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 public 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 in Guatemalan law would apply, as established 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 an international instrument duly approved and ratified 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.

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 legislation 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 the retroactive 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 was 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).

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 arbitrary 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.

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 advertising slogans 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.

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 a mark 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 will also 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 national 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.

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.

See the reply to question 11.

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 to the 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, qualities 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 to the origin, source, characteristics or qualities of the good or service.

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.

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, whose qualities or characteristics are exclusively or essentially attributable to the geographical environment in which it is produced, including natural, human or cultural factors.

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 and appellations 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.

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 competent court 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 interests 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.

Guatemalan law does not provide for any exception to the protection of geographical indications.

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 a modular 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.

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.

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.

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 industrial design is valid for ten years as from the submission of the application (Article 159) and may be 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).

According to Article 94 of the Industrial Property 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 Property Registry 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 of contract 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, manufacturing, building, mining, fishing and services.

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 exploitation of the invention as a condition for maintaining the rights 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.

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.