this respect, Article 135 of Guatemala's Law on Copyright and Related Rights establishes
that the provisions of the Law apply to:
(a) National works that have not fallen into the public domain;  and(b) foreign works which have not fallen into the public domain in the country of origin,
on the understanding that if the term of protection in the country of origin is greater
than that under Guatemalan legislation, the term of protection provided for in
Guatemalan law would apply, as establishe d in Article 7.8 of the Berne Convention
and Article 43, paragraph 3 of the Guatemalan Law.
Although Guatemalan law does not contain any express provision in this connection,
Article 14 of the TRIPS Agreement applies automatically since, as the TRIPS Agreement is an
international instrument duly approved and ratifi ed by Guatemala, it is fully and automatically
operative under the terms of Article 65 of that Agreement, without any reservation and without need
for further elaboration in national legislation.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 15
III. RESPONSES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
A. GENERAL
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 under Article 8 of the TRIPS
Agreement.  If yes, please explain how such measures are consistent with the provisions of the
TRIPS Agreement.
The Guatemalan legislation does not currently include any intellectual property provisions for
promoting or protecting specific sectors.  However, under the Industrial Property Law, there isprovision for not granting patent protection to inventions whose commercial exploitation is necessary
to protect human, animal or plant life or health or the environment (Article 92(c)).
B. C
OPYRIGHT 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 and
the Appendix to the B erne Convention (1971)).
The Law on Copyright and Related Rights is fully adapted to the provisions of the Berne
Convention, including those to which Article 9.2 of  the TRIPS Agreement expressly refers.  The Law
contains appropriate provisions concerning works, right holders, moral and economic rights, the
exceptions or limitations applicable in certain cases of unauthorized use, terms of protection, special
rights such as droit de suite , etc.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Computer programs are protected on the same terms as literary works.  The protection
extends both to operating programs and to application programs, whether in source code or object
code and regardless of the form or mode of expression.  Technical documentation and program user
manuals benefit from the same protection as is provided for computer programs (Article 30).
Compilations or databases, whether in machine-readable or any other form, are considered
collections of works for protection purposes.  Protection does not extend to the data or material
contained in the compilations, nor does it prejudge the copyright in such data or material (Article 35).
4. Please state whether your legislation provides for a rental right and, if so, the works to
which it applies.
Under Article 21 of the Law on Copyright and Related Rights, the owner of the copyright or
those who have been expressly authorized by him ha ve the right to use the work, without distinction
as to type, by any means or process or in any form.  Thus, they may authorize, among other acts, the
distribution to the public of the original or copies of the work, whether by sale, rental or loan.  These
rights are not exhausted by authorized distribution by sale.
Likewise, with reference to computer programs, Article 31 of the Law specifies that the right
of rental is not applicable to rentals the essential subject-matter of which is not the program in itself.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 16
Where related rights are concerned, Article 58 stipulates that the right of distribution includes
the right to authorize the distribution of phonograms, whether by sale or rental or any other means.
Where distribution takes place by means of sale, the right is exhausted on the first such sale, subject to
legal exceptions.  Where distribution takes place by means of rental, the placing on the market of theoriginal or authorized copies of the phonogram does not exhaust the right.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
The Guatemalan Law recognizes the rights of related right holders, which are established
separately for each category as follows:
- Performers who, under Article 53 of the Law, have the exclusive right to authorize or
prohibit the fixation, reproduction, communication to the public by any means,
broadcasting or any other form of use of their performances.  Performers in
audiovisual works are excluded from this provision.  Where a phonogram publishedfor commercial purposes is used in any form of communication to the public, the
performers whose performances have been fixed thereon are entitled to remuneration.
Article 54 stipulates that, unless otherwise provided, the following shall be
understood:
(i) Authority to broadcast does not imply authority to allow other broadcasting
organizations to transmit the performance;
(ii) authority to broadcast does not imply authority to record the performance;
(iii) authority to broadcast and fix the performance does not imply authority to
reproduce the fixation;
(iv) authority to fix the performance and to reproduce the fixation does not imply
authority to broadcast the performance using the fixation of reproductions
thereof.
Likewise, according to Article 57 of the Law, performers have the personal, unrenounceable,
inalienable, and perpetual right to associate their name or artistic pseudonym with their performance
and to object to any distortion or mutilation thereof.
- Phonogram producers who, on the basis of Article 58 of the Law, have the exclusive
right to authorize or prohibit the direct or indirect reproduction, the distribution and
the communication to the public or any other form or means of use of their
phonograms or reproductions thereof, and also the making available to the public of
those phonograms by any means that would enable members of the public to have
access to them from a place and at a time of their individual choosing.  The right ofdistribution includes the right to authorize the distribution of the phonograms,
whether by sale or rental or by any other means.  Where distribution takes place by
means of sale, the right is exhausted on the first such sale, subject to legal exceptions.
Where distribution takes place by means of rental, the placing on the market of the
original or authorized copies of the phonogram does not exhaust the right.  The rightof importation includes the right to authorize or prohibit the importation of copies of
legally manufactured phonograms and to prevent the importation of copies
manufactured without the authority of the owner of the rights.  Article 59 clearly
establishes the obligation upon anyone who performs a phonogram published forIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 17
commercial purposes in public or causes it to be so performed to obtain prior written
authority from the producer thereof and to pay him remuneration.
- Broadcasting organizations which, in accordance with Article 62 of the Law, enjoy
the exclusive right to authorize or prohibit:
(i) The fixation of their broadcasts on a physical material or medium, including
the fixation of any image or sound or isolated images and sounds in a
broadcast;
(ii) the reproduction of fixations of their broadcasts by any means that is known
or may become known;
(iii) the retransmission of their broadcasts by any means or process that is known
or may become known;  and
(iv) the communication of their broadcasts to the public in places to which the
public has access on payment of an admission charge or places to which the
public has access for the purpose of consuming or purchasing goods or
services of any kind.
The same Article affords equivalent protection to original organizations or stations which
broadcast by cable, fibre optics or a similar process.
Follow-up question
Please explain how the current exclusion from the protection of performers of
audiovisual works, according to Article 53 of the Guatemalan Law, complies with Article 14.1 of
the TRIPS Agreement.
The provision in Article 53 of the Law on Copyright and Related Rights, excluding
performers in audiovisual works from the rights which the same Article accords to performers in
general, should be interpreted in terms of the applicability, in a specific case, of Article 27 of the sameLaw which establishes special provisions for audiovisual works.
According to Article 27, in a contract for the production of an audiovisual work:"… the economic rights therein shall be presumed to have been assigned exclusively and
without limitation to the producer.  It shall also be presumed that the producer has been
authorized to decide whether or not the work should be disclosed, to adapt it in accordance
with various formats for its fixation and disclosu re, and bring action to protect moral rights in
the audiovisual work."
The presumption established in this Article allows for an express agreement to the contrary,
so that in this case the performers of audiovisual works would have the rights mentioned in Article 53
of the above-mentioned Law, and therefore the exclusion at the end of the first paragraph of
Article 53 of the Law would not be applicable.
Furthermore, it should be borne in mind that the rights established in Article 14.1 of the
TRIPS Agreement are minimum rights that Members must grant performers, so that the exclusion in
Article 53 of the Law would apply only to those rights established in the same Article which are
additional to the above-mentioned minimum rights recognized by the TRIPS Agreement.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 18
6. 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.
Title IV of the Law on Copyright and Related Rights establishes the cases in which the rights
of authors and holders of related rights are limited.  The situations covered are special cases that do
not conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate
interests of the right holder.
The limitations established include the cases of free use mentioned in Articles 10 and 10 bis of
the Berne Convention, which are regulated in Articles 64(a) and 66(a), (b), (c) and (d), and the
reproduction or communication of a work necessary for the purpose of judicial or administrative
proceedings (Articles 63(c) and 64(c)).
In addition, the following are exceptions to reproduction and communication rights:(a) The individual reproduction of a work by a non-profit-making library or archive
where the copy is in its permanent collection, for the purpose of preserving the said
copy and replacing it in case of need, or alternatively for the replacement of a similar
copy in the permanent collection of another library or archive where that copy hasbeen mislaid, destroyed or rendered unusable, provided that it is not possible to
acquire the copy in a reasonable time, or on reasonable terms (Article 64(b));
(b) the reproduction of a work of art on permanent display in a public place, or on the
outer wall of building, such reproduction being done in a medium different from thatused for the making of the original, provid ed that the name of the author, if known,
the title of the work, if available, and the place in which it is located are specified
(Article 64(d));  and
(c) communication that occurs in an exclusively domestic environment, provided that no
economic interest exists and that the communication is not disseminated
(Article 63(a)).
As regards related rights, limitations are placed on the rights of phonogram producers and
broadcasting organizations only in the following cases:
(a) The performance of phonograms and the receiving of radio or television broadcasts
shall be lawful where it is done for the purposes of demonstration to customers in
business establishments that display and sell receiving, reproduction or other similar
apparatus or audio or audiovisual media that embody the works used (Article 70);
and
(b) ephemeral recordings made by broadcasting organizations, using their own
equipment and for use in their own broadcasts, which may be kept for a period of up
to six months from their making, except where otherwise agreed (Article 71).  The
latter is an exception authorized under Article 15 of the Rome Convention.
7. Please state the terms of protection of each right described above and the work or
subject-matter to which it applies.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 19
Under Article 19 of the Law on Copyright and Related Rights, the moral rights of the author
are inalienable, imprescriptible and unrenounceable;  however, Article 20 of the same Law stipulates
that, on the death of the author, there shall be transferred to his heirs, without limitation in time, only
the exercise of the moral rights to claim authorship and object to any distortion, mutilation or othermodification of the work, including any modification that discredits it or prejudices the honour or
reputation of the author.
As far as economic rights are concerned Title II, Chapter V, of the Law includes rules on the
term of protection which specify that:
(a) In general, economic rights are protected throughout the author's life and for 75 years
after his death.  In the case of works created by two or more authors, the terms starts
to be counted on the death of the last co-author (Article 43);
(b) in the case of computer programs and collected works, the term of protection shall
extend from the first publication of the work, or in the absence thereof, from themaking of the work (Article 44);
(c) in the case of an anonymous or pseudonymous work (Article 45), the term of
protection is reckoned from the first publication of the work or, failing publication,
from its making.  Where the identity of the author is legally established, the term isreckoned in accordance with subparagraph (a);  and
(d) in the case of works consisting of two or more volumes, periodical sheets or
instalments that have not been published in the same year, the term shall be reckoned,
for each volume, sheet or instalment, from the publication thereof.
In all cases, the term is reckoned from the first of January of the year following that in which
the event giving rise to it occurred (Article 48).
In the case of the rights of performers, phonogram producers and broadcasting organizations,
Article 51 of the Law stipulates that they are protected for a period of 75 years, subject to the
following rules:
(a) In the case of phonograms and performances recorded thereon, as from fixation;(b) in the case of performances not recorded on a phonogram, as from the holding of the
event;
(c) in the case of broadcasts, as from transmission.In all cases, the rights are protected from the outset, but the term is reckoned from the first of
January of the year following that in which the event occurred.
8. Please state how your legislation grants th e retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
Article 7.8 of the Berne Convention establishes that a work's term of protection is the term
established by the law of the country where protection is claimed.  Since both the TRIPS Agreement
and the Berne Convention establish the minimum protection required internationally, Article 18 of the
Convention requires the application of such protection to works which have not fallen into the publicIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 20
domain in the country of origin and have not fallen into the public domain of the country where
protection is claimed.
In this respect, Article 135 of Guatemala's Law on Copyright and Related Rights establishes
that the provisions of the Law apply to:
(a) National works that have not fallen into the public domain;  and(b) foreign works which have not fallen into the public domain in the country of origin,
on the understanding that if the term of protection in the country of origin is greater
than that under Guatemalan legislation, the term of protection provided for inGuatemalan law would apply, as establishe d in Article 7.8 of the Berne Convention
and Article 43, paragraph 3 of the Guatemalan Law.
Although Guatemalan law does not contain any express provision in this connection,
Article 14 of the TRIPS Agreement applies automatically since, the TRIPS Agreement being aninternational instrument duly approved and ratifi ed by Guatemala, it is fully and automatically
operative under the terms of Article 65 of that Agreement, without any reservation and without need
for further elaboration in national legislation.
Follow-up question
Please clarify how and under what provision, Guatemalan legislation grants the
retroactive protection provided pursuant to Ar ticle 14.6 of the TRIPS Agreement to works and
other subject-matter that are still under pr otection in their country of origin.
Under Guatemalan legislation, international conventions that Guatemala has approved and
ratified apply automatically, except for those provisions that must be elaborated in national
legislation.  In the field of copyright and related rights, Guatemala has approved and ratified, among
others, the Berne Convention for the Protection of Literary and Artistic Works and the International
Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations (Rome Convention).
Article 7.8 of the Berne Convention, whose substantive provisions are binding on all Member
countries of the WTO, states that a work's term of protection is that established by the legislation of
the country where protection is claimed.  However, as an exception to the principle of national
treatment, it also states that unless the legislatio n of that country otherwise provides, the term of
protection shall not exceed the term fixed in the country of origin of the work.  This means that theretroactive protection under Article 18 of the Berne Convention is only applicable to those cases in
which, in accordance with the legislation of the country of origin of the work, the latter has not fallen
into the public domain, irrespective of whether a longer term is specified in the country where
protection is claimed.
Since in respect of related rights there did not previously exist any similar provision for the
protection of performances or broadcasts previously made or phonograms previously fixed,
Article 14.6 of the TRIPS Agreement establishes the obligation to apply, mutatis mutandis, the
provisions of Article 18 of the Berne Convention, but only to the rights of performers and phonogram
producers in phonograms.
In accordance with the above, as Guatemala is a member of the Rome Convention, our
legislation provides for the protection of the rights of performers mentioned in Article 14.1 of the
TRIPS Agreement, provided that they are also protected in the place where the performance wasIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 21
given or in the place where it was fixed or broadcast (Article 2 of the Law on Copyright and Related
Rights;  Articles 4 and 5 of the Rome Convention).
C. TRADEMARKS
9. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable.
Article 4 of the Industrial Property Law defines a distinctive sign as any sign that constitutes a
mark, trade name, emblem, advertising slogan or sign  or an appellation of origin.  The same Article
defines a mark as a visually perceptible denominative, figurative, three-dimensional or combined sign
capable of distinguishing the products or services of one person from those of another.
More specifically, Article 16 of the Law stipulates that marks may consist of words or
combinations of words, letters, numbers, monograms, figures, portraits, labels, badges, patterns,
vignettes, borders, lines and stripes, combinations  and arrangements of colours and any combination
of these signs.  They may also consist of the shape, presentational packaging of products or their
containers or wrapping or the mode or place in  which the corresponding products or services are
provided, and other signs with the capacity to distinguish.
According to this Article, marks may also consist of national or foreign geographical
indications, provided that they are sufficiently arbi trary and distinctive with respect to the products or
services to which they are applied and their use is not liable to create confusion or a mistaken
association as to the origin, provenance, qualities or characteristics of the products or services for
which the marks are used.
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.
In accordance with the definition of a mark in Article 4 of the Industrial Property Law, the
protection of a mark is granted to identify both products and services.  Trade names, like advertisingslogans or signs are protectable as signs and with the same scope as for a mark, but for an indefinite
term.
Similarly, in accordance with its definition, a mark may consist of a denominative, figurative,
three-dimensional or combined sign provided that it is visually perceptible.  Consequently, sounds and
smells in themselves are not protectable as marks.
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.
As expressly established by Article 16 of the Industrial Property Law, it is not necessary to
prove the prior use of a mark in order to request and obtain registration.  However, failure to use amark for a period of more than five years constitutes grounds for the cancellation of the registration,
as laid down in Article 66 of the above-mentioned Law.  According to this Article, a registered mark
will be understood to be in use if the products or services that it distinguishes have been introduced
into trade, in the normal amount and manner, taking  into account the size of the market, the nature of
the products or services concerned and the conditions under which they are marketed.  A mark willalso have been considered to have been used when it is employed in connection with products
intended for export from the national territory or services offered abroad from within the nationalIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 22
territory.  Use by a licensee or other authorized person is considered to be the same as use by the
holder of the registration.
The registration of a mark will not be cancelled for lack of use where there are good grounds
for it not having been used.  These could be circumstances outside the control of the holder of the
mark that constitute an obstacle to its use, such as import restrictions or other official requirements
imposed on the products or services protected by the mark.
In any event, the burden of proving use of the mark will lie with the holder of the mark and
use may be established by any admissible evidence which shows that the mark has been actually used.
12. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
In accordance with Article 31 of the Industrial Property Law, the registration of a mark will
remain in force for ten years, reckoned from the date of registration and may be renewed indefinitely
for equal and successive periods of ten years, reckoned from the previous date of expiration.According to Article 32 of the Law, requests for the renewal of the registration of a mark must be
addressed to the Intellectual Property Register within the year preceding the expiration of each period.
A request may also be submitted within a grace period of six months after the date of expiration.
During the grace period the registration will remain in full force.
13. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
See the reply to question 11.
D. 
GEOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
Under Article 20 of the Industrial Property Law, the authorities may refuse to register a mark
when the mark or an element thereof consists of a geographical indication that does not comply with
the terms of Article 16(k) of the Law.  The latter states that a mark may consist of a national or
foreign geographical indication, provided that it is sufficiently arbitrary and distinctive with regard tothe goods or services to which it applies and its use is not likely to create confusion or mistaken
association with respect to the origin, source, quali ties or characteristics of the goods or services for
which the mark is used.  Similarly, Article 78 prohibits the use in trade of geographical indications in
connection with a good or service when the indication is false or misleading as regards the
geographical origin or qualities of the good or service or when its use might confuse the public as tothe origin, source, characteristics or qualities of the good or service.
15. Please give the definition of a geographical indication in your legislation.
Article 4 of the Industrial Property Law defines a geographical indication as any geographical
name, expression, image or sign that designates or  evokes a country, a group of countries, a region, a
locality or a specific 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.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 23
The Guatemalan legislation regulates the protection of national appellations of origin and, as
far as foreign appellations are concerned, refers to the corresponding provisions in the treaties that
Guatemala has signed.  According to Article 4 of the Law, an appellation of origin is a geographical
indication used to designate a product originating in a country, region or specific place, whosequalities or characteristics are exclusively or essentially attributable to the geographical environment
in which it is produced, including natural, human or cultural 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.
The Guatemalan legislation does not contain any provision that makes a distinction, for
protection purposes, with respect to the nature of the products to which geographical indications andappellations of origin are applied.  Wines and spirits do not receive any protection additional to that
granted to other products identified by a geographical indication or an appellation of origin.
Follow-up question
Please clarify how the Guatemalan legislation prevents or allows invalidation of
trademarks for wines or spirits which contai n or consist of a geographical indication.
Irrespective of the nature of the products concerned, the Industrial Property Law does not
allow the registration as a trademark of signs which consist of geographical indications where they are
not sufficiently arbitrary and distinctive with regards to the goods or services to which they are
applied, that is to say, where their use could create confusion or mistaken association with respect to
the origin, source, qualities or characteristics of the goods or services for which the marks are used
(Article 16.2 and Article 20(k)).
Moreover, the Law prohibits the registration as a trademark of signs that could mislead or
create confusion as to the geographical or cultural source, nature, method of manufacture, qualities,
suitability for use or consumption, quantity or any other characteristic of the product or service in
question (Article 20(j)).
If the registration of a mark that did not comply with the above-mentioned legal provisions
were granted, the Industrial Property Law would allow an action to be brought before the competentcourt for the invalidation of that registration.
Thus, Article 67 of the Law expressly stipulates that where registration has been obtained in
contravention of Article 20, it will be null and void and may be revoked at any time.  This action for
invalidation may be brought by the person who considers himself to have been injured and, moreover,by the Office of the Public Prosecutor if State intere sts are affected.  It should be borne in mind that in
this specific case of absolute invalidation Article 203 clearly establishes that the corresponding action
does not lapse.
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.
Guatemalan law does not provide for any exception to the protection of geographical
indications.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 24
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.
In accordance with the provisions of Article 149 of the Industrial Property Law, the protection
granted to an industrial design does not include those elements or features that are determined entirely
by the performance of a technical function and do not embody any new contribution by the designer;
nor does it include elements or features, the reproduction of which is necessary in order to permit the
product embodying the design to be mechanically assembled or connected to another product of
which it constitutes an integral part.  This limitation is not applicable to products in which the design
is intended to permit the assembly or multiple connection of the products or their connection within amodular system.
The Guatemalan Law does not lay down any special procedure for textile designs;  however,
in order to comply with Article 25.2 of the TRIPS Agreement, under Article 148 of the Industrial
Property Law these designs are also protectable under the rules pertaining to copyright.
20. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied design.
Under Article 154 of the Industrial Property Law, the protection of an industrial design
confers on the owner, among other things, the right to prevent third parties, not having his consent,
from importing or in any way commercially exploiting articles which bear or embody an industrial
design which is a reproduction identical or similar to the one protected.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
Under Article 147 of the Industrial Property Law, the provisions relating to patents are
applicable, where appropriate, to industrial designs.  With respect to patents, the same legislation
allows compulsory licences to be granted in the public interest (national emergency, public health,
national security or public non-commercial use) or to remedy anti-competitive practices.
22. Please indicate for what period of time your legislation grants protection for industrial
designs.
The owner of an industrial design acquires the right to legal protection as a result of any of
the following acts:
• The first public disclosure of the industrial design, by any means and at any place, by
the designer or his successor in title, or by a third party who has obtained the design
as a result of some act carried out by one of them;  or
• registration of the industrial design (Article 151).
In the first of these cases, the industrial design enjoys protection without need for registration
for a period of three years from the date of disclosure.  Such protection is independent of the
protection obtained by registration (Article 153).  In the second case, registration of an industrialdesign is valid for ten years as from the submission of the application (Article 159) and may beIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 25
renewed once only for a period of five years, provided the owner so requests at least 60 days before
the expiry of the original period (Article 160).
F. PATENTS
23. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
According to Article 94 of the Industrial Proper ty Law, an invention is considered to have
novelty if not included in the state of the art.  The state of the art comprises everything that has been
disclosed or made accessible to the public anywhere in the world and by any means prior to the filing
date of the patent in Guatemala or, where appropriate, before the priority date applicable.  The state of
the art also includes the contents of any other patent application filed with the Intellectual PropertyRegistry whose filing date or priority date, if any, is earlier than that of the application under
examination, provided that it has been published.  For the purposes of determining the state of the art,
no account shall be taken of any disclosure during the year prior to the filing date of the application
or, where appropriate, the priority date applicable, provided that such disclosure is the direct or
indirect result of acts engaged in by the inventor himself or his successor in title, of a breach ofcontract by a third party or of an unlawful act committed against either of them.
Article 95 of the same Law specifies that an invention shall be regarded as involving an
inventive step if, to a person skilled in the technical field concerned, it is neither obvious nor
obviously derived from the relevant state of the art.
Finally, Article 96 of the Law states that an invention is capable of industrial application
where its subject-matter may be produced or used in any type of industry or productive activity.  For
these purposes, the expression "industry" is understood in its broadest sense, including in particular
handicraft, agriculture, animal husbandry, manufac turing, building, mining, fishing and services.
24. Please explain whether or not in your legislatio n, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Under the Guatemalan legislation, the patent rights granted to the holder are enjoyable
without discrimination as to the place of invention, the field of technology or whether the products are
imported or locally produced.  No provision of the Industrial Property Law requires local exploitationof the invention as a condition for maintaining the ri ghts derived from the patent in force.  Only the
following are excluded from patentability:  diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;  inventions whose exploitation would be contrary to public order or
morality (see also the response to question 25) and inventions whose commercial exploitation must be
prevented to protect human, animal or plant life or health or the environment.
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 92 of the Industrial Property Law excludes from patentability those inventions whose
exploitation would be contrary to public order or morality, it being understood that exploitation will
not be considered contrary to public order or morality solely because it is prohibited, limited or
conditioned by some legal or administrative provision.  This exclusion has been in the Guatemala
legislation since 1940 but has never been applied, so that Guatemala has no previous experience on
which to base an explanation.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 26
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 92 of the Industrial Property Law stipulates that diagnostic, therapeutic and surgical
methods for the treatment of human beings or animals are not patentable.
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.
In accordance with Article 91 of the Industrial Property Law, plants, animals and essentially
biological processes, such as are encountered or occur in nature and do not presuppose humanintervention, are not considered to be inventions, since in accordance with the definition given in
Article 4 of the Law an invention means any human  creation that allows matter or energy existing in
nature to be transformed for use by man and to satisfy his specific needs.
28. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are prot ected in your legislation.  Please explain, in
this respect, the relevant sections of your legislation.
Insofar as they are not included among the items listed in Articles 91 and 92 of the Industrial
Property Law, micro-organisms, non-essentially biol ogical processes, microbiological processes and
plant varieties can be protected by patents, provided that they satisfy the definition of an invention in
Article 4 and meet the requirements for patentability in Article 93 of the same Law, namely:  novelty,inventive step and industrial application.  In the case of plant varieties, because of their very nature
the patentability requirements are different, since varieties for which protection is requested must be
new, distinct, uniform and stable.  As far as the extent of the protection is concerned, in the case of
biotechnology inventions our law stipulates that:
• If the patent protects biological material that possesses specific claimed
characteristics, the protection granted will extend to any biological material derived
by multiplication or propagation from the patented material and possessing the same
characteristics;
• if the patent protects a process for obtaining a biological material possessing specific
claimed characteristics, the protection provided by Article 128(b)(ii) of the Industrial
Property Law will also extend to any biological material derived by multiplication orpropagation from material directly obtained from the process that possesses the same
characteristics;  and
• if the patent protects a specific genetic sequence or biological material that contains
such a sequence, the protection will also extend to any product that incorporates that
sequence or material and expresses the corresponding genetic information.
These rights are subject to the following exceptions:• If the patent protects a plant, an animal or other organism capable of reproducing
itself, the holder may not prevent third parties from using that entity as an initial basisfor obtaining new viable biological material and marketing the material thus obtained,
unless this requires the repeated use of the patented materials;  andIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 27
• if the patent protects a plant or an animal or its reproductive or multiplication
material, the holder may not prevent the use of the product obtained from the plant of
animal protected for its subsequent reproduction or multiplication by a farmer or
livestock breeder and the marketing of the product for agricultural use or
consumption, provided that the product has been obtained on the farmer's or livestockbreeder's own farm and the reproduction or multiplication took place on that same
farm.
29. Please explain how your legislation protects  patent right holders against the importing
and against the offering for sale of a patented invention.
Under Article 128 of the Industrial Property Law, a patent confers on its holder the right to
prevent third parties from exploiting the patented invention.  For this purpose, the patent holder maytake the appropriate legal proceedings against anyone  who, without his consent, offers for sale, sells,
uses, imports or stocks the patented product or a product obtained directly by a patented process.
Consequently, the patent holder may bring civil or criminal actions to prohibit or suspend the
importation or offering for sale of products which infringe his right, including application for
provisional or precautionary measures, in accordance with the provisions relating to the enforcement
of rights contained in the Industrial Property Law itself.
These rights will be exhausted with respect to the products protected or obtained by a
patented process once the product has been introduced into trade by the patent holder or another
person with his consent.  In the case of patents that protect biological material that is capable of being
reproduced, the rights will be exhausted in respect of the material obtained by multiplication orpropagation of the material lawfully introduced in to commerce, provided that the multiplication or
propagation was a necessary consequence of the use of that material and the material so derived is not
used for multiplication or propagation purposes, other than the permitted use mentioned in the
response to question 28 (Article 131 of the Industrial Property Law).
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.
The Industrial Property Law does not exclude from patentability pharmaceutical or
agricultural chemical products, despite the availability of an additional five-year delay under
Article 65 of the TRIPS Agreement.  Article 210 of the Law has a provision that meets the
requirements of Article 70.8 of the TRIPS Agreement referring to the means by which applicationsfor patents for such products can be filed in the mailbox from 1 January 1995 to 1 November 2000,
the date on which the present law entered into force.
31. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
Article 128 of the Industrial Property Law stipulates that, where the patent claims a process,
the holder of the patent has the exclusive right to exploit the patented process and, consequently, may
bring legal proceedings against anyone who, without his consent produces or manufactures theproduct obtained directly from the process or offers for sale, sells, uses, imports or stocks the product
obtained directly from the patented process.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 28
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 legislations and describe the additionalconditions in detail.
In accordance with Article 108 of the Industrial Property Law, the description of the invention
which the applicant is required to join to his patent application must disclose the invention claimed
sufficiently clearly and completely for it to be carried out by a person skilled in the art and, moreover,
the best method known to the applicant for carrying out the invention claimed.  In addition, drawings,
which will be considered part of the description, must be submitted where they are necessary for the
invention to be understood or carried out.
Moreover, in accordance with Article 109 of the Law, where the invention relates to a
biological product or process requiring the use of biological material that is not available to the public
and the invention cannot be so described as to enable it to be understood and carried out by a person
skilled in the art, the applicant must complement the description by depositing a sample of the said
material at a depositary institution, established inside or outside the country and recognized by theIndustrial Property Registry, no later than on the filing date of the application or, where a right of
priority is invoked, on the filing date of the priority claim.  In the description, together with the name
and address of the depositary institution, the applicant must indicate the date of deposit and the
deposit number assigned by the institution, together with the nature and characteristics of the material
deposited where necessary for the disclosure of the invention.  The deposit of biological material willbe valid for patent granting purposes only if it is made in such a way that any interested person can
obtain samples of the material, at the latest by the date of publication of the corresponding patent
application.
33. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
Article 130 of the Industrial Property Law mentions, among the limitations on the rights
conferred by a patent, that the holder does not have the right to prevent the following acts:
(a) Those carried out in private and for non-commercial purposes;(b) those carried out exclusively for educational or scientific or academic research
purposes, with no commercial purpose;  and
(c) those referred to in Article 5 ter of the Paris Convention.
When the patent protects a plant or animal or its reproductive or multiplication material, the
holder cannot prevent the use of the product obtained from the protected plant or animal or themarketing of the product, provided it has been obtained on the farmer's own farm (Article 129).
34. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Guatemala's Industrial Property Law provides for compulsory licensing to remedy any anti-
competitive practice or on grounds of national emergency, public health, national security or publicIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 29
non-commercial use.  Title III, Chapter I, Section 6, of the Law sets out the following conditions for
granting compulsory licences:
(a) The person applying for a compulsory licence shall demonstrate that he has
previously asked the patent owner for a contractual licence and could not obtain it on
reasonable commercial terms and conditions, except in the case of a compulsory
licence requested on the grounds of a national emergency or for non-commercial use
by the State (Article 135);
(b) compulsory licences shall be granted predominantly for the supply of the domestic
market (Article 136(a));
(c) the owner of the patent for which a compulsory licence has been granted shall receive
adequate remuneration according to the circumstances of each case and the economic
value of the licence (Article 136 (b));
(d) compulsory licences may not be granted on an exclusive basis, nor may they be
assigned or sub-licensed, and they may only be transferred along with the company
(Article 136 (c));
(e) the licence may be cancelled if the circumstances under which it was granted no
longer exist and are unlikely to recur (Article 136, second paragraph);  and
(f) an appeal for reversal shall lie against decisions granting compulsory licences, as an
administrative appeal to be settled by the au thority higher than the one that issued the
decision.  This decision may be challenged judicially by an administrative action(Article 136, third paragraph, of the Industrial Property Law, and Articles 7, 19 and
20 of the Administrative Litigation Law).
In cases of compulsory patent licensing involving dependent patents, Article 137 establishes
the following further conditions:
(a) The invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed in
the first patent;
(b) the compulsory licence to exploit the first patent may be transferred only with the
second patent;  and
(c) the owner of the first patent shall be entitled to a licence for the second patent.
35. Explain how your legislation explicitly ensures that a proposed user has made efforts to
obtain authorization from the right 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 authorised predominantly for the supply to
the domestic market of the Member authorizing such use.
Under Article 135 of the Industrial Property Law, anyone requesting a compulsory licence
must show the following:
(a) That he has previously requested a contractual licence from the patent holder;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 30
(b) that he not been able to obtain a contractual licence on reasonable commercial terms
and conditions;  and
(c) that these efforts were not successful within a period of not less than 90 days
following the first request.  It will not be necessary to fulfil this requirement to obtain
a compulsory licence in cases of national emergency, extreme urgency or public non-
commercial use of the invention.
Among the conditions applicable to compulsory licences, Article 136 of the Law establishes
that they will be granted predominantly for the supply of the domestic market.  A compulsory licence
may be cancelled by the Industrial Property Registry if the circumstances under which it was grantedno longer exist and are unlikely to recur.
36. Please state if your legislation grants addi tional protection for innovations after the
20 years of patent protection has lapsed.
There is no additional protection for innovations after the period of patent protection has
lapsed.
37. Please explain how your legislation provide s for the enhanced patent protection of
patents or patent applications pending on 1 January 1995.
Under Article 210 of the Industrial Property Law, patent applications filed on or after
1 January 1995, in accordance with Article 70.8 of the TRIPS Agreement, must be given absolute
priority from the entry into force of that Law (1 November 2000), by applying the patentability
criteria which it establishes, as if they had been in force on the application filing date.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
In accordance with Article 199 of the Industrial Property Law, when the subject-matter of a
patent is a process for obtaining a new product and that product has been produced by a third party
without the consent of the patent owner, then, in  the absence of proof to the contrary, it will be
deemed to have been obtained by the patented process.
Therefore, the defendant will be required to prove that he has used a different process.
G. 
LAY-OUT DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
Guatemala has not yet passed any specific legislation to regulate the protection of lay-out
designs, and protection is therefore granted for a term of ten years from the first commercial
exploitation of the lay-out design, as specified in Article 38.2 of the TRIPS Agreement, which formspart of Guatemalan law.  Under the Guatemalan legal system, international agreements automatically
apply, except in cases where, under the Agreement, sp ecific legislation has to be elaborated.  In fact,
Article 46 of the Constitution establishes that, in re gard to human rights (which include copyright and
inventors' rights), treaties and agreements accepted by Guatemala prevail over domestic law.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 31
40. 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.
In accordance with Article 36 of the TRIPS Agreement, the holder of a right in a protected
lay-out design may object to the importation, sale or  commercial distribution of the protected lay-out
design, an integrated circuit in which the protected lay-out design is incorporated, or an article
incorporating the integrated circuit.  This provision is automatically applicable and therefore can be
applied directly even though there is no specific legislation.  This means that the right holder may
request the application of the measures he considers necessary to protect his rights, including the
precautionary measures for which the Industrial Property Law provides.
41. Please explain how your legislation provide s for the derogation from Article 36 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
integrated circuit that it contains an unlawful topography.
Article 37 of the TRIPS Agreement allows Members not to consider unlawful the
importation, sale or commercial distribution of a protected lay-out design, whether incorporated in an
integrated circuit or in an article incorporating su ch an integrated circuit, if the person performing
these acts did not know and had no reasonable ground to know that in acquiring the integrated circuit
or article incorporating such an integrated circuit he was acquiring an unlawfully reproduced lay-outdesign.  This provision is automatically applicable and means that such acts do not constitute
infringements, so long as the person had not been notified that the lay-out design imported or offered
for sale was unlawfully reproduced.
Once the person has been notified of the unlawful reproduction, Article 37 allows Members to
provide for that person to perform any of the acts with respect to the stock on hand or ordered prior to
notification (such as, for example, using it up), on condition that he pays the right holder a sum
equivalent to the royalty payable under a contractual licence.  This provision is not automatically
applicable, since it requires Members to incorporate it in their specific legislation.  It does not mean
that the right holder and the innocent infringer may not arrive at an agreement.
42. Please state the term of protection granted by your legislation to topographies.
See the response to question 39.
H. P
ROTECTION OF UNDISCLOSED INFORMATION
43. 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.
Under Article 174 of the Industrial Property Law, trade secrets are protected indefinitely in so
far as they meet the three requirements necessary to be considered as such, namely:
(a) The information has commercial value because it is secret;
(b) as a body or in the precise configuration and assembly of its components, the
information is not generally known among or readily accessible to persons within the
circles that normally deal with the kind of information in question;  andIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 32
(c) the information has been subject to reasonable steps to keep it secret by the person
who is lawfully in control of it.
If the information relates to test or other data obtained by considerable effort and supplied to
the authority responsible for approving the marketing of pharmaceutical or of agricultural chemical
products which contain a new chemical component, the information will be protected against any
disclosure or unfair commercial use for a period of 15 years.  During this period, no person other than
the one who supplied the information may, without th e written consent of the latter, rely on such data
or information or invoke it in support of an application for approval of his product, even though this
may not involve its disclosure.  The period in question is reckoned from the date on which the holder
of the information was granted approval to market the product (Article 177 of the Industrial PropertyLaw).
44. Please explain how your legislation defines "undisclosed information".
The Industrial Property Law does not define undisclosed information.  However, in
accordance with Articles 4 and 174, a trade secret means any undisclosed information in the
possession of an individual or legal person which has commercial value because it is secret, can be
used in some productive activity, whether industrial, commercial or services, and can be transmitted
to a third party.
45. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
Although there is no definition of this type of information, Article 177 of the Industrial
Property Law refers to it as those undisclosed test or other data which have, in whole or in part, thecharacteristics of a trade secret and have been requested by an administrative authority under the
procedure for obtaining approval for marketing or sale of a pharmaceutical or agricultural chemical
product that contains a new chemical component.
I. E
NFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
To ensure the enforcement of intellectual property rights, both the Industrial Property Law
and the Law on Copyright and Related Rights provide for the holder of the corresponding rights to
initiate legal proceedings, whether civil or criminal, in order to protect his rights against infringement
or prevent infringements from being committed or avoid their consequences.  There is no provisionfor such remedies under administrative procedures.
These civil proceedings follow the trial pro cedure laid down in the Code of Civil and
Commercial Procedure (Articles 182 of the Industr ial Property Law and 133 of the Law on Copyright
and Related Rights), without prejudice to the possibility of the parties involved resorting to alternativemeans of dispute settlement, such as conciliation and arbitration which are governed by a special law.
In the case of criminal proceedings, it is for the public prosecutor to prosecute those responsible,
although the right holder or licensee may initiate the prosecution by filing a complaint for violation of
his rights or by joining proceedings initiated ex officio (Articles 206 of the Industrial Property Law
and Article 128 of the Law on Copyright and Related Rights).
There is also provision for applying, including before the initiation of any of the above-
mentioned actions, provisional or precautionary measures to protect rights, prevent infringements orIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 33
obtain and preserve evidence (Articles 186 and 207 of the Industrial Property Law and 128 bis and
133bis of the Law on Copyright and Related Rights).   In addition there is the possibility of requesting
border measures to obtain an order suspending the importation or exportation of goods that impair or
infringe the rights of a trademark proprietor or copyright or neighbouring right holder (Articles 190 ofthe Industrial Property Law and 129 of the Law on Copyright and Related Rights).
47. Please explain whether or not your legislation provides for a mechanism of appeal to
judicial bodies of final administrative decisions.
In accordance with the relevant provisions of the Code of Civil and Commercial Procedure
and the Code of Criminal Procedure, an appeal, which is heard by the higher court, may be made
against any judgement pronounced in any proceeding conducted in accordance with these Codes.
48. 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.
Neither the Industrial Property Law nor the Law on Copyright and Related Rights contains
such provisions.  However, Article 182 of the Code of Civil and Commercial Procedure, which
applies residually, does provide for this authority, although limited to documentary evidence.  This
Article stipulates that when one of the parties to a proceeding needs to use a document which, italleges, lies in the control of the opposing party, it must produce a copy thereof or, at least, all the
information available to it concerning its contents and, moreover, prove that the document is or was in
the possession of the opposing party.
According to the same provision, in these circumstances the court may order that the
opposing party be warned to hand over the document within the time-limit fixed by the court itself
and if it does not hand over the document or produce contrary information, the court may decide to
accept the text of the document provided by the party requesting disclosure or declare that the
information supplied concerning its content is to be considered accurate for the purposes of the
proceedings.
If the evidence concerning the existence of the document in the control of the opposing party
is contradictory, the court will reserve the aforementioned ruling for the definitive judgement, on
which occasion it will, in its wisdom, draw the appropriate conclusions from the statements of the
parties and the evidence submitted.
There are various provisions in the Guatemalan legislation for the protection of confidential
information.  In principle, while fundamentally guaranteeing that administrative acts, like judicial
proceedings, will be public, the Constitution provides, as an exception, for the case in which someone
may have supplied data under a guarantee of confidentiality.
In Article 194 of the Industrial Property Law there is an express reference to the obligation to
protect confidential information, where the judicial authorities, having ordered a border measure,
authorized the person granted the measure free access to the goods or products detained in order that
he may inspect them and obtain further evidence in support of his claim.
Likewise, Article 199 of the Industrial Property Law, which enunciates the principle of
reversal or the burden of proof in cases of claims for infringements of a patent-protected process,
recognizes that in the submission of any evidence to the contrary, account must be taken of the
legitimate interest of the defendant regarding protection of his trade secrets, although this does not
relief him of the burden of proving that he uses a process different from the one protected by patent.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 34
Again, Article 129 of the Code of Civil and Commercial Procedure sets out the general rule
that evidence can be submitted confidentially when, on account of the nature of the evidence, the
judicial authority deems it appropriate.
Finally, Article 63 of the Judicial Organization Law, while enunciating the principle that acts
and proceedings of the courts of the Republic are public, admits as exceptions to that principle cases
where, by legal order or on grounds of public morality or security, they must be kept confidential.
Thus, this provision authorizes the court to declare, in very special cases and under strict
responsibility, acts or proceedings confidential.
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
In accordance with Article 185 of the Industrial Property Law and Article 134 bis of the Law
on Copyright and Related Rights, in ruling that any of the actions for the protection of intellectualproperty rights is applicable, the judicial authorities must, in addition to determining the merits,
depending on the case and in the light of the need of proportionality between the seriousness of the
infringement, the remedies ordered and the interests of third parties, order the cessation of the
infringing acts or acts of unfair competition and the adoption of the measures necessary to prevent
their consequences and avoid a repetition thereof, as well as the award of damages.  According to
express provisions of both laws, in both civil and criminal actions the courts may also order, as a
precaution, an immediate halt to the use, application and marketing of the infringing products and any
measure necessary to avoid the continuation or repetition of the infringement.
50. 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 1645 of the Civil Code establishes the general rule that anyone causing harm or
prejudice to another, whether intentionally or by neglect or carelessness is required to make good the
act, except where it can be demonstrated that the harm or prejudice was a result of inexcusable
negligence or fault on the part of the victim.  The Judicial Organization Law also includes a general
provision establishing that, in the event of an award of damages, the ruling shall specify the net
amount.  The provision adds that, if this is not possible, the ruling shall establish at least, in
accordance with what has been requested, the basis for determining the assessment of the points at
issue or for the fixing of the amount by experts.
The Industrial Property Law establishes, in Article 185(e), that in a judgement declaring any
of the actions provided for in the Law applicable the court must rule on the award of damages.  A
similar rule is set out in Article 134 bis(d) of the Law on Copyright and Related Rights.
51. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
As to the matter of attorneys' fees, Article 572 of the Code of Civil and Commercial
Procedure sets out the general rule that each party to the proceeding is directly responsible for the
costs incurred for the acts carried out and requested by it.  However, the rule also establishes that in
the event of an order to pay costs, the losing pa rty shall compensate the other for all the necessary
costs it has caused.  Indeed, Article 573 of the same Code sets out the general requirement that the
Court, in the ruling concluding the proceeding, mu st sentence the losing party to payment of costs in
favour of the other party.  This requirement to pa y costs entails exceptions in instances where judicial
action has obviously been taken in good faith, where the claim or counterclaim involves exaggeratedIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 35
pretensions, where the judgement takes account solely of part of the fundamental pretensions of the
claim or counterclaim, where defences of importanc e invoked by the losing party are admitted, where
neither party wins or where the defendant accepts the claim.
Furthermore, Article 578 of the Code of Civil and Commercial Procedures specifies the
following as being part of the reimbursable costs:  the fees of the chief attorney, notaries, attorneys,
experts, depositaries and administrators;  as well as costs incurred for seizures, injunctions, orders,
publications, certifications, inventories, entries in registers and compensation of witnesses for their
time and travel costs.  This rule makes it clear that judicial orders shall not entail personal costs other
than travel expenses, payments for vehicles, transport and communications and purchases of
substances or other articles necessary to ascertain a fact.
52. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
The disposal of the infringing goods outside the channels of commerce may be ordered
definitively (in the ruling that closes the proceeding) and/or provisionally.  Article 185(a) of the
Industrial Property Law stipulates that in a judgemen t declaring any of the actions provided for in the
Law applicable, the Court must, as appropriate, order that the infringing goods be disposed of outside
the channels of commerce or destroyed, principally when they affect or may affect human or animal
or plant life or health or the environment.
Similarly, Article 185(b) of the Industrial Property Law stipulates that, in the judgement, the
court must also, where appropriate, order that materials/implements the predominant use of which has
been in the creation of the infringing goods be , without compensation of any sort for the owner,
disposed of outside the channels of commerce or destroyed as articles of unlawful trade, in such amanner as to minimize the risks of further infringements.
Moreover, Article 187(e) of the Industrial Property Law specifies that, among the measures
designed to protect the rights of the plaintiff or petitioner, the court may order the immediate cessation
of marketing of the infringing products, together with the seizure and removal to court warehouses of
the infringing products and the materials used to commit the infringement, including their destruction
where they are causing harm or constitute a risk to human, animal or plant life or health or to theenvironment.
53. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
Under Article 537 of the Code of Civil and Commercial Procedure, whoever obtains a
protective measure or order will be obliged to pay the other party costs and damages in any of the
following circumstances:
- If the application is not made within the legal time-limit (15 days);
- if the order is revoked;   or
- if the application is declared to be inadmissible.The Industrial Property Law (Article 195) and the Law on Copyright and Related Rights
(Article 132) contains similar provisions for de termining the liability of those who request border
measures with respect to the importer, the c onsignee and the owner of the goods detained.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 36
In order to ensure that these provisions are effective, Article 186 of the Industrial Property
Law and Article 133 bis of the Law on Copyright and Related Rights stipulate that in the event of any
application for a protective measure or order, the court may, if it deems it appropriate, include in the
ruling in which such measures are decreed a requirement, that prior to their application, sufficientsecurity or other assurance should be provided to prevent abuse and to protect the party affected by
the measure and the authorities themselves against any damage or injury to which the measures might
give rise.  These provisions are applicable to border measures (Articles 191 of the Industrial Property
Law and 130 of the Law on Copyright and Related Rights).
The authorities who order a measure will be exempt from liability if they acted in good faith.
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
In conformity with Article 530 of the Code of Civil and Commercial Procedure, which is
residually applicable, whoever has good reason to fear that during the time necessary to enforce his
right that right will be threatened by imminent and irreparable damage may request the court in
writing to grant such urgent measures as would appear, according to the circumstances, to be mostappropriate in order provisionally to ensure the effectiveness of the decision on the merits.  This
provision is also included in the first paragraph of Article 186 of the Industrial Property Law and in
Article 133 bis of the Law on Copyright and Related Rights.
Under the Guatemalan legislation, anyone initia ting or intending to initiate an action relating
to industrial property rights or acts of unfair competition may request the court to order protective
measures.  The court, provided it has been given proof of the ownership of the right infringed and
evidence indicating a reasonable presumption of in fringement or the imminence thereof, has the
authority to order forthwith the measures requeste d within a period of not more than two days from
the presentation of the application and, if it deems it advisable, can in the same ruling require thatprior to the execution of such measures the applicant shall provide security or other assurance
sufficient to protect the party affected by the measure and the authorities themselves and also to
prevent abuse.  In the latter case, the measure must be executed within 48 hours of security being
given (Articles 186 of the Industrial Property Law and 133 ter of the Law on Copyright and Related
Rights).
When a protective measure is ordered before the main action is initiated, it will automatically
lapse if the person obtaining it does not file a complaint within 15 days of the date on which it was
executed (Articles 186 of the Industrial Property Law and 133 ter of the Law on Copyright and
Related Rights).
Among the measures that may be ordered to prevent an infringement, prevent infringing
goods from entering channels of commerce or preserve evidence relating to an alleged infringement,
Articles 187 of the Industrial Property Law and Article 133 bis of the Law on Copyright and Related
Rights stipulate that the judicial authorities may order:
- An immediate halt to the use, application, disposal and marketing of the infringing
products and the unfair acts;
- an immediate halt to the infringement alleged by the right holder;- seizure of the infringing products, including containers, packets, packaging, labels,
printed or advertising materials, machinery or other materials connected with the
infringement or used to commit it, and of the means principally used to carry out the
infringement;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 37
- prohibition of the importation of the aforementioned products, materials or means;
- confiscation and removal to court warehouses of the aforementioned products,
materials or means;
- suspension or cancellation of registrations or sanitary licences or licences of any other
kind necessary for the admission, distribution, sale or marketing of the infringing
products;
- judicial inspection of places, documents or objects that have a bearing on the right
infringed;   and
- any other measure necessary to prevent the continuation or repetition of the
infringement or acts of unfair competition.
The last paragraph of the above-mentioned Article 187 of the Industrial Property Law makes
it clear that mere removal of the marks illegally used or affixed will not prevent the protective
measures ordered from remaining in force and neither will it be sufficient for the goods or products to
enter the channels of commerce.
It is important to note, that under Article 188 of the Industrial Property Law and
Article 133 quater  of the Law on Copyright and Related Rights, once a protective measure or order
has been granted to ensure the results of a proceeding regarding a claim for restoration in a civil or
commercial action, it cannot be deprived of its ef fect by means of a bond or security, which may only
be lodged so as to lift measures to ensure a claim for compensation.
Again, in accordance with Article 189 of the Industrial Property Law, the petition for
protective measures or the complaint itself may contain a request for a judicial inspection of places,
documents or objects that have a bearing on the right infringed, or where it is alleged that acts leading
to the infringement of industrial property rights or acts of unfair competition are being committed or
prepared, in which case the court will order and execute it without requiring any security.  In order to
follow this up, according to the above-mentioned provision, the ruling ordering a judicial inspectionwill implicitly include the use of a search warrant.
Such judicial examination may be supplemented by the presence of experts designated by the
applicant or by the court itself;  likewise, the court may order that movables or documents be
produced.  On application by a party and at the c ourt's discretion, scientific methods of obtaining
evidence may also be used, photographs taken or audiovisual recordings made of the objects or places
inspected, while documents may be examined and copied by any means.
In connection with the judicial inspection the court may order the protective measures that
have been requested and, where appropriate, establish the amount of the corresponding guarantee, inaccordance with the provisions of the above-mentioned Article 186 of the Law.  If, within the next
five days, the applicant has not provided or constituted the security fixed, the court will order the
lifting of the measures decreed.
55. 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.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 38
According to Articles 190 and 191 of the Industrial Property Law, in cases of infringement of
the rights of a trademark holder border measures mu st be requested from the judicial authority, and
more specifically the court of first instance with  jurisdiction over the territory in which the
corresponding custom office is located.
Under Articles 129 and 130 of the Law on Copyright and Related Rights, the right holder
concerned may request the border measure from the judicial authority or directly from the customs
authority, which can order the suspension of the importation or exportation in question for a period of
not more than ten working days.
56. Please indicate whether or not procedures  are available to suspend the exporting of
counterfeit goods.
Both the Industrial Property Law and the Law on Copyright and Related Rights allow the
holders of a registered trademark or a protected work or phonogram, or their licensees, to request the
suspension of customs clearance and release of the goods or the export process, but only in the case of
pirated goods may the suspension of clearance be requested directly from the customs authorities(Articles 190 and 191 of the Industrial Property Law and Article 129 of the Law on Copyright and
Related Rights).   In both cases, the procedure appli cable is the same as that laid down in the two laws
for requesting precautionary measures or orders, to which reference was made in the response to
question 54.
57. Please quote what provisions of your legisl ation authorize the competent authorities to
order the destruction or disposal of infringing goods.
Article 185(a) of the Industrial Property Law stat es that where the judgement declares any of
the actions provided for in the Law to be applicable, the court shall, where appropriate, order that the
infringing goods be destroyed as articles of unlawfu l trade, principally when they affect or may affect
human, animal or plant life or health or may cause serious harm to the environment.
Similarly, Article 185(b) of the Industrial Property Law stipulates that, in the judgement, the
court shall also, where appropriate, order that the material/implements the predominate use of which
has been in the creation of the infringing goods be, without compensation of any sort for the owner,
disposed of outside the channels of commerce or destroyed as articles of unlawful trade, as a means of
minimizing the risk of further infringements.
As a precautionary measure, the Law provides for the possibility of the infringing products
and materials and means used for producing them being confiscated and removed to court
warehouses;   or being destroyed if they are causing harm or constitute a risk to human, animal or
plant life or health or to the environment (Article 187(b), (d), (e) of the Industrial Property Law).
In similar terms, the Law on Copyright and Related Rights establishes in Article 134 bis that,
in a judgement declaring any of the actions provid ed for in the Law applicable, the court shall, in
addition to determining the merits, order that the infr inging goods be destroyed as articles of unlawful
trade.  Article 133 bis of the same Law also establishes that the court may order as a protective
measure any measure necessary to avoid the conti nuation or repetition of the infringement, including
seizure of the infringing products and the materials and means for producing them, together with their
destruction if they are causing harm or constitute a risk to human, animal or plant life or health or to
the environment.
58. Please indicate whether or not your legislation provides for a de minimis  imports
exception.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 39
Under Article 190 of the Industrial Property Law, non-commercial articles imported as part of
travellers' personal effects may not be suspended.
59. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
In keeping with the classification of infringing conduct set forth in Articles 274 and 275 of
the Criminal Code, infringements affecting all intellectual property rights recognized under the
relevant laws are subject to the prescribed criminal procedures and penalties.
Article 274 of the Criminal Code determines the following types of conduct as offences
against copyright and related rights:
(a) The false attribution of the status of author and/or copyright holder, performer,
phonographic producer or a broadcasting entity;
(b) the deformation, mutilation, modification or any action that causes injury to the
integrity of the work or to the honour and reputation of the author;
(c) the reproduction of any work, interpretation or performance, phonogram or broadcast,
without the authorization of the author or relevant right holder;
(d) the adaptation, arrangement or transformation of a protected work or part thereof,
without the authorization of the author or the right holder;
(e) the communication to the public by any means or procedure of a protected work or a
phonogram, without the authorization of the relevant right holder;
(f) the distribution of unauthorized reproductions, total or partial, of a protected work or
a phonogram, whether by means of sale, rental, lease, rental with the option to buy,
loan or in any other form;
(g) the sound fixing, reproduction or communication to the public, by any means or
procedure, of an artistic performance without  the authorization of the performer or the
right holder;
(h) the sound fixing, reproduction or retransmission of a broadcast, transmitted by
satellite, broadcasting or by wire, cable, fibre optics or any other procedure, without
the authorization of the owner;
(i) the communication to the public of a broadcast or transmission in a place to which the
public can gain access by the payment of an admission fee, or otherwise, for the
purposes of consuming or purchasing product s or services without the authorization
of the relevant right holder;
(j) the publication of a protected work with the title changed or removed, with or without
being altered;
(k) the decodification of programme-carrying signals of any kind transmitted by satellite
or any other means of telecommunication, without the authorization of the legitimatedistributor;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 40
(l) any act that circumvents or attempts to circumvent a technological measure
implemented by the author or the holder of the relative right or the holder of a related
right to avoid the unauthorized use of any kind of work, phonogram, artistic
performance or a broadcast;
(m) any act that induces, permits, facilitates or conceals an infringement of any of the
exclusive rights pertaining to the authors, copyright holders, performers, phonogram
producers or broadcasting organizations;
(n) the unauthorized removal or alteration of any electronic information concerning the
collective management of copyright or related rights;
(o) the unauthorized distribution, marketing, promotion, importation, broadcasting or
communication to the public of works, artistic performances, phonographicproductions or broadcasts, in the knowledge that the electronic information
concerning the collective management of any of those rights has been removed or
altered without authorization;
(p) the transportation, storage or concealment of reproductions or copies, in any physical
medium, of protected works, phonograms, artistic performances or broadcasts, madewithout the consent of the author or relevant right holder concerned;
(q) the collection of financial benefits for the use of protected works, artistic
performances, phonograms or broadcasts belonging to broadcasting organizations, or
engaging in any other activities proper to a collective management company, without
being authorized to do so;
(r) the publication of an unpublished work without the consent of the author or relevant
right holder;
(s) the full or partial translation of a work without the authorization of the author or
relevant right holder;
(t) the unauthorized distribution of original or legitimate reproductions of a protected
work or a phonogram, whether by means of sale, rental, rental with the option to buy,
loan or in any other way;   and
(u) the importation or exportation of the original or reproductions of any protected work
for their commercial exploitation, in any type of medium, or of phonograms, without
the authorization of the relevant right holder.
As regards industrial property, Article 275 of the Criminal Code establishes  that the
following types of conduct are offences against those rights:
(a) Introducing into commerce, selling, putting up for sale, storing or distributing
products or services covered by a registered distinctive sign or by an imitation or
counterfeit thereof in connection with products or services identical or similar to
those protected by the registration;
(b) using in commerce a protected trade name, advertising emblem or slogan or sign;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 41
(c) introducing into commerce, selling, putting up for sale, storing or distributing
products or services covered by a registered distinctive sign, after having totally or
partially altered, replaced or removed it;
(d) using, putting up for sale, storing or distributing products or services that carry a
registered mark that is similar enough to be confused with another registered mark,
after a decision has been issued ordering cessation of the use of that mark;
(e) manufacturing labels, containers, wrappings, packaging or other similar materials that
reproduce or contain the registered sign or an imitation or counterfeit thereof, as well
as marketing, storing or possessing such materials;
(f) refilling or re-using for any purpose, containers, wrappings or packaging bearing a
registered distinctive sign;
(g) using in commerce any labels, wrappings, containers and other means of packaging
or packing of products or of identifying the services of a trader, or copies, imitations
or reproductions thereof that could prove misleading or create confusion as to the
origin of the products or services;
(h) using or exploiting another person's business secret, as well as any act of marketing,
disclosure or improper acquisition of such secrets;
(i) revealing to a third party a business secret obtained through one's work, position,
post, profession, business relationship or by virtue of a licence of use, after having
been advised of the confidential nature of that information;
(j) procuring a business secret, by any means, without the permission of the person who
keeps it or of its authorized user;
(k) manufacturing, processing, marketing, putting up for sale, placing in circulation,
storing or possessing products covered by a patent belonging to another person;
(l) using a procedure covered by a patent belonging to another person or engaging in any
of the actions set out in the preceding subparagraph, in connection with a productobtained directly by that procedure;
(m) manufacturing, processing, marketing, putting up for sale, placing in circulation,
storing or possessing products which in themselves or in their presentation reproduce
a protected industrial design;
(n) in connection with a product or service, using in commerce, a false geographical
indication or one that could mislead the public as to the origin of that product or
service or the identity of the product, the ma nufacturer or the trader who distributes it;
and
(o) in connection with a product, using in commerce, a false or misleading appellation of
origin, even when the true origin of the product is indicated, a translation of the
appellation is used, or is used in conjunction with expressions such as "type", "kind",
"manner", "imitation" and the like.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 42
Articles 274 and 275 of the Criminal Code prescribe one to four years' imprisonment for
persons committing offences against various intellectual property rights and, moreover, specify
monetary penalties in the form of a fine to be set by the court, ranging from a minimum of
1,000 quetzales to a maximum of 500,000 quetzales.
Furthermore, Article 358 of the Criminal Code states the following:  "anyone perpetrating an
act described as one of unfair competition, shall, pur suant to the provisions in that regard set forth in
the Industrial Property Law, incur a fine of 50,00 to 100,000 quetzales, except where the act is one of
the industrial property right infringements classified under Article 275 of this Code."
In both cases, in criminal proceedings, in addition to the penalties already indicated, the
aforementioned provisions of Article 185 of the Industrial Property Law and 134 bis of the Law on
Copyright and Related Rights apply.  These Articl es provide, without distinction as to the right
protected, for the possibility of the judgement ordering the confiscation, seizure or destruction of the
infringing goods and any materials or accessories predominantly used for committing the offence.
IV. RESPONSE TO THE QUESTION POSED BY JAPAN
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the national treatment and most-favoured-
nation treatment under the Copyright and Related Ri ghts Law, if any, as permitted in Articles 3
and 4 of the TRIPS Agreement.
Article 3 of the TRIPS Agreement allows member countries to apply the exceptions to the
principle of national treatment provided for in  the Berne Convention and the Rome Convention.
According to the Berne Convention, member countries may grant different treatment in the following
cases:
- With respect to works of applied art protected in the country of origin solely as
industrial designs and models, the Convention allows them to be granted only such
protection as the legislation provides for industrial designs and models, unless no
such special protection is provided in the country in which protection is claimed, in
which case the works must be protected as artistic works (Article 2.7 of the Berne
Convention).  The Guatemalan legislation does not provide for this exception sinceArticle 148 of the Industrial Property Law establishes that the protection conferred on
industrial designs does not exclude or affect any protection available under the
copyright laws;  and Article 15 of the Law on Copyright and Related Rights
recognizes works of applied art among the works protected, while Article 3 states that
the enjoyment and exercise of copyright is independent of and compatible withindustrial property rights.
- Where any country outside the Berne Union provides a standard of protection lower
than that required by the Convention, the protection given to the works of authors
who are, on the date of first publication, nationals of that country and are nothabitually resident in one of the countries of the Union, may be restricted to the
standard of protection granted by the non-member country (Article 6 of the Berne
Convention).  The Berne Convention requires this restriction to be notified to the
Director General of the World Intellectual Property Organization and Article 3 of the
TRIPS Agreement requires that it also be notified to the Council for TRIPS.  So far,Guatemala has made no use of this possibility.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 43
- Where the term of protection in the country in which it is claimed is greater than
provided by the legislation of the country of origin of the work, the Berne Convention
provides for the term not to exceed that fixed in the country of origin of the work
(Article 7.8 of the Berne Convention).  Since the term of protection provided by theGuatemalan legislation is greater than the minimum required in the TRIPS
Agreement, the Law on Copyright and Related Rights stipulates, in Article 43, that in
the case of works of foreign authors first published outside the territory of the
Republic of Guatemala, the term of protection shall not exceed that accorded by the
law of the country in which the work was published;  however, if that law accords
greater protection than the Guatemalan law, the provisions of the latter shall apply.
- With respect to the right to an interest in any sale subsequent to the first transfer by
the author, in the case of original works of art and original manuscripts of writers and
composers ( droit de suite ), the Berne Convention provides that this right may be
claimed only if the author's national legislation so permits (Article 14 ter, paragraph 2,
of the Berne Convention).  The Guatemalan legislation does not provide for thisexception.
As for the Rome Convention, it allows different tr eatment to be accorded to foreigners in the
following cases:
With respect to phonograms:
- With respect to secondary uses of phonograms, the Convention allows the right to be
granted only to producers of nationals of a Contracting State;
- with respect to phonogram producers who are nationals of another Contracting State,
the extent and term of the protection may be limited to that granted by the latter state;
- with respect to broadcasting organizations, the Convention allows for the right of
communication of television broadcasts to the public not to be granted to those
Contracting States that have made a declaration to the effect that they will not apply
that right.
Guatemala does not apply any of the above exceptions.
V. RESPONSES TO QUESTIONS POSED BY THE UNITED STATES
A. G
ENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which the laws of Guatemala
provide national treatment and most-favoured-nation treatment to nationals of other WTO
Members.
Guatemala's  legislation affords suitable and effective protection of intellectual property rights
under the following laws:
(a) The Law on Copyright and Related Rights, which regulates copyright on all types of
works and related rights, (performers, producers of phonograms and broadcasting
organizations);IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 44
(b) The Industrial Property Law, which regulates the corresponding rights for trademarks
and other distinctive signs (trade names, advertising material, geographical
indications and appellations of origin), patents (including plant varieties, utility
models, industrial designs and the suppression of unfair competition, includingprovisions relating specifically to the protection of undisclosed information.
Both laws specifically cover the principle of national treatment, i.e:
(a) The Law on Copyright and Related Rights establishes in Article 2 that, in any matters
governed by the Law, the nationals of any country enjoy the same rights, legal
remedies and means to defend their rights as do Guatemalans.  This provision
establishes more particularly that works published abroad, as well as performances,phonograms and broadcasts, the right holders of which are aliens not resident in
Guatemala, enjoy protection throughout Guatemalan territory, in accordance with the
international treaties and agreements adopted and ratified by Guatemala.
(b) For its part, the Industrial Property Law, in connection with the intellectual property
rights protected by that Law, establishes in Article 3 that the nationals of anotherState bound to Guatemala by a treaty establishing national treatment for
Guatemalans, or persons who have their domicile or real and effective industrial or
commercial establishment in that State, sh all enjoy treatment no less favourable than
that it accorded to Guatemalans with respect to the acquisition, maintenance,
protection and exercise of the rights established by the Law or any rights to beestablished in the future.
As to the most-favoured-nation treatment principle, under the Guatemalan legal system the
provisions of any international treaty which has been ratified and which do not require the elaboration
of specific legislation are fully applicable, binding and enforceable.  This is the case with the
provisions of Article 4 of the TRIPS Agreement, which does not require any Guatemalan legislationto be elaborated in order for it to be implemented.  Consequently, any advantage, favour, privilege,
immunity or right accorded by Guatemala to the nationals of any other country shall immediately and
unconditionally extend to the nationals of all WTO Members.
B. 
COPYRIGHT AND RELATED RIGHTS
2. Please explain how Guatemala's copyright law protects computer programs, as literary
works and compilations  of data as required by Article 10 of the TRIPS Agreement and cite to
the relevant provisions of the law.
The Law on Copyright and Related Rights establishes in Article 15 that all literary, scientific
and artistic productions, regardless of the mode or form of expression are regarded as works, providedthey constitute an original intellectual creation, and paragraph (a) of the Article specifically mentions
computer programs.  More specifically, Article 30 of the Law establishes that computer programs are
protected under the same terms as literary works.
As to databases, under Article 16 works are also deemed to include databases and the like
when the selection or arrangement of the content constitutes an original creation.  In addition, under
Article 35 data compilations or databases, whethe r in machine-readable or any other form, are
regarded as collections of works for the purposes of protection.  Such protection does not extend to
the data or material contained in the compilations and does not prejudge the copyright on the data or
material.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 45
3. Article 11 of the TRIPS Agreement requires that in most circumstances rental rights be
provided with respect at least to computer programs and cinematographic works and
Article 14.4 requires that rental rights be pr ovided by producers of phonograms.  Please
describe how Guatemala's law on copyright and related rights ensures that the required rental
rights are provided and cite to the relevant provisions of law.
Article 21 of the Law on Copyright and Related Rights establishes that the right holder's
economic rights include the authority to authorize or prohibit the distribution to the public of the
original or copies of the copyrighted works, whether by sale, rental, hire, loan or in any other manner.
This right is provided for all categories of works, without any distinction being drawn.  Authorized
distribution for sale does not extinguish the right of  rental or any other right established in Article 21.
With reference to computer programs, Article 31 of that Law prescribes that the right of rental
included in Article 21 does not apply to rentals where the computer program itself is not the essential
object of the rental.
As for the rights of phonogram producers, Article 58 of the Law establishes that they have,
inter alia , the exclusive right to authorize or prohibit the distribution of their phonograms or
reproductions.  The same Article specifies, in the second paragraph, that the right of distribution
includes the authority to distribute phonograms either by sale, rental or in any other manner.  It adds
that, when the distribution is by rental, putting the original or authorized copies of the phonogram onthe market does not extinguish the right.
4. Please identify the term of protection availa ble with respect to wo rks and with respect to
each form of neighbouring rights under Guatemala's law on copyright and neighbouring rights
and cite to the relevant provisions of law.
Guatemalan law recognizes authorship rights and economic rights.  Authorship rights include
the authority to claim authorship of the work and to oppose any distortion, mutilation or other
modification of the work that causes injury to the honour and the reputation of the author.  Pursuant to
Article 19 of the Law on Copyright and Related Rights, a moral right is inalienable and
imprescriptible and cannot be renounced;   however, Article 20 of the Law specifies that, on the death
of the author, only the exercise of the authority referred to in Article 6 bis of the Berne Convention is
transmitted to his heirs, without any time limit.
As far as economic rights are concerned, Title II, Chapter V, of the Law includes rules on the
term of protection, specifying that:
(a) Generally speaking, economic rights are protected throughout the author's life and for
75 years after his death.  In the case of works created by two or more authors, the
term shall be reckoned from the death of the last co-author (Article 43);
(b) in the case of computer programs and collective works, the term of protection shall be
from the first publication of the work, or in the absence thereof, from the making ofthe work (Article 44);
(c) in the case of an anonymous or pseudonymous work (Article 45), the term of
protection shall be reckoned from the first publication or, failing publication, from its
making.  Where the identity of the author is legally verified, the term shall be
reckoned in accordance with subparagraph (a);IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 46
(d) in the case of works consisting of several volumes, serials or periodic deliveries not
published in the same year, the period shall be reckoned for each volume, serial or
periodic delivery as from the respective publication (Article 46).
In all cases, the term shall be reckoned from the first of January of the year following the one
in which the act occurred (Article 48).
In the case of rights of performers, producers of phonograms and broadcasting organizations,
Article 51 of the Law establishes that they are protected for a term of 75 years, in accordance with the
following rules:
(a) In the case of phonograms and phonographic recordings, from the fixation of the
phonogram;
(b) in the case of performances not recorded on a phonogram, from the making of the
spectacle;   and
(c) in the case of broadcasts, from the transmission of the broadcast.In all cases, the rights are protected from the start, but the term is reckoned from the first of
January of the year following the one in which the acts occurred.
5. Article 13 of the TRIPS Agreement obliges WTO Members to confine any limitations or
exceptions to copyrights to certain special cases th at do not conflict with the normal exploitation
of the work and do not unreasonably prejudice the legitimate interests of the right holder.
Please describe any and all limitations and exceptions to copyrights provided under
Guatemala's law on copyright and related rights  and cite to the relevant provisions of law.
Please indicate how Guatemala ensures that th ose limitations and exceptions do not conflict
with the normal exploitation of works and do not unreasonably prejudice the legitimate
interests of the right holder.
Title IV of the Law on Copyright and Related Rights establishes the cases limiting the rights
of authors and holders of related rights.  The situations covered by these special cases do not conflict
with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of
the right holder.
The limitations established include the cases of free use mentioned in Articles 10 and 10 bis of
the Berne Convention, which are regulated in Articles 64(a) and 66(a), (b), (c) and (d), and the
reproduction or communication of a work necessary for a judicial or administrative proceeding
(Articles 63(c) and 64(c)).
In addition, the following are exceptions to reproduction and communication rights:(a) The reproduction of a single copy of works by libraries or archives that do not pursue
profit-making purposes, where the copy forms part of the permanent collection, witha view to preserving that copy and replacing it in case of need, or to replace a similar
copy, in the permanent collection of another library or archive, where the copy has
been mislaid, destroyed or rendered unusable, provided that it is not possible to
acquire another original in a reasonable time or on reasonable terms;
(b) the reproduction of a work of art on permanent display in public places or the outer
walls of buildings, provided the reproduction is in an artistic medium different fromIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 47
that used to make the original and provided the name of the author, if known, the title
of the work, if any, and the place at which it is located are indicated (Article 64(b));
and
(c) the communication is within an exclusively domestic environment, provided there is
no economic interest and the communication has not been disseminated
(Article 63(a)).
As to related rights, limitations on the rights of phonogram producers and broadcasting
organizations are set only in the following cases:
(a) The making of phonograms and the reception of radio or television broadcasts for
demonstration purposes to customers at commercial establishments displaying or
selling receivers, reproducers and the like or audio-video carriers containing the
works used (Article 70);   and
(b) ephemeral fixation by a broadcasting organization by means of its own facilities and
for its own broadcasts, which may be kept for a term of up to six months from the
date of their making, unless otherwise agreed (Article 71).  The latter is an exception
authorized under Article 15 of the Rome Convention.
6. Please describe in detail the rights provided under Guatemala's law on copyright and
related rights to performers, broadcasters and producers of phonograms and cite to the
relevant provisions of law.
Guatemalan law protects separately each of the categories of related rights, as follows:
Performers
Pursuant to Article 53 of the Law, performers have the exclusive right to authorize or prohibit
the fixation, reproduction, communication to the public by any means, the broadcasting or any other
form of use of their performance.   Performers of  audiovisual works are excepted from this provision.
When a phonogram published for commercial purposes is used in any form of public
communication, the performers whose performances have been recorded on it shall be entitled to
financial compensation.
For the purposes of the above, Article 54 specifies that, unless otherwise stipulated:(i) The broadcasting authorization does not entail authorization to permit other
broadcasting organizations to rebroadcast the performance;
(ii) the broadcasting authorization does not entail authorization for fixation of the
performance;
(iii) the authorization for broadcasting and fixation of the performance does not entail
authorization to reproduce the fixation;   and
(iv) the authorization for fixation of the performance and reproduction of the fixation does
not entail authorization to broadcast the performance from the fixation of the
reproductions.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 48
Again, Article 57 of the Law recognizes that performers have the personal, inalienable and
perpetual right for their name or artistic pseudonym to be linked to their performance and to oppose
distortion or mutilation thereof.
Producers of phonograms
On the basis of Article 58 of the Law, producers of phonograms have the exclusive right to
authorize or prohibit the direct or indirect reproduction, distribution and communication to the public
or any other form of means of use of their phonograms or their reproductions and to make
phonograms available to the public, by any means, in such a manner that members of the public can
gain access to them from the place and at the time they choose.
The right of distribution includes the authority to distribute phonograms, either by sale, rental
or in any other manner.  When the distribution is by sale, this right is extinguished as from the first
sale made, save for legal exceptions.  When the distribution is by rental, putting the original or
authorized copies of the phonogram on the market does not extinguish the right.
The right of importation, for its part, includes the authority to authorize or prohibit the
importation of copies of legally manufactured phonograms and to prevent the importation of copies
manufactured without the authorization of the right holder.  Article 59 clearly lays down the
obligation on anyone performing or causing the public performance, in any form, of a phonogrampublished for commercial purposes to obtain prior written authorization from the producer and to pay
him a fee.
Broadcasting organizations
Under the terms of Article 62 of the Law, broadcasting organizations enjoy the exclusive right
to authorize or prohibit:
(i) The fixation of their broadcasts in a physical or material medium, including the
fixation of any image or sound or isolated images and sounds in a broadcast;
(ii) the reproduction of fixations of their broadcasts by any means that is known or
becomes known;
(iii) the rebroadcasting of their broadcasts by any means or procedure that is known or
becomes known;
(iv) the communication to the public of their broadcasts in places to which the public
gains access by the paying of an admission fee or places to which the public gains
access for the purposes of consuming or purchasing goods or services of any kind.
The same Article affords equivalent protection to the established protection for the original
organizations or stations which broadcast by cable, fibre optics or a similar process.
7. Article 18 of the Berne Convention, as incorporated into the TRIPS Agreement in
Article 9.1 of the TRIPS Agreement, requires that copyright be restored for works that are still
protected under copyright in their country of origin and have not had a full term of protectionin Guatemala.  Please describe in detail how Guatemala has implemented this obligation and
cite to the relevant provisions of law.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 49
Article 7.8 of the Berne Convention establishes that a work's term of protection is the term
established by the law of the country where protection is claimed.  Since both the TRIPS Agreement
and the Berne Convention establish the minimum protection required internationally, Article 18 of the
Convention requires the application of such protection to works which have not fallen into the publicdomain in the country of origin and have not fallen into the public domain of the country where
protection is claimed.
In this regard, Article 135 of Guatemala's La w on Copyright and Related Rights establishes
that the provisions of the Law apply to:
(a) National works that have not fallen into the public domain;   and(b) foreign works which have not fallen into the public domain in the country of origin,
on the understanding that if the term of protection in the country of origin is greater
than that under Guatemalan legislation, the term of protection provided for in
Guatemalan law would apply, as establishe d in Article 7.8 of the Berne Convention
and Article 43, paragraph 3, of the Guatemalan law.
8. Article 14.6 of the TRIPS Agreement requires that protection be restored for
phonograms that are still under protection of copyri ght or related rights law in their country of
origin and that have not had a full term of protection in Guatemala.  Please describe in detailhow Guatemala has implemented this obligation and cite to the relevant provisions of  law.
Although Guatemalan law does not contain any express provision in this connection,
Article 14.5 of the TRIPS Agreement applies automatically, for as already stated, since the TRIPS
Agreement is an international instrument duly approved and ratified by Guatemala, it is fully andautomatically operative under the terms established in Article 65 of that Agreement, without any
reservation and without need for further elaboration in national legislation.
C. 
TRADEMARKS
9. Please explain how Guatemala's trademark la w provides for a presumption of likelihood
of confusion, as required by Article 16.1 of th e TRIPS Agreement, where an identical mark for
identical goods and services is used without au thorization on identical goods or services, and
cite to the relevant provision.
Article 21 of the Industrial Property Law establishes the grounds for the inadmissibility of a
trademark, stipulating in paragraph (a) that  it will not be possible to register as a trademark or as an
element thereof a sign that is identical or similar to a registered trademark or one applied forbeforehand by a third party, for the same or similar goods or services, or for different goods or
services when they could create confusion or a risk of association with that trademark.
The Article in question covers four instances refusing the registration of a sign:
(a) In the case of identical signs for identical goods or services;
(b) in  the case of identical signs for similar goods or services;(c) in the case of similar signs for identical goods or services;   and(d) in the case of similar signs for similar goods.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 50
In the first of these instances, Guatemalan practice has been to refuse the registration of a new
sign on the grounds of likelihood of confusion among the public.  In the remaining instances, the
appropriate administrative authority has analysed the degree of confusion that might exist in deciding
whether to approve or to refuse the sign.  Accordingly, the Industrial Property Law, which enteredinto force recently, sets out in Article 29 some rules for determining the degree of resemblance
between signs, specifying that, in order for a likelihood of confusion to exist, it is not enough for the
signs to be similar but also for the goods or services to be of the same kind, thereby referring to the
first of the instances mentioned above (paragraph (a)).
10. Please describe in detail any limitations or  special requirements that apply to trademark
rights under Guatemala's laws and indicate how those limitations take account of theillegitimate interests of the owner of the trademark and of third parties.
The only limitations on the right of the owner of a trademark are set out in Article 36 of the
Industrial Property Law, which establishes that the owner of a trademark may not prohibit a third
party from using, in connection with lawfully marketed goods or services:
(a) His name or address, or those of his establishments;
(b) particulars or information about the features of the goods and services, inter alia ,
those pertaining to quantity, quality, use and geographical origin or price;  and
(c) particulars or information on availability, use, application or compatibility of his
goods or services, especially in connection with spare parts or accessories.
These limitations will operate provided the use is made in good faith and does not create
confusion about the business origin of the goods or services.
11. Please explain in detail how Guatemala's trademark and other laws ensure protection of
well-known trademarks and service marks, citing to the relevant provisions of law.
Guatemalan law suitably regulates the protection of well-known trademarks.  To begin with,
it should be pointed out that the law establishes that, as a general rule, for the owner of a trademark
which is protected abroad to be able to enjoy the rights and guarantees established by Guatemalan
law, the trademark must have been registered in Guatemala, except in the case of well-known marks
(Article 17).
Secondly, Article 21(c) of the Guatemalan law clearly establishes that a sign may not be
registered as a trademark or as an element thereof, inter alia , when the sign constitutes a reproduction,
imitation, translation or transcription, whether total or partial, of a third party's well-known trademark,
even though it is not registered in Guatemala, regardless of the goods or services to which the signapplies, if use and registration of the sign is likely to create confusion or a risk of association with that
third party, or create unfair use of the name of the sign or impair or affect its distinctiveness.  The
rules to be taken into account in conducting a substantive examination of an application for
registration or resolving any opposition to it or in  the event of the nullity and/or cancellation of
trademark registrations, include the rule whereby, if one of the trademarks in conflict is well-known,the other must be clearly and readily differentiable, so as to avoid the possibility of improper use of
the prestige of the other trademark (Article 29(h))
Lastly, in regulating the possibility of making a judicial claim to nullify the registration of a
well-known trademark that has been registered by someone who was not entitled to it, Guatemalanlaw establishes a presumption of bad faith on the part of the person who obtained it.  In such cases, anIP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 51
action to cancel the registration may be brought at any time (Articles 67 and 203 of the Industrial
Property Law).
D. GEOGRAPHICAL INDICATIONS
12. Please describe in detail how and under what laws geographical indications are
protected in Guatemala and cite to the relevant provisions of law.
Article 78 of the Industrial Property Law prohibits the use in trade of geographical indications
in connection with a good or service when the indication is false or misleading as regards the
geographical origin or qualities of the good or service, or when its use could confuse the public as to
the origin, characteristics or qualities of the good or service.  Article 79 of the Law uses similar terms,but in connection with the use of a geographical indication in advertising or in trade documents
relating to the sale, display or supply of goods or services.
Again, Article 20 prohibits the registration of trademarks that are likely to mislead or confuse
the public about the geographical source of the good or service in question (paragraph j) andtrademarks which consist of a geographical indication that does not comply with the terms of
Article 16 (paragraph k), which states that trademarks may consist of national or foreign geographical
indications, provided they are sufficiently arbitrary and distinctive with regard to the goods or services
to which they apply and their use is not likely to create confusion or mistaken association with respect
to the origin, source, qualities or characteristics of the goods or services for which the trademarks areused.
It is also important to mention that, pursuant to Article 83 of the Law, unlawful use of an
appellation of origin, regardless of the good for which it is used, will give rise to action provided for
in Law, even in  cases where it is preceded or followed by indications such as "kind", "type", "style","imitation" or the like that may confuse the consumer or involve an act of unfair competition.
In keeping with the above, Article 173 of the Law establishes that the use, promotion or
dissemination of false or inaccurate indications or facts capable of misleading the public as to the
source of national or foreign  goods or services constitute an act of unfair competition.
13. Does the law of Guatemala regarding geographical indications provide for any of the
exceptions to protection of geographical indica tions contained in Article 24 of the TRIPS
Agreement and, if so, please describe the way in which the exception is applied and cite to the
relevant provisions of law.
Guatemalan law does not provide for any exception to protection of geographical indications.
E. 
INDUSTRIAL DESIGNS
14. Please describe in detail the way in which industrial designs, including textile designs,
are protected under Guatemala's laws and cite to the relevant provisions of law.
Under Article 4 of the Industrial Property Law, the term "industrial design" covers industrial
drawings and models, the first being taken to mean  any combination of figures, lines or colours
incorporated in an industrial or craft product for the purposes of ornamentation and giving it a
distinctive appearance of its own, and the latter as any three-dimensional form used as a model or
pattern for the manufacture of an industrial product that gives it a special appearance and has notechnical or functional purpose.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 52
In order for an industrial design to be protected it must be new.  In order for it to be
considered new, the design must differ significantly from known designs or combinations of features
thereof and must not have been publicly disclosed, in any part of the world by any means, before any
of the following dates, as from the oldest:
(a) The date of the first public disclosure by the designer or by his successor in title or by
a third party who has obtained the design as a result of some act carried out between
them;   or
(b) the date of submission of the application for registration or, where appropriate, the
date of submission of the application invoking priority.
For the purposes of assessing novelty, account shall not be taken of any disclosure within six
months before the date of submission of the appli cation or, where appropriate, the date of submission
of the application invoking priority, provided such disclosure has directly or indirectly resulted from
acts by the designer himself or his successor in title or from failure to comply with an unlawfulcontract or an unlawful act committed against any one of them (Article 152).
The protection of an industrial design confers on the owner the right to prevent third parties,
not having his consent, from making, selling, importing, offering for sale, using or in any way
commercially exploiting articles which bear or embody an industrial design which is a reproduction
identical or similar to the one protected (Article 154).
Protection does not include those elements or features that are determined entirely by the
performance of a technical function and do not embody any new contribution by the designer, nor
does it include elements or features, the reproduction of which is necessary in order to permit theproduct embodying the design to be mechanically assembled or connected to another product of
which it constitutes an integral part.  This limitation shall not apply in the case of products in which
the design is intended to permit the assembly or multiple connection of the products or their
connection within a modular system (Article 149).
The protection conferred on industrial designs does not preclude or affect any protection
under other legal rules such as those pertaining to trademarks or copyright (Article 148).
As to the way in which protection is obtained, the law establishes that the owner of an
industrial design acquires the right to legal protect ion as a result of any of the following acts:
(a) The first public disclosure of the industrial design, by any means and at any place, by
the designer or his successor in title, or by a third party who has obtained the design
as a result of some act carried out by one of them;   or
(b) registration of the industrial design (Article 151).
In the first of these cases, the industrial design enjoys protection without need for registration
for a period of three years from the date of the disclosure.  Such protection is independent of the
protection obtained by registration (Article 153).  In the second case, registration of an industrial
design shall be valid for ten years as from the submission of the application (Article 159) and may be
renewed only once for a period of five years, provided the owner so requests at least 60 days beforethe expiry of the original period (Article 160).IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 53
F. PATENTS
15. Please explain whether an invention within the categories specified below may be
patented under Guatemala's patent law if it is novel, involves an inventive step and is
industrially applicable:
(a) Process inventions which, in whole or part, consist of steps that are performed
by a computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention
including:
(i) Machine-readable computer program code stored on a tangible medium
such as a floppy disk, computer hard drive or computer memory;
(ii) a general purpose computer whose novelty over the prior art arises
primarily due to its combination with a specific computer program;
(c) process inventions that facilitate the conduct of business;  and(d) micro-organisms.
Guatemalan legislation establishes that the economic, advertising or business plans,
principles, rules or methods and those relating to purely mental or intellectual activities or to games
do not constitute inventions.  The same provision is included for computer programs, since they are
protected by the copyright legislation.
Equipment capable of reading computer programs, as such, inasmuch as they qualify in terms
of novelty, inventive level and industrial application, may be protected by a patent.  Similarly, the
physical media in which a computer program is incorporated are patentable only when they fulfil the
three requirements.
Micro-organisms can be patented.
16. Please describe any exclusions from patent ability contained in Guatemala's patent law
and cite to the relevant provisions.
Under Article 92 of Guatemala's Industrial Property Law, the following are not patentable:
(a) Diagnostic, therapeutic and surgical methods for the treatment of human beings or
animals;
(b) an invention the exploitation of which is contrary to public order or morality;   and
(c) an invention the commercial exploitation of which needs to be prevented in order to
preserve human, animal or plant life or health or the environment.
It should also be pointed out that, under Article 91 of the Law, the following do not constitute
inventions and, consequently, are not patentable:
(a) Mere discoveries;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 54
(b) materials or energy in the form in which they are found in nature;
(c) biological processes as they occur in nature and which do not involve human
intervention, except microbiological processes;
(d) scientific theories and mathematical methods;(e) purely aesthetic creations, literary and artistic works;(f) economic, advertising or business plans, principles, rules or methods and those
relating to purely mental or intellectual activities or games;   and
(g) computer programs considered in isolation.
17. Please describe in detail the rights acquired by a patent holder in connection with a
product patent and in connection with a process patent and cite to the relevant provision of law.
Article 128 of the Industrial Property Law establishes that:
(a) Where the patent claims a product, the owner has the right to make, offer for sale, sell
or use the patented product or import it or store it for such purposes;   and
(b) where the patent claims a process, the owner has the right to use the patented process
or make, offer for sale, sell or use the product obtained directly by the patented
process.
18. Please identify any exceptions to the righ ts conferred by a patent in Guatemala and
indicate the manner in which the law of Guat emala ensures that such exceptions do not
unreasonably conflict with a normal exploitation of the patent and do not unreasonably
prejudice the legitimate interests of the patent ow ner, taking account of the legitimate interests
of third parties.
Article 130 of the Industrial Property Law establishes, among the limitations on the rights
conferred by a patent, that the owner does not have the right to prevent the following acts:
(a) Those carried out in private and for non-commercial purposes;(b) those carried out exclusively for educational or scientific or academic research
purposes, with no commercial purpose;   and
(c) those referred to in Article 5 ter of the Paris Convention.
When the patent protects a plant or animal or the material for reproduction or multiplication,
the owner cannot prevent the use of the product obtained from the protected plant or animal or
marketing of the product, provided it has been obtained on the person's own farm (Article 129).
19. Please verify that the terms of all patents in existence in Guatemala on 1 January 2000,
and of all patents granted thereafter, will not end before the expiration of the period of 20 yearsmeasured from the date of filing.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 55
Article 211 of the Industrial Property Law establishes that the term of patents that have not
expired at the time of entry into force of the Law may be extended for up to 20 years, on written
application by the owner at least two months before the expiry of the original period.
20. Article 27.1 of the TRIPS Agreement requires that patents be available and patent
rights enjoyable without discrimination as to whether products are imported or locally
produced.  Please verify that importation of  patented products will satisfy the working
requirement in Guatemala's patent law.
The Law does not contain any provision requiring industrial exploitation of the patent in
Guatemala.
21. Please explain how the safeguards contained in Article 31 of the TRIPS Agreement are
implemented under Guatemala's patent law in relation to any compulsory licence that might be
granted and cite to the relevant provisions of law.
Guatemala's Industrial Property Law provides for compulsory licensing to remedy any
anti-competitive practices or on grounds of a national emergency, public health, national security or
public non-commercial use.  Title III, Chapter I, Section six, of the Law sets out the following
conditions for granting compulsory licences:
(a) The person applying for a compulsory licence shall demonstrate that he has
previously asked the patent owner for a contractual licence and could not obtain it on
reasonable commercial terms and conditions, except in the case of a compulsory
licence on the grounds of a national emergency or for non-commercial use by the
State (Article 135);
(b) compulsory licences shall be granted predominantly for the supply of the domestic
market (Article 136(a));
(c) the owner of the patent for which a compulsory licence has been granted shall receive
adequate remuneration according to the circumstances of each case and the economic
value of the licence (Article 136 (b));
(d) compulsory licences may not be granted on an exclusive basis, nor may they be
assigned or sub-licensed, and they may only be transferred along with the company
(Article 136 (c));
(e) the licence may be cancelled if the circumstances under which it was granted no
longer exist and are unlikely to recur (Article 136, second paragraph);   and
(f) an appeal for reversal shall lie against decisions granting compulsory licences, as an
administrative appeal to be settled by the au thority higher than the one that issued the
decision.  This decision may be challenged judicially by an administrative action
(Article 136, third paragraph, of the Industrial Property Law, and Articles 7, 19 and
20 of the Administrative Litigation Law).
In cases of compulsory patent licensing involving dependent patents, Article 137 establishes
the following further conditions:IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 56
(a) The invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed in
the first patent;
(b) the compulsory licence to exploit the first patent may be transferred only with the
second patent;   and
(c) the owner of the first patent shall be entitled to a licence for the second patent.
22. Please indicate the number of compulsory licences issued under Guatemala's patent law
in each of the last five years.
Guatemala has not authorized any compulsory licence in the last five years.
23. Please describe in detail the manner in which plant varieties are protected under
Guatemala's laws.
Plant varieties are formally protected by a patent, but the patentability conditions are different
from those traditionally required.  In the case of a plant variety, the patentability conditions under
Article 93 of the Industrial Property Law are novelty, distinctness, homogeneity and stability.
The scope of the rights conferred by a patent for a new plant variety is different from that of
other kinds of inventions, since the owner cannot prevent third parties from using the protected
variety as the initial basis for obtaining a new viable biological material and marketing the material
obtained, unless the new variety requires repeated use of the patented material.  Nor can the owner
prevent the product obtained from the protected plant from being used for further reproduction ormultiplication or for marketing of that product, provided the product has been obtained at the farmer
or cattle breeder's own farm and the reproduction or multiplication is done at that farm (Article 129).
G. 
LAY-OUT DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
24. Please describe how Guatemala implements the obligations of Section 6, Part II of the
TRIPS Agreement and cite to the relevant provisions of law.
Guatemala has not yet passed any specific legislation to regulate the protection of lay-out
designs, and protection is therefore granted for a term of ten years from the first commercial
exploitation of the lay-out design, as specified in Article 38.2 of the TRIPS Agreement, which forms
part of Guatemala's law.  Under the Guatemalan legal system, international agreements automatically
apply, except in cases where, under the Agreement, sp ecific legislation has to be elaborated.  In fact,
Article 46 of the Constitution of the Republic esta blishes that, in regard to human rights (which
includes copyright and inventors' rights), treaties and agreements accepted by Guatemala prevail over
domestic law.
H. PROTECTION OF UNDISCLOSED INFORMATION
25. Paragraph 2 of Article 39 of the TRIPS Agreement requires Members to provide
protection for all undisclosed information, including technical know-how and commercial
information, which meets certain criteria.  This protection must endure as long as the conditions
identified in paragraph 2 of Article 39 are met and protection cannot be conditioned on
registration.  Please explain how Guatemala fulfils this obligation.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 57
Guatemala's Industrial Property Law protects trade secrets which meet the conditions set out
in Article 39.2 of the TRIPS Agreement against any disclosure or exploitation without the
authorization of the owner and stipulates in Article 176 that a trade secret shall be regarded as having
been unfairly obtained when the acquisition is a result of, inter alia , non-compliance with a contract
or other obligation, abuse of confidence, bribery, disloyalty, non-compliance with a duty of loyalty or
instigation of any of these acts.
26. What measures, as required by Article 42 of the TRIPS Agreement, are taken by
judicial authorities to protect the confidentiality of undisclosed information furnished by a
party during legal proceedings to enforce rights in such information, or for other purposes.
In principle, Article 63 of the Judicial Organization Law, by enunciating the principle that the
acts and proceedings of the courts of the Republic are public, admits as exceptions to that principle
cases where, by a legal order or on grounds of public morality or security they must be kept
confidential.
The Industrial Property Law allows for two cases in which the judicial authorities are required
to afford protection for confidential information.  In the first, contained in Article 194 of the Industrial
Property Law, which refers to cases where access is allowed to detained goods or products so that the
person who has obtained the border measure can inspect them and find further evidence in support of
his claim, the court must guarantee protection of any confidential information.
The second of the cases set out in Article 199, which enunciates the principle of reversal of
the burden of proof in cases of claims for infringements of a patent-protected process, recognizes that
in the submission of any evidence to the contrary, account must be taken of the legitimate interests of
the defendant regarding protection of his trade secrets, although this does not relieve him of theburden of proving that he uses a process different from the one protected by a patent.
Again, Article 129 of the Code of Civil and Commercial Procedure sets out the general rule
that evidence can be submitted confidentially when, on account of the nature of the evidence, the
judicial authority deems it appropriate.
27. Paragraph 3 of Article 39 of the TRIPS Agreement requires that Members protect
certain test data associated with requests to obtain approval to market pharmaceutical and
agricultural chemical products from disclosure and from "unfair commercial use".  Please
describe in detail how Guatemala implements this obligation to give it practical effect and cite to
the relevant provisions of law.
Article 177 of the Industrial Property Law establishes that when, to obtain authorization to
market a pharmaceutical or agricultural chemical product containing a new chemical component it is
necessary to submit undisclosed test or other data that are a trade secret, the data can be submitted
under an assurance of confidentiality, in which case, the information is protected against disclosure or
unfair commercial use, except where necessary to protect the public or unless suitable steps are takento ensure that the data or information are protected against any unfair commercial use.
Similarly, the Article establishes that no one other than the person who has submitted this
information may rely on these data or invoke them in support of an application for approval of a
product, even though it does not entail their disclosure, for a period of 15 years from the date onwhich the initial approval to market or sell the product was granted.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 58
28. Please describe in detail how Guatemala implements the obligation in the same
provision of the TRIPS Agreement to protect su ch data against disclosure and cite to the
relevant provisions of the law.
See the response to the previous question.
I. ENFORCEMENT
29. Please describe in detail what civil actions and what civil remedies are available under
Guatemala's laws to right holders of each kind of intellectual property covered by Part II of the
TRIPS Agreement, including plant variety protecti on, that permit effective action against any
act of infringement to prevent infringement and deter further infringement, and cite to theprovisions of law providing for these remedies.
For the purpose of protecting rights under the Industrial Property Law, the following civil
actions may be taken:
(a) To submit a claim against an infringement of the rights granted (Article 196);
(b) to submit a claim to rights granted to a third party who is not entitled to them
(Article 197);
(c) to submit a claim to nullify a patent or registration granted in breach of the provisions
of the law (Article 201).
Since the rights recognized by the Law on Copyright and Related Rights are not subject to
any formality, the sole possibility allowed is to initiate civil actions on the grounds of infringement of
the rights granted (Article 133).
30. Please state whether decisions on the merits in court proceedings are provided in writing
and if those written opinions are available to the public so that people can become familiar with
the law.
Under the Guatemalan legal system, civil actions are initiated at the request of the party
affected.  Every document submitted must be accompanied by a copy so that it can be notified to the
opposing party and all evidence is received or processed by citing the opposing party (Articles 63, 128and 129 of the Code of Civil and Commercial Proced ure).  Every decision must be disclosed to the
parties, otherwise it is not binding and cannot affect the party's rights.  The complaint and the first
decision on the file must be notified in person to the defendant;  subsequent decisions are notified at
the place specified by the parties, in accordance wi th the law.  For all such notifications a copy is
furnished of the application and of the decision, or only the decision when it has not been issued as aresult of a previous application (Article 66, 67, 70, 71, 72 and 79 of the Code of Civil and
Commercial Procedure).
31. Please describe what civil provisional measures are available to right holders under
Guatemala's laws, describe the procedures that  must be followed and cite to the relevant
provisions of the law.
Under Guatemala's intellectual property laws, anyone bringing or intending to bring an action
in connection with recognized rights, whether the action is civil or criminal, may apply to the
competent judicial authority for any measure that he regards as appropriate in order to:IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 59
(a) Protect his rights;
(b) prevent an infringement from being committed;
(c) avoid the consequences of an infringement;   or
(d) obtain or preserve evidence relating to the infringement.
Under Article 187 of the Industrial Property Law, the provisional measures that may be
ordered to safeguard an industrial property right are the following:
(a) Immediate cessation of the use, application and marketing of the infringing products
and the unfair acts;
(b) seizure and confiscation of the infringing products, including containers, packets,
packaging, labelling, printed or advertising material, and the machinery and othermaterials used for the infringement;
(c) prohibition of the importation of the infringing products or the machinery and
materials to be used for the purposes of the infringement;
(d) the necessary measures to prevent the continuation or repetition of the infringement
or the acts of unfair competition;
(e) preventive notation in the register of a complaint in cases requesting nullity of a
patent or registration;   and
(f) suspension of sanitary or other registrations or licences necessary for the customs
release, distribution, sale or marketing of infringing products.
The provisional measures that may be ordered to safeguard copyright or a related right
include those under Article 128 bis of the Law on Copyright and Related Rights and in addition to the
above measures:
(a) Cessation of the unlawful acts or unlawful trading in the protected work;
(b) a search of public or private buildings;
(c) attachment of movables, including bank accounts, in the name of the persons said to
be guilty of the unlawful act;  and attachment of the infringer's net proceeds;
(d) immediate seizure and forfeiture of copies of specimens of unlawfully produced
works and phonograms and of the instruments used to produce them, transport them,
keep them, distribute them, offer them for sale, rent them or communicate them in
any form;
(e) suspension of customs release of copies or specimens of unlawfully reproduced
works and phonograms;
(f) order for a review of the accounts of the persons said to be responsible for the
unlawful act;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 60
(g) seizure of the accounting records of the person said to be guilty of the unlawful act or
of the accounting equipment containing the registers;
(h) temporary closure of the premises or business containing the copies or specimens of
unlawful works and phonograms;   and
(i) any other suitable measure to provisionally ensure cessation of the unlawful act,
protection of the rights conferred by law or preservation of the evidence relating to
the breach.
Articles 186 and 187 of the I ndustrial Property Law;  128, 128 bis and 133 bis of the Law on
Copyright and Related Rights;  and 530 of the Code of Civil and Commercial Procedure.
Provisional measures must be requested in writing and the competent judicial authority shall
order them inaudita altera parte  within the next two days, except where a guarantee or assurance is
required, in which case the period shall start from the posting of the guarantee.
32. Please state whether judicial authorities have authority to adopt provisional measures
inaudita altera parte , as required under Article 50.2 of the TRIPS Agreement and under what
circumstances that authority will be invoked.
Under Guatemalan law, provisional measures are ordered without notification or intervention
of the defendant, and they must be notified at the time of execution or immediately thereafter
(Articles 186 of the Industrial Property Law, 133 ter of the Law on Copyright and Related Rights and
534 of the Code of Civil and Commercial Procedure).
33. Please describe in detail the procedures under Guatemala's laws, at least with respect to
counterfeit trademarked goods and pirated copyrigh t works, that allow right holders to request
customs authorities not to release goods into free circulation and cite to the relevant provisions
of law.  Please indicate if the customs authoritie s have ex officio authority to take such action.
Both the Industrial Property Law and the Law on Copyright and Related Rights allow the
possibility for holders of a registered trademark or a protected work or phonogram, or their licensees,
to request suspension of customs release and entry of goods into the channels of commerce or the
process of exporting them.  Only in the case of pirated goods may suspension of customs release be
requested directly to the customs authorities (Articles 190 and 191 of the Industrial Property Law and129 of the Law on Copyright and Related Rights).
In both cases, the application must be made in writing, specifying in detail the unlawful goods
which it is alleged are to be imported or exported, furnishing evidence pointing to the existence of
reasonable indications of the alleged infringement.  The decision ordering suspension of the decisionmust be notified to the importer, consignee or exporter of the detained products until the measure has
been executed.
34. Please indicate whether border enforcemen t is available with regard to other forms of
intellectual property rights and cite to the relevant provisions of law.
Border measures can be applied only to suspend the importation or exportation of goods
which infringe rights to a registered trademark or a protected work or phonogram (Articles 490 of the
Industrial Property Law and 129 of the Law on Copyright and Related Rights).IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 61
35. Please describe in detail how Guatemala implements the remaining provisions of
Section 4, Part III of TRIPS, citing to the relevant provisions of law.
Both the Industrial Property Law and the Law on Copyright and Related Rights establish that
anyone requesting the application of border measures shall furnish sufficient evidence providing
reasonable indications of the alleged infringement and a detailed description of the unlawful goods.
The applicant for border measures shall be liab le to the payment of damages to the importer or
exporter in the following cases:
(a) Where an action on the grounds of the alleged infringement is not brought within ten
days following notification of the suspension of the importation or exportation;
(b) when the detention is groundless, in other words, the measure is revoked or the
complaint is declared inadmissible.
The suspension of the importation or exportation shall be valid for ten days from the date of
notification of the corresponding decision.  An extension will be allowed for a similar period only in
the case of counterfeit goods prejudicial to a trademar k right.  However, in the case of the importation
of counterfeit or pirated goods, the measure may be confirmed as a precautionary measure
(Articles 193 of the Industrial Property Law and 130 of the Law on Copyright and Related Rights).
Once the measure has been ordered, the applicant shall be allowed to inspect the detained
goods in order to obtain further evidence in support of his claim (Articles 131 of the Law onCopyright and Related Rights and 194 of the Industrial Property Law).
36. Please describe in detail the criminal actions and remedies that are available with
respect to counterfeit trademarked goods and pirated copyrighted works and cite to the
relevant provisions of law.
Article 275 of the Criminal Code establishes in  connection with industrial property that the
following acts, inter alia , constitute an offence:
(a) Introducing into commerce, selling, offering for sale, storing or distributing goods or
services covered by a registered distinctive sign or by an imitation or counterfeit of
such signs, in connection with goods or services the same as or similar to thoseprotected by the registration;
(b) introducing into commerce, selling, offering for sale, storing or distributing goods or
services covered by registered distinctive sign after having totally or partly altered,
replaced or removed it;
(c) the use, offering for sale, storing or distributing of goods or services bearing a
registered trademark, confusingly like another registered mark, after an order has
been issued to cease using that trademark;
(d) the making of labels, containers, packaging or other similar materials reproducing or
containing the registered sign or an imitation or counterfeit thereof, as well as the
marketing or storing of such materials;  and
(e) the use in commerce of labels, packets, containers and other packaging of goods or of
the identification of a trader's services or copies, imitations or reproductions thereof
that may mislead the public as to the origin of the goods or services.IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 62
The penalty for these offences is one to four years' imprisonment and a fine of 1,000 to
500,000 quetzales, without prejudice to any damages payable.
For its part, Article 274 of the Criminal Code establishes in connection with copyright and
related rights that the following acts constitute an offence:
(a) The false attribution of the status of author and/or copyright holder, performer,
phonographic producer or a broadcasting organization;
(b) the distortion, mutilation, modification or any action that causes injury to the integrity
of the work or to the honour and reputation of the author;
(c) the reproduction of any work, performance, phonogram or broadcast, without the
authorization of the author or relevant right holder;
(d) the adaptation, arrangement or modification of a protected work or part thereof,
without the authorization of the author or the right holder;
(e) the communication to the public by any means or procedure of a protected work or a
phonogram, without the authorization of the relevant right holder;
(f) the unauthorized reproduction, total or partial, of a protected work or a phonogram,
whether by means of sale, rental, lease, rental with an option to buy, loan, or in any
other manner;
(g) the fixation, reproduction or communication to the public, by any means or procedure
of an artistic performance, without the authorization of the performer or the rightholder;
(h) the fixation, reproduction or retransmission of a broadcast transmitted by satellite,
broadcasting or by wire, cable, fibre optics or any other procedure, without the
authorization of the owner;
(i) the communication to the public of a broadcast or transmission in a place to which the
public can gain access by the payment of an admission fee, or for the purposes of
consuming or purchasing goods or services, without the authorization of the relevant
right holder;
(j) the publication of a protected work with the title changed or removed, with or without
being altered;
(k) the decodification of programme-carrying signals of any kind transmitted by satellite
or any other means of telecommunication, without the authorization of the legitimatedistributor;
(l) any act that circumvents or attempts to circumvent a technological measure
implemented by the author or the holder of a related right, so as to avoid unauthorized
use of any kind of protected work, phonogram, artistic performance or broadcast;
(m) any act that induces, permits, facilitates or conceals an infringement of any of the
exclusive rights pertaining to authors, copyright holders, performers, phonogram
producers or broadcasting organizations;IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 63
(n) the unauthorized removal or alteration of any electronic information concerning the
collective management of copyright or related rights;
(o) the unauthorized distribution, marketing, promotion, importation, broadcasting or
communication to the public of works, artistic performances, phonographic
productions or broadcasts, in the knowledge that the electronic information
concerning the collective management of any of those rights has been removed or
altered without authorization;
(p) the transportation, storage or concealment of reproductions or copies, in any physical
medium, of protected works, phonograms, artistic performances or broadcasts, made
without the consent of the author or relevant title holder;
(q) the collection of financial benefits for the use of protected works, performances,
phonograms or broadcasts or engaging in any other activities proper to a collectivemanagement company, without being authorized to do so;
(r) the disclosure of an unpublished work without the consent of the author or the
relevant title holder;
(s) the full or partial translation of a work without the authorization of the author or the
relevant right holder;
(t) the unauthorized distribution of original or lawful reproductions of a protected work
or a phonogram, whether by means of sale, rental, rental with an option to buy, loanor any other manner;  and
(u) the importation or exportation of the original or reproductions of any protected work
for commercial exploitation, in any type of medium, or in phonograms, without the
authorization of the relevant right holder.
The penalty for one of these offences is one to four years' imprisonment and a fine of 1,000 to
500,000 quetzales, without prejudice to any damages payable.
37. Please indicate the authorities responsible for criminal actions involving intellectual
property rights and indicate whether their authority extends to other forms of intellectual
property rights.
Criminal actions for infringements of any intellectual property rights are dealt with by the
courts with jurisdiction at the place where the unlawful act is committed.  The Department of Public
Prosecutions is responsible for bringing criminal actions against persons guilty of infringements of
intellectual property rights.
38. Please explain whether and under what circumstances seizure, forfeiture and
destruction of infringing goods and any materials and implements are available as remedies in
wilful trademark counterfeiting or copyright piracy cases and describe the conditions under
which such penalties would be imposed.
The seizure, forfeiture and destruction of goods that infringe a protected intellectual property
right, as well as the forfeiture and destruction of the materials and equipment used in making them,IP/Q/GTM/1, IP/Q2/GTM/1,
IP/Q3/GTM/1, IP/Q4/GTM/1
Page 64
are measures that may be requested provisionally or ordered in a judgement at the close of civil or
criminal proceedings relating to infringements of intellectual property rights.
39. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated-circuit lay-out design, and trade secret
enforcement for each of the years 1998 and 1999, including the number of cases filed;
injunctions issued;  infringing products seized ;  infringing equipment seized;  cases resolved
(including settlement);  and the amount of damages awarded.
At the present time, the Guatemalan judiciary has no data system to furnish the requisite
information and an inquiry would have to be conducted with approximately 400 courts throughout theRepublic that are competent to deal with civil and criminal proceedings.  It is difficult to do this at the
present time.
40. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1998 and 1999, including the
number of raids, prosecutions, convictions, and th e amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that the criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
See the response to the previous question.
41. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in Guatemala, particularly initiatives related to criminal
enforcement.
At the present time no initiative is planned to change the laws protecting intellectual property
rights because the Industrial Property Law and the recent amendments to the Law on Copyright and
Related Rights were adopted by the Congress on 31 August 2000, were published in the Official
Gazette on 27 September 2000 and entered into force on 1 November 2000.
__________