Protecting Your Intellectual Property in Honduras
There are several general principles that are important for effective management of intellectual property (IP) rights in Honduras. First, it is important to develop an overall strategy to protect your IP. Second, IP may be protected and enforced differently in Honduras when compared to the United States. Third, products requiring IP protection must be registered in order to be enforced under Honduran laws. For example, protections afforded by your company’s U.S. trademarks and patents do not extend into Honduras. There is no such thing as an “international copyright” that protects an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends 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 basis. 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/entities 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. Rights holders who delay enforcing their Intellectual Property Rights (IPR) may find that their rights have been eroded or even abrogated. Companies may seek advice from local attorneys or IP consultants who are experts in Honduran 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.
It is advisable to conduct due diligence regarding any potential partners. A good partner is an important ally in protecting your 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 prevent counterfeiting. There are a number of these organizations both in Honduras and in the U.S, which include:
- The U.S. Chamber and local American Chambers of Commerce
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The International AntiCounterfeiting Coalition, Inc (IACC)
- International Anti-Counterfeiting Coalition (IACC).
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
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 https://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 https://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 at https://www.stopfakes.gov/Country-IPR-Resources.
- 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 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:
Regional IP Attaché Cynthia Henderson; email@example.com
- For more information, contact ITA’s Office of Standards and Intellectual Property Rights (OSIP) Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.
To access the Honduras ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.
IPR Climate in Honduras
The protection of 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 IPR or deny fair and equitable market access to U.S. persons who rely on IP protection. Honduras has IPR legislation that is in compliance with the Trade Related Aspects of Intellectual Property Rights (TRIPS) and CAFTA-DR. In 2015, the government of Honduras agreed to a work plan to address widespread cable and satellite signal piracy, dedicated more staff to IPR prosecutions and investigations, increased clarity in procedures relating to geographical indications, and improved 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 DIGEPIH. The term of protection for patents is 20 years from the filing date. Trademarks are valid up to 10 years from the registration date. Well-known trademarks are protected; however, illegal registration of a well-known trademark must be contested in court (see Section VII. G). This regulation favors first registration over first use, and there are numerous cases of bad faith filing of 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 WTO norms though enforcing existing laws remains a challenge. 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 can confiscate pirated goods and file IP cases ex-officio, or on their own initiative, without first requiring the affected company to file a criminal complaint. However, in practice a company complaint is still required to begin legal proceedings, and the Honduran legal system often moves at a slow pace.
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 our article on Protecting Intellectual Property.