Five things you need to know – Latin America and the Caribbean

Brazil

On 4 April 2019 Brazil’s House of Representatives unanimously voted in favour of joining the Madrid Protocol, taking the country a significant step closer to its adoption. Having been approved at the plenary session of the House of Representatives, the bill moves to the Senate and – if approved – could see the Madid Protocol in force later this year.

Cayman Islands

The Design Rights Bill 2019 was published on 19 February 2019 and will replace the Design Rights Registration Law 2016. It will no longer be necessary to register design rights in the United Kingdom before filing in the jurisdiction. Rights that were recorded under the previous law will be automatically transferred to the new register and will be deemed to be registered until the renewal date under the repealed law, except where steps are taken to cancel the design right. However, it is unclear when the bill will come into effect.

Chile

The Chilean Supreme Court has reversed decisions issued by the Institute of Industrial Property and the Special Appeal Court in opposition proceedings involving Gloria SA’s application for GLORIA FOODS and Nestlé’s earlier mark GLORIA. Gloria SA had applied to register GLORIA FOODS to distinguish a number of goods in Class 31. The application was opposed by Nestlé, owner of the GLORIA mark for food items for children and for medical use in Class 5, and milk and dairy products in Class 29. The Supreme Court found that the defendant’s application was no mere coincidence and that Nestlé had proved previous use of its trademark, which was famous or notorious. In accepting Nestlé’s opposition, the court recognised the wide power of exclusion of famous trademarks, declaring that such exclusion goes beyond the products or services protected by such signs.

Peru

Peru’s National Institute for Defence against Unfair Competition and Intellectual Property has begun work on the IP National Policy in conjunction with several public and private entities and in consultation with WIPO. The main objective is to make intellectual property a necessary competitive instrument for the social and economic development of the country by increasing productivity and innovation.

Venezuela

Following the Venezuelan Ministry of National Commerce’s announcement that trademark fees will be paid in the Venezuelan Petro cryptocurrency, the USPTO has issued a reminder that – by Executive Order 13827 (19 March 2018) – the US government has expressly prohibited transactions by US individuals and companies relating to any digital currency, digital coin or digital token issued by, for, or on behalf of the Venezuelan government on or after 9 January 2018. A number of IP associations are now working to find solutions to ensure that US brand owners requiring trademark protection in Venezuela will be able to do so.

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