Guatemalan law suitably regulates the protection of well-known trademarks. To begin with, it should be pointed out that the law establishes that, as a general rule, for the owner of a trademark which is protected abroad to be able to enjoy the rights and guarantees established by Guatemalan law, the trademark must have been registered in Guatemala, except in the case of well-known marks (Article 17). Secondly, Article 21(c) of the Guatemalan law clearly establishes that a sign may not be registered as a trademark or as an element thereof, inter alia, when the sign constitutes a reproduction, imitation, translation or transcription, whether total or partial, of a third party's well-known trademark, even though it is not registered in Guatemala, regardless of the goods or services to which the sign applies, if use and registration of the sign is likely to create confusion or a risk of association with that third party, or create unfair use of the name of the sign or impair or affect its distinctiveness. The rules to be taken into account in conducting a substantive examination of an application for registration or resolving any opposition to it or in the event of the nullity and/or cancellation of trademark registrations, include the rule whereby, if one of the trademarks in conflict is well-known, the other must be clearly and readily differentiable, so as to avoid the possibility of improper use of the prestige of the other trademark (Article 29(h)) Lastly, in regulating the possibility of making a judicial claim to nullify the registration of a well-known trademark that has been registered by someone who was not entitled to it, Guatemalan law establishes a presumption of bad faith on the part of the person who obtained it. In such cases, an action to cancel the registration may be brought at any time (Articles 67 and 203 of the Industrial Property Law).

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) and trademarks which consist of a geographical indication that does not comply with the terms of Article 16 (paragraph k), which states that trademarks may consist of national or foreign geographical indications, provided they are sufficiently arbitrary and distinctive with regard to the goods or services to which they apply and their use is not likely to create confusion or mistaken association with respect to the origin, source, qualities or characteristics of the goods or services for which the trademarks are used. 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.

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

Under Article 4 of the Industrial Property Law, the term "industrial design" covers industrial drawings and models, the first being taken to mean any combination of figures, lines or colours incorporated in an industrial or craft product for the purposes of ornamentation and giving it a distinctive appearance of its own, and the latter as any three-dimensional form used as a model or pattern for the manufacture of an industrial product that gives it a special appearance and has no technical or functional purpose. In order for an industrial design to be protected it must be new. In order for it to be considered new, the design must differ significantly from known designs or combinations of features thereof and must not have been publicly disclosed, in any part of the world by any means, before any of the following dates, as from the oldest: (a) The date of the first public disclosure by the designer or by his successor in title or by a third party who has obtained the design as a result of some act carried out 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 application or, where appropriate, the date of submission of the application invoking priority, provided such disclosure has directly or indirectly resulted from acts by the designer himself or his successor in title or from failure to comply with an unlawful contract or an unlawful act committed against any one of them (Article 152). The protection of an industrial design confers on the owner the right to prevent third parties, not having his consent, from making, selling, importing, offering for sale, using or in any way commercially exploiting articles which bear or embody an industrial design which is a reproduction identical or similar to the one protected (Article 154). Protection does not include those elements or features that are determined entirely by the performance of a technical function and do not embody any new contribution by the designer, 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 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 protection 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 before the expiry of the original period (Article 160).

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.

Under Article 92 of Guatemala's Industrial Property Law, the following are not patentable: (a) Diagnostic, therapeutic and surgical methods for the treatment of human beings or animals; (b) an invention the exploitation of which is contrary to public order or morality; and (c) an invention the commercial exploitation of which needs to be prevented in order to preserve human, animal or plant life or health or the environment. It should also be pointed out that, under Article 91 of the Law, the following do not constitute inventions and, consequently, are not patentable: (a) Mere discoveries; (b) materials or energy in the form in which they are found in nature; (c) biological processes as they occur in nature and which do not involve human intervention, except microbiological processes; (d) scientific theories and mathematical methods; (e) purely aesthetic creations, literary and artistic works; (f) economic, advertising or business plans, principles, rules or methods and those relating to purely mental or intellectual activities or games; and (g) computer programs considered in isolation.

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.

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 5ter 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).

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.

The Law does not contain any provision requiring industrial exploitation of the patent in Guatemala.

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 authority 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.

Guatemala has not authorized any compulsory licence in the last five years.

Plant varieties are formally protected by a patent, but the patentability conditions are different from those traditionally required. In the case of a plant variety, the patentability conditions under Article 93 of the Industrial Property Law are novelty, distinctness, homogeneity and stability. The scope of the rights conferred by a patent for a new plant variety is different from that of other kinds of inventions, since the owner cannot prevent third parties from using the protected variety as the initial basis for obtaining a new viable biological material and marketing the material obtained, unless the new variety requires repeated use of the patented material. Nor can the owner prevent the product obtained from the protected plant from being used for further reproduction or multiplication or for marketing of that product, provided the product has been obtained at the farmer or cattle breeder's own farm and the reproduction or multiplication is done at that farm (Article 129).

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, specific legislation has to be elaborated. In fact, Article 46 of the Constitution of the Republic establishes that, in regard to human rights (which includes copyright and inventors' rights), treaties and agreements accepted by Guatemala prevail over domestic law.

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.

In principle, Article 63 of the Judicial Organization Law, by enunciating the principle that the acts and proceedings of the courts of the Republic are public, admits as exceptions to that principle cases where, by a legal order or on grounds of public morality or security they must be kept confidential. The Industrial Property Law allows for two cases in which the judicial authorities are required to afford protection for confidential information. In the first, contained in Article 194 of the Industrial Property Law, which refers to cases where access is allowed to detained goods or products so that the person who has obtained the border measure can inspect them and find further evidence in support of his claim, the court must guarantee protection of any confidential information. The second of the cases set out in Article 199, which enunciates the principle of reversal of the burden of proof in cases of claims for infringements of a patent-protected process, recognizes that in the submission of any evidence to the contrary, account must be taken of the legitimate interests of the defendant regarding protection of his trade secrets, although this does not relieve him of the burden of proving that he uses a process different from the one protected by a patent. Again, Article 129 of the Code of Civil and Commercial Procedure sets out the general rule that evidence can be submitted confidentially when, on account of the nature of the evidence, the judicial authority deems it appropriate.

Article 177 of the Industrial Property Law establishes that when, to obtain authorization to market a pharmaceutical or agricultural chemical product containing a new chemical component it is necessary to submit undisclosed test or other data that are a trade secret, the data can be submitted under an assurance of confidentiality, in which case, the information is protected against disclosure or unfair commercial use, except where necessary to protect the public or unless suitable steps are taken to ensure that the data or information are protected against any unfair commercial use. Similarly, the Article establishes that no one other than the person who has submitted this information may 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 on which the initial approval to market or sell the product was granted.

See the response to the previous question.

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).

Under the Guatemalan legal system, civil actions are initiated at the request of the party affected. Every document submitted must be accompanied by a copy so that it can be notified to the opposing party and all evidence is received or processed by citing the opposing party (Articles 63, 128 and 129 of the Code of Civil and Commercial Procedure). 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 with the law. For all such notifications a copy is furnished of the application and of the decision, or only the decision when it has not been issued as a result of a previous application (Article 66, 67, 70, 71, 72 and 79 of the Code of Civil and Commercial Procedure).