The law known as the “Ley de Marcas del Gobierno de Puerto Rico”, Law 169-2009 or Trademark Law of the Government of Puerto Rico, establishes the regulations for trademarks within Puerto Rico. It outlines the process for registering trademarks, including requirements for applications, declarations, and fees for both used and unused marks. The law specifies what types of marks are registrable and which are prohibited, such as those contrary to law or that may cause confusion with existing marks. Furthermore, it details procedures for opposition, transfer, renewal, and cancellation of trademark registrations, as well as remedies for infringement, including injunctions and damages. The statute also addresses false designation of origin, dilution of famous marks, and trademark violations in domain names, aiming to modernize trademark law in Puerto Rico by integrating elements from US and model acts.
Trademark Infringment
Regarding trademark infringement, Article 26 (10 L.P.R.A. § 223w) states that anyone who uses a mark that is the same or similar to a registered mark or a mark previously used in commerce in Puerto Rico, without the owner’s consent, in a manner that is likely to cause confusion or mistake regarding the origin of goods or services, or regarding endorsement or association, is liable in a civil action. The owner or authorized person can seek an injunction, seizure order, damages, and other legal remedies.
The law outlines how damages are calculated, including the infringer’s gross profit, the owner’s lost profits, and the damage to the owner’s business. The court may award up to three times the infringer’s profit or the owner’s loss if the violation was intentional or in bad faith. Conversely, damages may be reduced if the infringer was unaware of the violation.
Alternatively, the trademark owner can elect to seek statutory damages, which can range from $750 to $30,000 per violation, as deemed just by the court. In cases of willful infringement, statutory damages can be increased to no more than $150,000 per violation, while they can be reduced to no less than $500 if the infringement was unknowing. Additionally, the prevailing trademark owner is always entitled to costs, attorneys’ fees, and expenses.
False Designation of Origin
Concerning false designation of origin or false description, Article 27 (10 L.P.R.A. § 223x) addresses the use of any false designation of origin or any false or misleading description or representation of fact in connection with goods or services that is likely to cause confusion regarding affiliation, connection, association, origin, source, endorsement, or approval. It also covers false representations in commercial advertising about the nature, characteristics, qualities, or geographic origin of one’s own or another’s goods, services, or commercial activities. Persons damaged by such acts are entitled to the remedies provided under Article 26. This provision also applies to the Government of Puerto Rico and its instrumentalities and employees acting in their official capacity. In actions involving unregistered trade dress, the claimant must prove that the trade dress, in its entirety, is not functional.
Diminution of famous marks
Regarding the diminution of the distinctive character of famous marks, Article 28 (10 L.P.R.A. § 223y) provides protection for famous marks against blurring (association arising from similarity that affects the mark’s distinction) and tarnishment (association that harms the mark’s reputation), even if there is no competition or likelihood of confusion, or economic damage. The owner of a famous mark can seek an injunction against the use of the famous mark or a substantially similar term without their consent. If the owner proves that the defendant intended to cause dilution or to trade upon the mark’s distinctiveness, they are also entitled to the remedies under Article 26.
The law specifies factors to consider when determining if a mark is famous and whether there is a likelihood of dilution by blurring. Certain uses are excluded from dilution claims, such as comparative advertising, non-commercial use, and use for news reporting, commentary, criticism, or parody. For unregistered famous trade dress, the claimant must prove it is non-functional and famous, and if it includes registered marks, the unregistered elements must be separately famous.
Infringement With Domain Name
Finally, Article 29(10 L.P.R.A. § 223z) addresses trademark infringement with domain names. It states that anyone who registers, traffics in, or uses a domain name with the bad faith intent to profit from a mark, including a personal name protected as a mark, will be liable if the domain name causes confusion with a distinctive mark or causes confusion with or dilutes a famous mark. The registration of a domain name that is identical or substantially similar to another’s mark creates a presumption of bad faith. The article lists several factors a court may consider in determining bad faith intent. Good faith belief in the lawful use of the domain name can negate a finding of bad faith. Remedies include forfeiture or cancellation of the domain name or its transfer to the mark owner, as well as the remedies available under Article 26.
Trademark Obtained Through Fraud
Additionally, Article 25(10 L.P.R.A. § 223v) addresses situations where a trademark registration is obtained through false or fraudulent declarations. In such cases, the person obtaining the registration is subject to an injunction, an action for damages, or a seizure order by the registered owner or injured parties, who can choose to pursue any or all of these actions. The court can also order the cancellation of a registration obtained through deceit, fraud, or bad faith. The court will determine the amount of damages based on factors such as the infringer’s gross profit, the registrant’s lost profits, the damage to the registrant’s business, and any other relevant factors. The court will also award costs, fees, and expenses of the lawsuit.