Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective management of intellectual property (IP) rights in Honduras. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Honduras than in the United States. Third, rights must be registered and enforced in Honduras, under local laws. For example, your U.S. trademark and patent registrations will not protect you in Honduras. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works in accordance with international agreements.
Patents are generally granted on a first-to-file basis. Similarly, trademarks are generally granted on a first-to-file (or first-to-use) basis, so U.S. companies should consider how to obtain patent and trademark protection before introducing their products or services to the Honduran market.
It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government cannot enforce rights for private individuals in Honduras. It is the responsibility of the rights’ holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Honduras law. The U.S. Commercial Service can provide a list of local lawyers upon request. Please contact our representatives in Tegucigalpa at https://www.trade.gov/honduras.
While the U.S. Government stands ready to assist, there is little we can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the USG can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a law suit. In no instance should U.S. Government advice be seen as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Honduras require constant attention. Work with legal counsel familiar with Honduras laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both in Honduras and in the U.S. These include:
- The U.S. Chamber and local American Chambers of Commerce (https://www.uschamber.com)
- National Association of Manufacturers (NAM) (http://www/nam.org)
- International Intellectual Property Alliance (IIPA) (http://www.iipawebsite.com)
- International Trademark Association (INTA) (http://inta.org/Pages/Home.aspx)
- The Coalition Against Counterfeiting and Piracy (http://wwwtheglobalipcenter.com)
- International Anti-Counterfeiting Coalition (IACC) (http://www.iacc.org)
- Pharmaceutical Research and Manufacturers of America (PhRMA) (http://phrma.org)
- Biotechnology Industry Organization (BIO) (https://www.bio.org)
- A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues including enforcement issues in the US and other countries — call the STOP! Hotline: 1-866-999-HALT.
- For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199, or visit http://www.uspto.gov.
- For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-5959, or visit http://www.copyright.gov.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: https://www.stopfakes.gov/Country-IPR-Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
- The U.S. Commerce Department has positioned IP attachés in key markets around the world. Contact information for the IP attaché who covers Mexico, Central America and the Caribbean is as follows:
- Cynthia Henderson, E-mail: email@example.com
- Stevan.Mitchell@trade.gov; ITA’s Office of Intellectual Property Rights Director
IPR Climate in Honduras
The protection of intellectual property rights (IPR) is under the jurisdiction of the Honduran Property Institute (IP). The General Directorate of Intellectual Property (DIGEPIH) division handles the registration of patents, trademarks, and copyrights, as well as any complaints regarding their infringement.
Honduras does not appear on the United States Trade Representative (USTR) Special 301 Watch List for countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on IP protection. Honduras has IPR legislation that is largely in compliance with the Trade Related Aspects of Intellectual Property Rights (TRIPS) and fully compliant with CAFTA-DR. In 2015, the government of Honduras agreed to a work plan to act to address widespread cable and satellite signal piracy, dedicate more staff to IPR prosecutions and investigations, increase clarity in procedures relating to geographical indications, and improve the protection of test or other data generated to obtain marketing approval for certain regulated products. In 2016, Honduras also reactivated the Inter-Institutional Commission for Combating Piracy in Honduras, a council comprised of all anti-piracy stakeholders aimed at facilitating interagency communication and establishing processes of monitoring to identify trends and control piracy.
To be protected under Honduran law, patents and trademarks must be registered with the IP. The life of patents ranges from 10 to 20 years, depending on the importance of the invention. Trademarks are valid up to 10 years from the registration date. “Notorious” or well-known trademarks are protected under the Pan American Convention (1917), to which Honduras is a party. Illegal registration of a well-known trademark, however, must be contested in court (see Section VII. G). This regulation favors first registration over first use, and numerous cases have arisen of “squatting” on established trademarks, which the legitimate holder must then either purchase or contest in court. Data protection is provided for five years. Honduras also offers process patent protection.
Honduras’s IPR protection regime, conforms with — and in many areas exceeds — WTO norms. CAFTA-DR obligations also provide stronger deterrence to piracy and counterfeiting by criminalizing end-user piracy and requiring Honduras to authorize the seizure, forfeiture, and destruction of counterfeit and pirated goods and the equipment used to produce them. CAFTA-DR text also mandates both statutory and actual damages for copyright and trademark infringement, which would ensure that monetary damages could be awarded even when it is difficult to assign a monetary value to the violation. Finally, under CAFTA-DR, prosecutors are able to confiscate pirated goods and file IP cases ex-oficio, or on their own initiative, without first requiring the affected company to file a criminal complaint. However, in practice a company complaint is still needed to begin legal proceedings.
In any foreign market companies should consider several general principles for effective management of their intellectual property. For background on these principles please link to the following article on Protecting Intellectual Property and Stopfakes.gov, or contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.
IP Attaché Contact
U.S. Embassy Mexico City
(52) (55) 5080-2189