SIZE of the market:: + EU import from Paraguay in 2013: € 1.162 million

(Source: DG Trade) + EU export to Paraguay in 2013: € 536 million (Sou-

rce: DG Trade) + The EU is the second largest investor in Paraguay,

after the US and just before Brazil. Between 2010 and 2012, EU FDI flows into Paraguay increased from €11 million to €39 million (DG Trade).

+ Paraguayan import from the EU in 2013 (in thou-sands of euros): 610,712 (Source Trade Map-Rediex)

+ In 2012, the EU was Paraguay’s fourth most impor-tant trading partner (after Brazil, China and Argen-tina), accounting for 9.5% of Paraguay’s total tra-de. EU-Paraguay trade amounted for €1.4 billion in 2012 (Source: DG Trade).

PARAGUAYMERCOSUR IPR SME Helpdesk

Country Factsheet

THE FACTS: Business in Paraguay for EU SMEs

SIZE of the marketKey INDUSTRY SECTORS

1.

IPRs in Paraguay for SMEs: BACK-GROUND

Intellectual Property Rights for SMEs: Why is this RELEVANT to you?How does Paraguay’s IP legal framework compare to INTERNATIONAL STAN-DARDS?

2.

IP Rights in Paraguay: THE BASICS

A. Copyright and related rightsB. PatentsC. TrademarksD. Industrial designsE. Trade namesF. Geographical indications and appellations of originG. Plant varieties

3.

ENFORCING your IP 5.

Using CUSTOMS to block counterfeits 4.

1. THE FACTS: Business in Pa-raguay for EU SMEs

RELATED LINKS and Additio-nal Information

6.

GDP in 2013: 24,763,686 € Annual Growth Rate 2012-2013: 13.6%Estimated economic growth in 2014: 4.8% (Source BCP)

MERCOSUR IPR SME HELPDESK 2 IP Country Factsheet

Key INDUSTRY SECTORS

The agro-industry sector is the main economic sector in Uruguay. In 2013, EU exports from Paraguay consisted mainly of agricultural products: oilseeds, tanned leather, cotton fibre, wood, essential oils and meat products.

Packaged medicines are another important economic branch, which represented 44,972,690 euros in 2013.

Paraguay is currently the world’s largest exporter of re-newable energy, the second largest producer of stevia, the third largest producer and exporter of yerba mate, the sixth largest producer and fourth largest exporter of soya bean, the sixth largest exporter of corn, the seventh largest ex-porter of beef and veal, and the and tenth largest exporter of wheat.

Paraguay’s current industrial growth is 6.5%. It is the se-cond country in South America in terms of return on inves-tments.

The main industrial activities are: food processing, manu-facture of textile and wood products, cork, straw and ve-getable materials for plaiting, and manufacture of products made of non-metallic and metallic minerals.

On the other hand, the automotive sector is considered as a great business driver: the vehicle and motorcycle trade and repair sector.

The largest sector in the service market is food and beve-rages, with the highest employment rate. Some other sec-tors that are also worth mentioning are: road transportation services, health care services, computer repair and com-munication services and services provided by independent professionals.

The main products exported by the EU to Paraguay include manufactured products, such as vehicles, machines and chemical and pharmaceutical products, among others, which represented about 6% of the total amount imported by Paraguay by mid-2013 (Source CADEP).

The most innovative sectors during the period 1998-2012 were: basic materials chemistry (13.33% of total patent applications) and processed organic products (10%

Intellectual Property Rights for SMEs: Why is this RE-LEVANT to you?

Intellectual Property (IP) refers to all creations of the mind, such as images used in commerce or music. IP is usua-lly divided into two branches, namely Industrial Proper-ty, which relates to inventions, designs or signs used in commerce; and Copyright (or ‘author’s right’, according to some non English definitions), which relates to literary and artistic works.

Intellectual Property Rights (IPRs) are exclusive rights. As such, they confer a temporary monopoly over creations on the right holders, granting them exclusivity on the use and exploitation of their intellectual creations and also the right

2. IPRs in Paraguay for SMEs: BACKGROUND

Photography under Creative Commons License | Dennis Jarvis | CC BY-SA 2.0

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The EU is the main purchaser of Paraguayan pro-ducts. In 2013, the EU purchased 21% of the total amount of products exported by this country.

Paraguay’s strategic positioning within the Mercosur area is due to having the lowest tax burden and the cheapest cost of living and labour costs.

With a view to avoiding risks, it is advisable to query the Market Access Database on exports of the DG trade before taking any business decision.

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MERCOSUR IPR SME HELPDESK 3 IP Country Factsheet

to prevent any unauthorized use by third parties.

Therefore, this protection system allows creators or owners to benefit from their own intellectual work or investments in creations and innovations, as well as to protect their mo-ral and economic interests resulting from the authorship of scientific, literary or artistic productions.

The following IP rights are further developed throughout this factsheet, focusing on Paraguayan features: Co-pyright, Patents, Industrial Designs, Trademarks, Trade Names, Geographical Indications and Appellations of Ori-gin and Plant Varieties.

All the aforementioned examples of IP features are con-sidered “intangible assets”, together with other IP-related terms such as licences, trade secrets or know-how. All in-tangible assets are defined by a lack of physical substance and the ability to generate future economic benefits. They all may be subject to valuation.

Intangible assets, particularly intellectual property rights (IPR), are currently a key tool for innovative SMEs see-king to internationalise, as they are an effective means to ensure exclusivity in the market, a return on investment in R&D or access to third parties’ technologies. Generally speaking, SMEs concerned about their intangible assets and IPRs will have better chances to attract investors, build a better image of the company and access new markets, thus increasing its value.

How does Paraguay’s IP legal framework compare to INTERNATIONAL STANDARDS?

Paraguay’s IP legal framework consists of a set of national and international regulations.

Paraguay is party to a number of international treaties on Intellectual Property including, among others, the Agree-ment on Trade-Related Aspects of Intellectual Property Rights, the Convention establishing the World Intellectual Property Organisation (WIPO), the Paris Convention for the Protection of Industrial Property, the Berne Conven-tion for the Protection of Literary and Artistic Works, the Convention on Biological Diversity, the International Union for the Protection of New Varieties of Plants, the WIPO copyright treaty and the WIPO Performances and Phono-grams Treaty.

Paraguayan legislation provides for reasonable standards for IP protection. The country is a member of the World Trade Organisation (WTO) and has ratified the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Nevertheless, the system is still somehow inadequate, par-ticularly due to piracy and poor management of IPR regis-trations.

The main areas of intellectual property right (IPR) viola-tions in Paraguay are as follows:

+ Piracy: music, films, videogames, software and books.

+ Counterfeiting of trademarks and smuggling: to-bacco, spirits (whisky), clothes, footwear, domes-

tic appliances, electronic devices, sunglasses and luxury items.

+ Infringement of pharmaceutical and cosmetic pa-tents.

+ Delays in granting patents: the lack of an implemen-tation decree for the patent law 2593/2005 makes the application of patent legislation impossible; the-refore, no patents, especially for pharmaceuticals, have been granted for several years. At the end of 2010 some 800 patent applications were pending for examination and grant.

Paraguay is one the countries with the lowest investment on innovation and research. Additionally, it has an average of only one national patent per year, according to the Coun-cil for Science and Technology (Conacyt) and the Directo-rate General for Intellectual Property (DGPI).

Paraguay is also a centre of transit for pirated and counter-feit goods. Products which violate IPRs are mainly intended for export (in particular to Brazil and Argentina) but also for the small local market (Source: European Commission).

The country is currently working towards a more solid sys-tem for the protection and enforcement of IP, including the protection of traditional knowledge.(Source: www.mic.gov.py).

It is to be highlighted that Paraguay is NOT a party to the Hague System for the International Registration of Indus-trial Designs, the Patent Cooperation Treaty (PCT) or the Madrid Agreement concerning the International Registra-tion of Marks.

A. COPYRIGHT AND RELATED RIGHTSWHAT are Copyright and related rights?

Copyright protects the rights of authors over their intellec-tual works. Any literary, musical, theatre, artistic, scientific or audiovisual works are subject to protection, regardless of their form of expression.

Related rights protect the right of intermediaries, such as film producers, performers or broadcasting organisations.

Copyright in PARAGUAY: What you need to know

Copyright over works of the intellect, including software and databases, belongs to their authors. However, these rights may also be owned by legal persons. In such case, the legal person will be considered the copyright holder, but only concerning economic rights.

3. IP Rights in Paraguay: THE BASICS

MERCOSUR IPR SME HELPDESK 4 IP Country Factsheet

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It should be noted that copyright only protects the manner in which the ideas of the author are described, explained, illustrated or embodied in the works. The ideas themselves or the ideological or technical content of the work are not protected.

The right arises when the work is created, registration is op-tional. This registration, which can be applied for at the Na-tional Directorate for Intellectual Property (DINAPI),grants a presumption of authorship that may be very useful as proof before the competent authorities.

The following is a list of the types of works that can be re-gistered and protected by copyright:

+ Written works and any other works expressed by means of letters, signs or marks.

+ Oral works. + Musical compositions with or without lyrics. + Dramatic and dramatico-musical works. + Choreographic and theatrical works. + Audiovisual works, including cinematographic

works. + Radio plays. + Works of plastic art, such as drawings, paintings,

sculptures, engravings and lithographs. + Architectural plans and works. + Photographic works and works created through si-

milar processes. + Works of applied art. + Illustrations, maps, sketches, plans and works of

plastic arts designed for geographical, topographi-cal, architectural or scientific representation.

+ Computer programmes. + Collections of works, such as encyclopaedias and

anthologies.

In order to establish collecting societies, the purpose of which is to defend economic rights granted by law, autho-risation by the government is required. Furthermore, these entities are subject to control, as stipulated by law.

These societies must be established as non-profit civil as-sociations and must have legal personality and financial autonomy. They are not allowed to carry out any political or religious activity or any activity other than the one related to their field of action.

The following is a list of the current existing collecting so-cieties in Paraguay:

+ Asociación Paraguaya de Autores (APA; Paragua-yan Authors’ Association)

+ Sociedad de Gestión de Productores Fonográficos del Paraguay (SGP; Paraguayan Phonogram Pro-ducers’ Collecting Society)

+ Entidad paraguaya de Artistas lnterpretes o Ejecu-tantes (AIE; Paraguayan Organisation of Perfor-mers)

+ Inter Artis Paraguay (IAP)

How LONG does legal protection last?

Paraguay is a party to the Berne Convention and the WIPO Copyright Treaty, among others.

Consequently, copyright protection lasts for the lifetime of the author and shall expire 70 years from his/her decease. Protection by related rights lasts for 50 years from the year following the first performance or execution of the work.

In the case of an unidentified author or legal person, this term begins from the first publication of the work (e.g. com-puter programmes created by a software developer).

Information and documents required

+ Title of the work + Nature of the work + Name or pseudonym of the author, editor or printer. + Place and date of disclosure. + Place and date of creation. + Number or volumes, size and number of pages;

number of copies (concerning written works). + Date on which the work was withdrawn from circu-

lation. + Power of attorney, if applicable.

The registration must be carried out in person at any of the offices of the National Register for Copyright, located in Avda. España N° 323 c/ EE.UU. (Asunción, Paraguay). The estimated time for the processing of the registration application is 45 days.

WHO can register?

Any natural or legal person, through an Intellectual Proper-ty Agent registered in Paraguay, can apply for registration at the DINAPI. The IP agent must be duly authorised by means of a power of attorney.

Collecting Societies have some autonomy to adopt regulations that establish almost authoritarian tariffs for the use and dissemination of copyright. This usua-lly implies that users must pay fees for the use and dissemination of the rights, even if the authors of said rights do not belong to any Collecting Society.

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The parties must agree on the ownership of trans-ferable rights (economic rights) arising from works created within an employment relationship or in the performance of a contract.

Nevertheless, there is a legal presumption in favour of the employer, editor or producer over works crea-ted in the course of their usual business activities to the extent that the exploitation of the protected work is limited to such activities, unless otherwise agreed by the parties.

At all events, moral rights must always be respected; thus, prior authorisation by the author is required.

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MERCOSUR IPR SME HELPDESK 5 IP Country Factsheet

Which LANGUAGES can I use?

Both the application and any other associated documents must be submitted in Spanish. Documents in other langua-ges must be translated or certified by a sworn translator registered in Paraguay.

How much does it COST?

The official registration fee is 15 euros.

B. PATENTS

Paraguayan legislation provides for two types of patents:

Patents of Invention:

Aimed at protecting new inventions, such as products or processes, that imply an inventive step and are industrially applicable.

Utility models:

Aimed at protecting any new shape, configuration or arran-gement of components applied on devices, tools, instru-ments, mechanisms or other objects, or a part of these. Utility models allow for an improvement or change in the function, use or manufacturing of the item or provide an extra utility. This type of patents includes any new shape, reform or modification of already existing objects that leads to better price and functioning of the products.

Patents in PARAGUAY: what you need to know

Patentability requirements are as follows:Novelty: Inventions are considered as new if they are not comprised in the state of the art. ‘State of the art’ includes everything that has been disclosed or made available prior to the date of submission of the application (or, in some cases, prior to the date of priority claimed) anywhere in the world through any means.

The state of the art also includes all the pending patent applications being simultaneously processed at the DI-NAPI the date of submission or priority of which is earlier than the date of the patent application concerned. This only applies if this content were included in the previous appli-cation when this is published.

Inventive step: The invention must not be considered to clearly derive from the state of the art by a person skilled in the art.

Industrial applicability: An invention is considered as in-dustrially applicable if it can be produced or used in any type of industrial or productive activity. In this regard, the term ‘industrial’ should be understood in a broad sense; it includes handicraft, agriculture, mining, fishing and servi-ces, among others.

How LONG does legal protection last?

Patent protection lasts for 20 years, while Utility Model pro-tection lasts for 10 years. Both terms of protection are cal-culated from the filing date.

Required information and documents

The applicant or a duly authorised representative must submit a form including the following information:

+ Information on the applicant’s identity, nationality and address.

+ Name of the inventor(s). + Title and summary of the invention. + Name, address and registration number of the Inte-

llectual Property Agent. + Power attorney, which does not have to be authen-

ticated by a consulate or a notary (if the application is submitted through a representative).

+ Priority document, if applicable. + One or more claims. + Drawings. + An original and a copy of the transfer document sig-

ned by the licensor and the licensee.

Once the corresponding information and documents are submitted, the DINAPI starts processes the application. This process starts with a formal examination and a press release and publication of the patent in two widely read national newspapers. After the publication, the start of the patentability examination is notified to the applicant, upon

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Grace period: any disclosure made by the inventor or his/her successors within 12 months prior to the filing date will not be included in the state of the art and thus the novelty requirement will not be infringed.

Disclosures that do not affect novelty: The same principle applies to those disclosures that are a result of unlawful acts (breaches of contract, filing of another patent application by a person who is not entitled to do so, etc.) within the previous 12 months.

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The following items cannot be protected as Utility Mo-dels:

+ processes; + chemical, metallurgical or any other type of

compositions and substances; + non-protectable subject matters according to

Paraguayan law.

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Under the Paris Convention, European SMEs that had applied for the same patent in their country of origin within 12 months prior to the application in Pa-raguay shall be entitled to a grace period.

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MERCOSUR IPR SME HELPDESK 6 IP Country Factsheet

payment of the corresponding fee. There is no specific term to conduct the study. If the patent application is accepted, a Letters Patent shall be issued.

WHO can register?

Any natural or legal person, whether the inventor in person or a third party to whom the rights have been assigned, may apply for the registration at the DINAPI. An Intellectual Property Agent must necessarily be hired for the purposes of representation at the DINAPI.

Which LANGUAGES can I use?

Both the application form and any other associated do-cuments must be submitted in Spanish. Any document in other languages must be translated or certified by a sworn translator registered in Paraguay.

How much does it COST?

The cost of the application is approximately 90 euros. Addi-tionally, there is a sum of 3,592 euros for annuities and background reports to be paid by instalments from the 3rd to the 20th year.

Annuities must be paid annually. The first payment is due before the third year. If no payment is made, the patent will lose its validity.

Annuities can be paid up to 6 months after the due date (subject to a surcharge).

How LONG does the registration procedure last?

The process may take between 3 and 7 years.

Paraguay is not a party to the Patent Cooperation Treaty (PCT)

C) TRADEMARKS

WHAT are trademarks?

Trademarks are graphically represented, distinctive signs which serve to identify certain goods or services.

Trademarks in PARAGUAY: what you need to know

Items that can be registered as trademarks are the fo-llowing: one or more words, slogans, emblems, mono-grams, seals, stamps and engravings, names, fanciful words, distinct combinations of letters and numbers, com-binations and arrangements of colours, labels and packa-ging and containers. The trademark may also consist of the particular shape, presentation or arrangement of the products or their packaging, as well as the means or place where the products or services are sold.

Paraguayan legislation provides also for some special ty-pes of trademarks:

+ Collective trademark: any sign aimed at distin-guishing the common origin or any other common characteristics shared by products or services pro-duced by different enterprises that use the trade-mark under the control of the holder.

Collective trademarks may be registered by duly authorised societies to be used by their members. The holder must explicitly state the nature of the tra-demark and the regulations governing its use.

+ Certification mark: A sign applied to products or services, the unique characteristics or quality of which are certified by the trademark holder. This type of trademark can be applied for by private or public-law national or foreign enterprises or institu-tions, or by regional or international state bodies

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Non-protectable subject matter: + Signs or means of distinction contrary to law,

public order or morality. Signs that may be potentially misleading or confusing as to the origin, manufacturing method, characteristics, quality or purpose of the products or services concerned.

+ Badges, emblems or names belonging to the State, other public-law legal persons or inter-national organisations, unless the trademark is applied for by these bodies themselves.

+ The usual or necessary presentation of a pro-duct or its package. Trademarks that provide a functional or technical advantage to the pro-duct.

+ One single colour.

+ Signs consisting wholly of the generic name of the product or service or referring to any general characteristic of the product in the market.

+ Signs that are identical or similar to trade-marks that have previously been registered or applied for by a third party, either concerning the same products or services or concerning different products or services in a context that may give rise to a likelihood of confusion with the existing trademark.

+ Signs consisting of the total or partial repro-duction, imitation, translation, transliteration or transcription of an identical or similar dis-tinctive sign that is well-known in the market and belongs to a third party whatever pro-ducts or services the sign is intended to be applied to, if its use or registration is likely to cause confusion or to take advantage of the reputation and distinctiveness of the sign.

+ Signs infringing the copyright or intellectual property rights of a third party.

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MERCOSUR IPR SME HELPDESK 7 IP Country Factsheet

How do I REGISTER?

The corresponding application forms must be submitted in person at the offices of the DINAPI by a duly authorised Intellectual Property Agent with powers of representation.

How LONG does legal protection last?

The registration process takes about 8-11 months if no op-positions are filed.

The process for the renewal of a trademark takes between 4 and 6 months. Since renewals can be requested up to one year prior to the expiry date, it is advisable that the applications are filed early.

Required information and documents

The application form for the registration can be found on the official DINAPI website, on the Formalities and Services section. Required information and documents:

+ Name of the trademark; + Classes of products or services to be protected (the

type of services must be further specified); + Applicant’s name and address; + Logo (if applicable). + The Power of Attorney can be submitted within 60

working days from the submission of the applica-tion. For administration formalities, the Power of Attorney only needs to be certified by a notary.

The registration system works on a ‘first come, first ser-ved’ basis, unless another person claims priority within 6 months from the submission of a foreign application, as established in the Paris Convention.

As Paraguay does not provide for a multi-class registration system, it is necessary that a different application is filed for each class to be protected.

It is also important to note that the whole procedure befo-re the DINAPI must be conducted by Intellectual Property Agents so that all the legal requirements are met.

WHO can register?

Any natural or legal person, whether national or foreign, can apply for the registration through an authorised IP agent.

Which LANGUAGES can I use?

The whole procedure is to be carried out in Spanish. Thus, the corresponding documents, including priority claims (if applicable), have to be translated and certified by a sworn translator registered in Paraguay.

How much does it COST?

The official fee for a trademark application is around 25 euros, while the fee for a trademark renewal amounts to 125 euros.

How LONG does legal protection last?

Trademark protection lasts for 10 years from the date of the registration. Renewal, which can be requested by the party concerned during the year prior to the expiry date, allows for the indefinite extension of the protection for periods of 10 years.

Transferring trademarks in Paraguay:

The rights over a trademark can be assigned or transferred concerning all or part of the products or services covered by the trademark..

The transfer shall only be effective against third par-ties after the registration at the DINAPI.

Trademarks can be transferred regardless of the enterpri-ses to which the right belongs.

How to transfer, merger and/or licence a trademark in Paraguay?

If the transfer contract (or total or partial licence or mer-ger of trademarks) is signed abroad, the document must be duly authenticated by the corresponding Paraguayan consulate or certified by apostille. Once in Paraguay, the document must be legalised also before the Ministry of Fo-reign Affairs.

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Transferring an enterprise implies the transfer of its trademarks, unless expressly stipulated otherwise

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Paraguay does not have an official Intellectual Pro-perty Gazette. Therefore, it is difficult to monitor every single publication of trademark applications in the country.

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+ Signs applied for or registered by someone without a legitimate interest or who knew or is supposed to have known that the sign belon-ged to a third party.

+ Names, nicknames, pseudonyms or pictures related to living persons, without the consent of these (or if deceased, the consent of their successors up to the fourth degree of consan-guinity). Any sign affecting the personal rights of a third party, except with their own consent.

+ Signs consisting of or containing geographical indications

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MERCOSUR IPR SME HELPDESK 8 IP Country Factsheet

A Power of Attorney, duly certified by a Notary Public, is necessary.

The process for the transfer of a trademark takes about 4 months.

D) INDUSTRIAL DESIGNS

WHAT are industrial designs?

There are two types of industrial designs in Paraguay:

Modelo Industrial (Industrial model): It allows for the protection of plastic forms composed by lines and colours, designed to give a special appearance to an industrial or handcrafted product and to serve as a model for manufac-ture.

Dibujo Industrial (Industrial drawing): It allows for the protection of any combination of lines and colours, desig-ned to give a special appearance to an industrial or hand-crafted product and to serve as a model for manufacture.

Industrial Design protection granted by the State only co-vers the external appearance, not the product itself or the utility of the object.

Novelty and originality are two basic requirements for the registration of industrial designs.

Required information and documents

+ Name and address of the applicant and his/her re-presentatives.

+ Letter of Attorney authenticated by a notary or an individual/general authorisation

+ Brief description of the model or drawing including the title (to be supplied in triplicate)

+ Class or type of the products that the industrial de-sign will be applied to

+ Three representations of the design in graphic or photographic form.

+ Up to ten different designs can be included in the application, as long as the products are similar and belong to the same class.

How much does it COST?

The official fee for the submission of an application and for the renewal of an industrial design is around 65 euros.

How LONG does legal protection last?

Protection for both types of industrial designs lasts for 5 years from the filing date of the application. It can be re-newed for two consecutive periods of equal duration.

The creator of the industrial design is the person entitled to legal protection.

The holder of an industrial design registered abroad can

claim priority in Paraguay within 6 months from the regis-tration in the country of origin.

E. TRADE NAMES

WHAT is a trade name?

A Trade Name may consist of the designation, the name of the trader, corporate names, the emblem or acronym legally used for a specific business activity. Trade names are an Intellectual Property Right according to Paraguayan legislation.

Trade names in PARAGUAY: What you need to know

It is the only Intellectual Property right for which a registra-tion is not required. This right arises from its first public use in the market.

In any case, it must be sufficiently distinct from any other name previously adopted or used by another person ca-rrying out the same or a similar economic activity.

The rights over the trade name expire either when the com-pany is dissolved or when the business that uses it ceases to operate.

F) GEOGRAPHICAL INDICATIONS AND APPELLA-TIONS OF ORIGIN

What are Geographical Indications and Appellations of Origin?

Geographical Indication (GI): It is a distinctive sign na-med after a country, region, department, district, city or specific place, which serves to designate a product origi-nating therein, the quality and characteristics of which are due exclusively or essentially to its geographical origin.

Appellation of Origin (AO): It is a distinctive sign protec-ting the name of a country, region, department, district, city or specific place which serves to designate a product origi-nating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environ-ment, including natural and human factors.

Examples: Ka’a He’e, Carne del Chaco and Queso Para-guay.

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The small number of examiners and the lack of trai-ning in certain fields result in slow, and sometimes not very technical, examinations.

The Paraguayan Design Office has limited computer resources, which makes it difficult to access foreign databases when examining the novelty of a design.

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HOW do I register?

The application must be submitted in person at the De-partment of Geographical Indications (SIG) of the National Directorate for Industrial Property.It is necessary to act through an Intellectual Property Agent before the DINAPI.

WHO can register?

The acknowledgement and registration of GIs and AOs may be conducted ex officio or ex parte, by the persons showing a legitimate interest, i.e. natural or legal persons engaged in the extraction, production or manufacturing of the product(s) to be protected or the association under which they are grou-ped. Regional and municipal authorities are also considered interested parties, as long as the GI or AO is located in the same particular district.

Regarding international treaties, it is to be highlighted that Pa-raguay has ratified the TRIPS agreement, but is not party to the Lisbon Agreement.

How LONG does legal protection last?

The registration is valid for ten years and may be indefinitely extended for equal periods of time. For this purpose, the re-newal must be requested in the last year prior to its expiration and the same formalities as for the registration apply. The new term of protection is calculated from the expiration date of the earlier registration.

Required information and documents

The application document must include: + The name and the address of the Regulatory Commit-

tee applying for the registration.

+ Attestation of legal personality of the Regulatory Com-mittee, identifying the producer(s).

+ Conditions of the study and technical reports.

+ One single document comprising: + The name and description of the product and, if

appropriate, specific rules for the packaging and labelling and a concise description of the geogra-phical extent.

+ Description of the link between the product and the geographical environment or origin, highlighting, if appropriate, the specific parts of

the product or method of production that justify this link.

+ Any fees prescribed by law. No fees have yet been established

How much does it COST?Registration fees are 66 Euros.

G) PLANT VARIETIESPlant varieties are governed by Law No. 385/94 ON SEEDS AND PROTECTION OF PLANT VARIETIES.

WHAT are plant varieties?Plant varieties are an IP right granted to the breeders of new types of crops (cultivars) that meet the requirements of novel-ty, distinctiveness, homogeneity and stability.

Plant Varieties in Paraguay: What you need to know

The requirements for the registration of plant varieties are the following:

1. NOVELTY: This requirement is not infringed if the propa-gating material is sold, commercialised or disposed of by the plant breeder or with his/her consent.

2. DISTINCTIVENESS: The plant variety to be protected must be clearly distinguishable from other well-known varieties.

3. HOMOGENEITY: A variety is considered homogeneous if

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The DINAPI will register GIs and AOs related to fo-reign products and services, upon request of the per-son entitled thereto. For this purpose, Paraguayan GIs and AOs must be mutually acknowledged in the other country.

Protection in the country of origin: The applicant(s) must prove that the GI or AO is protected in the coun-try of origin through a certificate, written record or other similar documents.

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Non-protectable subject-matter: + Generic names of products, i.e. words that

have become the common name of the pro-duct in Paraguay, in spite of referring to the place of production.

+ Valid trademarks registered in good faith or trademarks the rights of which have been acquired through their use in good faith before the geographical indication and/or appellation of origin was protected in the country of origin.

+ Names which are identical or similar to other names that have already been registered as an AO, in those cases where consumers could be misled as to the real identity of the product.

+ Names that could be misleading as to the qua-lities and characteristics of the product concer-ned.

+ Designations or presentations of the product indicating or suggesting that the product has a geographical origin different from the actual place of origin, which may mislead the consu-mers as to the geographical origin of the pro-duct.

+ Names conflicting with the name of a plant or animal variety and, thus, likely to mislead con-sumers as to the actual origin of the product.

TIPS and WATCH-OUTS

MERCOSUR IPR SME HELPDESK 10 IP Country Factsheet

it is sufficiently uniform in its relevant characteristics within a given population.

4. STABILITY: The variety is considered stable if it produces consistent and repeatable results after repeated propagation or at the end of each cycle of propagation.

5. The name must be original and cannot be misleading for consumers as to the characteristics of the plant variety or the identity of the plant breeder.

The registration of a plant variety grants the holder the exclu-sive right to produce or commercialise it within the national te-rritory. No additional rights are granted to the person by whom the plant variety is registered.

All agricultural producers intending to produce seeds must be registered in the National Register for Seed Growers.

All traders intending to market seeds must be registered in the National Register for Seed Traders.

Paraguay is also a party to the UPOV 1978 Convention. Con-sequently, any breeder who has already applied for protection in one of the countries that have ratified the UPOV Convention enjoy a right of priority during 12 months to conduct the same registration in Paraguay. After this period, the novelty require-ment will not be met.

Required information and documents

The application form for a plant variety shall indicate:1. Variety and/or hybrid from which it is derived2. Information on the applicant or duly authorised representa-tive3. Information on the sponsoring Technical Agricultural Engi-neer4. Information on the plant breeder 5. Information on the creating technician(s) 6. Place where the plant variety was obtained 7. Transfer of the ownership8. Date of submission of the first application9. Plant species (common name and scientific name)10. Cultivar (experimental name and name proposed; the final name shall be adopted by the Directorate of Seeds)11. Origin of the cultivar12. Germplasm from which the variety originated13. Improvement method used for its creation14. Maintenance of the variety15. It must be stated whether the cultivar is genetically modified (transgenic)16. Location of the living sample

HOW do I register?

The application must be submitted before the DIRECTORATE FOR SEEDS of the National service for Plant and Seed Quality and Health (SENAVE).

Reference should be made of the fact that the plant variety meets the requirements of novelty, distinctiveness, homogenei-ty and stability.

Six copies of the documents must be submitted in PDF format in a CD with its corresponding identified box where the applica-tion will be recorded, as well as the descriptor (each CD must be identified with the name of the enterprise, the registration, the date and the plant variety/hybrid).

The technical responsible or plant breeder of the applicant enterprise must present the technical criteria supporting the application to the members of the Technical Committee for the Qualification of Cultivars (CTCC) during the evaluation of their case. For this purpose, a PowerPoint presentation can be used as a support.

Information on the place where the cultivar was obtained must also be provided.

If the property rights of the cultivar are transferred, informa-tion on the transferee must also be included. It is mandatory to attach the corresponding documents certifying the transfer.

How LONG does legal protection last?

The type of protection varies depending on the species or group of species. In this regard, trees and vines shall be protected for 25 years from the filing date of the application. Regarding other plant varieties, protection will last for 20 years.

Customs in PARAGUAY: what you need to know

The competent body regarding customs is the National Cus-toms Authority (DNA), which is an independent body linked to the Ministry of Finance.

There is currently a wide range of entities and procedures for the protection of IP rights at customs.

The DNA has made available a customs register for trade-marks (RAM), where trademark rights can be registered so as to avoid pirated or counterfeit products. The other types of IP rights, such as patents, designs or copyright are not subject to registration at the DNA. The RAM is governed by ruling 130 go-verning requirements and procedures for the registration, and ruling 271 governing the procedure that applies when infringing products are detected.

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In the case of foreign plant varieties, a representative must be appointed and duly authorised by the bree-der. All the documents certifying the representation must be attached to the application. If the legal re-presentative is a legal person, its Articles of Associa-tion and a Power of Attorney must also be submitted. The Power of Attorney must be duly legalised. The application must be submitted by the breeder, acting through his/her legal representative.

TIPS and WATCH-OUTS

4. Using CUSTOMS to block coun-terfeiting

MERCOSUR IPR SME HELPDESK 11 IP Country Factsheet

Required information and documents for the registration at the Customs Register for TrademarksThe registration requirements are fairly simple:

+ Corresponding form, duly completed and signed by a trademark agent and a customs official.

+ Certified copy of the trademark registration document issued by the National Directorate for Intellectual Pro-perty (DINAPI) (foreign registrations cannot be submit-ted).

+ Certified copy of the notice of registration of the trade-mark.

+ Certified copy of the Power of Attorney. + Certified copy of the identity card of the trademark

agent. + Certified copy of the printed version of the design in the

case of figurative or mixed trademarks. + Digital file containing the design.

The registration procedure may take from one to two months from the filing of the documents. The registration has the same period of validity as the trademark registration. Additionally, it can be renewed after the renewal of the trademark at the DI-NAPI.

Once goods bearing the registered trademark are detected, the DNA sends the trademark agent a digital notification or a noti-fication by fax with information about the import. From that mo-ment, the agent has one working day to apply for the necessary administrative or legal actions, according to the right holder’s instructions. This period of time is sufficient to order the sus-pension of customs clearance at the DNA or to file a criminal complaint at the Public Prosecutor’s Office, which is the most usually taken measure, since no guarantee deposit has to be paid for potential damages caused to the owner of the goods.

In spite of having improved its detection rate, the RAM still has a lot of work to do to become fully effective.

In addition to the RAM, there is the Administrative Coordination of Customs Research (CAIA), which is a division focused on the research of customs offences. One of the aims of the CAIA is to detect allegedly infringing goods at customs and then sei-ze them and file a complaint at the Public Prosecutor’s Office. The number of complaints filed by the CAIA concerning allege-dly counterfeit goods has increased since 2013.

Important: Law no. 4798/2012 establishing the DINAPI (Na-tional Directorate for Intellectual Property) entered into force by the end of 2013. The General Directorate for Enforcement (DGO), created under the DINAPI, carries out controls to de-tect allegedly infringing goods, mainly at customs. When the DGO detects suspect goods at customs, it coordinates the evaluation of the goods with customs authorities and files the corresponding complaint at the Public Prosecutor’s Office after contacting the agent responsible for the trademark according DINAPI’s database.

CAIA and DGO’s monitoring concerns almost exclusively tra-demarks, with only few cases related to other types of IP rights, such as patents, designs or copyright.

The Public Prosecutor’s Office is the vital organ for border measures regarding IP protection. There are units speciali-sed in offences against Intellectual Property in Asunción and

Ciudad del Este. The Public Prosecutor’s Office receives com-plaints from the DGO, CAIA and trademark agents concerning copyright, trademark and industrial design infringements (pa-tent infringements are not criminally punishable).

Fast-track procedures and early destruction of goods, with prior expert examination (trademarks), are available; therefo-re, criminal proceedings are relatively short. So as to resort to criminal law, the goods or services infringed must be registered in Paraguay. Otherwise, only civil or commercial actions can be brought.

Civil and Commercial Courts are also competent to impose border measures, such as cancelling the registration of a tra-demark at the RAM, the prohibition to export or import and the seizure of goods in the process of customs clearance. Civil proceedings are slower and interim measures (including bor-der measures) are not granted easily; a prior final judgment is usually necessary. For this reason, civil and commercial pro-ceedings are only useful if no registration allowing for criminal proceedings exists

5. ENFORCING your IP

Administrative actions: Administrative actions must be requested to the DINAPI. Exam-ple: opposition to a trademark or industrial design registration.

Once administrative actions have been exhausted, an appeal can be brought to the Court of Auditors and, ultimately, to the Supreme Court of Justice.

Civil litigation: Civil and Commercial Courts are competent to hear civil ac-tions. Some common civil actions are actions to invalidate the

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The Public Prosecutor’s Office orders the immediate suspension of customs clearance after the complaint is filed, without a court order. Then, allegedly infringing goods are checked and seized.

TIPS and WATCH-OUTS

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+ Paraguay is the only country in this region that has Public Prosecutor’s Offices specialised in In-tellectual Property.

+ Trademark owners with reasonable grounds to foresee the import or export of goods infringing their rights may request Customs Authorities or the Public Prosecutor to suspend the import or export before the clearance of the goods.

+ The Trademark Customs Register has still a low rate of detection of counterfeit products. It is also advisable to combine this registration with a co-pyright and industrial design registration.

TIPS and WATCH-OUTS

MERCOSUR IPR SME HELPDESK 12 IP Country Factsheet

registration, unfair competition actions, actions for the cance-llation of a trade name and actions for compensation.

Patent infringement is not criminally punishable. Therefore, only civil actions are available in this field, which usually do not result in fast and effective measures.

Criminal prosecution: In Paraguay, the Public Prosecutor’s Office is responsible for the prosecution. There are offices specialised in Intellectual Property in Asunción and Ciudad del Este. Complaints must be filed before the competent prosecution office.

Criminal law provides for custodial sentences of different dura-tions and fines. Custodial sentences can last for up to 8 years. Patent infringements are not considered as a criminal offence, unlike the other IP rights. Regarding trademarks and industrial designs, mere attempts of infringement are punishable, which has had a positive impact on legal cases in the country.

It is also worth highlighting that the National Directorate for Co-pyright is competent to provide mediation services.

6. RELATED LINKS and Addi-tional Information

National Directorate for Intellectual Property

National Directorate for Customs

Ministry of Trade and Industry

Ministry of Agriculture and Livestock - National Directorate for Seeds

Intellectual Property Prosecution – Public Prosecutor

The judiciary

Association of Paraguayan Authors

Association of Artists, Performers and Executors

Association of Phonogram Producers

Inter Artis Paraguay

World Intellectual Property Organisation

European Patent Office

World Trade Organisation

Mercado Común del Sur - MERCOSUR Source: Open Source.

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The Mercosur IPR SME Helpdesk provides free, confidential, and business-focused advice to European Small and Medium Enterprises (SMEs) about Intellectual Property in the MERCOSUR countries (Argentina, Brazil, Uruguay, Paraguay, Venezuela) and Chile.

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Disclaimer:  The  Mercosur  IPR  SME  Helpdesk  is  a  free  service  which  provides  practical,  objective  and  factual  information  aimed  to  help  European  SMEs  to  understand  business  tools  for  developing  IPR  value  and  managing  risk.  The  services  are  not  of  a  legal  or  advisory  nature  and  no  responsibility  is  accepted  for  the  results  of  any  actions  made  on  the  basis  of  its  services.  Before  taking  specific  actions  in  relation  to  IPR  protection  or  enforcement  all  customers  are  advised  to  seek  independent  advice.  

© 2014 - A project funded by the European Commission Directorate-General Enterprise and Industry under the Competitiveness and Innovation Framework Programme (CIP)

Disclaimer: The Mercosur IPR SME Helpdesk is a free service which provides practical, objective and factual information aimed to help European SMEs to understand business tools for developing IPR value and managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice.

May 2015

 

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