El Salvador has taken a significant step in advancing its intellectual property reforms with the enactment of new legislation, as published in the Official Gazette Number 153 dated 15 August 2024. This legislation consolidates the country’s existing IP regulations and is set to come into effect six months later, on 15 February 2025.
This legislation marks a significant and welcome shift from the three-decade old intellectual property framework established by the Law on Trademarks and Other Distinctive Signs, as well as the previous Intellectual Property Law, which only addressed matters related to copyright, related rights and industrial property in relation to inventions (patents), utility models, industrial designs.
Considered to be establishing a comprehensive IP regime, the following are key highlights of the new law:
- Creation of a centralized IP institute: The law establishes the Institute Salvadoreno de la Propiedad lntelectual (ISPI) within the Centro Nacional de Registros (CNR), streamlining IP activities under a unified framework. This institute will be replacing the Intellectual Property Registry.
- Publications (Article 121): Presently, new intellectual property filings are published in the Official Gazette and in a newspaper of major national circulation. Now, this new law has created an IP Bulletin dedicated to intellectual property publications. The ISPI will electronically publish the trade mark application in this designated IP bulletin within four months following the notification of acceptance of the trade mark and upon payment of the corresponding fee by the applicant.
- Expansion of what constitutes a trade mark (Article 107): The new law has made a commendable move by expanding the definition of a trade mark. This updated definition now extends protection to non-distinctive trade marks such as taste and textures.
- Upgraded protection and new timelines:
- Trade Marks and Other Distinctive Signs
(i) Trade Names (Article 171): The new law requires renewal of Trade Names after every 10 years in contrast to the previous protection granted for indefinite validity. The registration will be valid for 10 years from the date of registration and will be renewable for equal periods. In order to renew the trade name, the applicant must prove its use. Trade Names which have been registered before this new law comes into effect will remain registered for 10 years from the date of their registration.
(ii) Commercial Advertising Signs (Article 166): Similarly, Commercial Advertising Signs are now valid for 10 years from their date of registration in contrast to the indefinite validity under the old law. Use must be proved on its renewal. Signs which have been registered before this law comes into effect will only be registered for 10 years from the date of their registration.
(iii) Franchise Contracts (Article 140): The new law now provides for the possibility of registering franchise contracts. License holders can also register a license to use a registered trade mark.
(iv) Annulment of Trade Marks (Article 144 in relation to Article 111): The new law now allows interested parties to file an action to annul the registration of trade mark. Previously, the law mandated the need to file such an action before the Court.
(v) Cancellation of Trade Marks for becoming “Generic” (Article 145): In addition to the above, interested parties may file for the cancellation of a trade mark (goods or services) on the basis it has become generic.
(vi) Domain names (Article 316): If a distinctive sign application contains a domain name (generic or country code top-level), the applicant must provide documentation justifying its use when applying for registration. However, submitting this documentation does not guarantee immediate approval, as the application will still be reviewed to ensure it does not infringe the rights belonging to any other distinctive sign or an existing company name (Article 112 (e))
- Patents and Industrial Designs
(vii) Industrial Designs (Article 249): The protection is extended to 15 years from 10 years under the previous law. The date of renewal will be calculated from the date of filing the application. The patent holder will also have to pay a maintenance fee after every five years.
(viii) Bolar Exception (Article 209): An express definition of the Bolar Exception is now introduced in this law clarifying when this defence from a patent infringement claim may be available.
(ix) Invention that cannot be protected (Article 197-(g): Under the new law, products or procedures already patented cannot be patented again merely due to the fact that the use now differs from that of the original patent.
(x) Schemes for encouraging IP protection (Article 324): This new law has introduced exemptions and flexibilities for various entities such as institutions belonging to the State and the Municipalities are exempted from payment of official fees; 50% official fee exemption to higher education institutions, individuals registered with the National Registry of Cultural Workers and Art, and Micro and Small Business Owners, seeking intellectual property protection.
The newly revamped legislation in El Salvador is aiming to encourage businesses (both domestic and international) to invest in and safeguard their IP. By modernizing the legal framework for protecting intellectual property, the law is providing a clearer and more modern framework for applicants.
Should you like to review the current IP landscape in El Salvador, you may access HSM IP’s brief country guide discussing the existing trade mark and patent framework.