Latin America & Caribbean

Trademark protection and enforcement in Latin America

All Latin American countries have a first-to-file system, so early filing is essential in order to keep pirates and free riders as far out of the picture as possible.

Trademark protection and enforcement in Latin America
10 Sep 2018

Where did it all go wrong in the WTO plain-packaging dispute?

The World Trade Organisation’s panel report in the cases brought against Australia’s plain-packaging regime is difficult reading – and some of its key arguments are without merit.

28 Aug 2018

Registrations double in Cayman Islands, Peppa Pig victory in China, and Aldi most trusted brand in Australia: news round-up

In our latest round-up, we look at China and Indonesia giving up the plain packaging fight, a Colin Kaepernick trademark application generating media buzz, why US colleges have been accused of trademark bullying, and much more.

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17 Sep 2018

New rules for non-use cancellation actions: what you need to know

The Brazilian Patent and Trademark Office has issued Technical Note No 01/2018, which establishes new rules for non-use cancellation actions. This update highlights the key points for mark owners and petitioners. Read more

12 Sep 2018

New incentives for registration of collective trademarks – government hoping to boost competitiveness

Starting on 5 September 2018, and for a duration of one year, certain communities, organisations and businesses will be exonerated from the payment of the official fee for the registration of collective marks in Peru. Read more

12 Sep 2018

Trademark procedures and strategies: El Salvador

Any natural or legal person can apply for and acquire the right to own a mark in El Salvador. No conditions of nationality, domicile or establishment apply. Read more

12 Sep 2018

Trademark procedures and strategies: Chile

The Chilean Institute of Industrial Property (INAPI) may reject an application on the basis of an unregistered prior mark, provided that the existence of the unregistered trademark is publicly known to the extent that its renown does not require evidence. Read more

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Anti-counterfeiting

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16 Aug 2018

“What I saw in China 8 years ago, I am now seeing in Brazil”: insights from New Balance’s brand protection lead

We speak to Daniel McKinnon, head of global brand protection at New Balance, about his approach to trademark enforcement, “paltry” damages awarded in China, the problems of “parasite brands”, and much more. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Brazil

The growth of the Brazilian market and economy is paralleled by the increase in counterfeiting activities. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Panama

Customs authorities are empowered to inspect and seize merchandise that is subject to customs procedures and which may violate Panama’s IP laws, regardless of its final destination. This means that even in-transit goods can be inspected and seized. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Mexico

Officers at Mexico’s 49 customs offices inspect the contents of containers with Mexico as their final destination in order to detect counterfeit merchandise. Because the authorities cannot commence proceedings against counterfeit goods, rights holders must file corresponding legal actions. Read more

Brand management

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29 Aug 2018

Can fluid marks be considered part of a client’s IP portfolio in Mexico?

Mexico recently introduced a number of legal amendments whereby the types of registration for distinctive signs were extended to include non-traditional marks. However, fluid mark protection remains a riddle. Read more

2 Aug 2018

Authorities should distinguish between ads and trademarks: exclusive interview with PepsiCo’s Sergio Barragan

We speaks with Sergio Barragan of beverage giant PepsiCo to discover his approach to managing the company’s extensive Latin American brand portfolio. Read more

29 Jun 2018

Symbols of the rich and famous: challenges for fashion and luxury brands

Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place. Read more

18 Jun 2018

“Providing customers with what they want is one of the best ways to reduce piracy”: inside Grupo Televisa’s enforcement efforts

How the Mexican media giant approaches brand and content enforcement. Read more

Enforcement and litigation

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17 Sep 2018

New rules for non-use cancellation actions: what you need to know

The Brazilian Patent and Trademark Office has issued Technical Note No 01/2018, which establishes new rules for non-use cancellation actions. This update highlights the key points for mark owners and petitioners. Read more

12 Sep 2018

Trademark procedures and strategies: El Salvador

Any natural or legal person can apply for and acquire the right to own a mark in El Salvador. No conditions of nationality, domicile or establishment apply. Read more

12 Sep 2018

Trademark procedures and strategies: Chile

The Chilean Institute of Industrial Property (INAPI) may reject an application on the basis of an unregistered prior mark, provided that the existence of the unregistered trademark is publicly known to the extent that its renown does not require evidence. Read more

12 Sep 2018

Trademark procedures and strategies: Brazil

As a general rule, the Industrial Property Law states that ownership of a mark is acquired through a granted registration, following which the rights holder has the right to exclusive use of the trademark throughout the national territory. Read more

Goverment/policy

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24 Jul 2018

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact. Read more

2 Jul 2018

INTA “extremely disappointed” with WTO plain packaging ruling, considering next steps

In a landmark ruling, the World Trade Organisation has upheld Australia’s tobacco plain packaging regime as being consistent with its trade obligations. The response has been mixed, with INTA voicing its disappointment and confirmed it is regrouping on the issue. Read more

28 Jun 2018

Mark owners beware: new food labelling regulation may restrict trademark rights

In an action filed by Evercrisp (a subsidiary of Pepsico), a Chilean court has held that the restrictions imposed by the new food labelling regulation do not imply an expropriation, but only a limitation of trademark rights based on public health reasons. Read more

22 Jun 2018

Cuba issues first consumer protection rules, IHOB “a flop”, and cost of a country rebrand: news round-up

In our latest round-up, we look at Alibaba and Kantar teaming up to redefine brand building in China, Ukraine's institution of IP inspectors, the musician ordered to pay $2 million for trademark infringement, and more. Read more

Law firms

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26 Apr 2018

Private practice perspectives on diversity: “We must push forward in the name of achieving greater equality”

Law firm professionals reflect on the theme of this year’s World IP Day, which highlights the ingenuity and courage of the women who are driving change in our world. Read more

17 Mar 2018

Argentina’s emergency trademark law amendments and reassuring filing figures; exclusive data analysis

World Trademark Review examines the IP profile of Argentina, exploring the potential impact of the new emergency decree on trademark law, while providing a thorough breakdown on filings at the Argentine register. Read more

15 Mar 2018

“A situation of uncertainty” – fees debacle at Venezuelan IP office leaves brand owners “in limbo”

​​​​​​​The Venezuelan Patent and Trademark Office has suspended payment of official fees by foreign applicants for the foreseeable future. The situation has been described by one local attorney on the ground as “lacking legal basis” and leaving IP owners “in limbo”. Read more

13 Mar 2018

Jamaica approves protection of GIs, Montenegro joins TMView and United Kingdom ratifies Hague Agreement: news round-up

In today's round-up, we look predictions for the next round of gTLDs, the UK’s IP Crime Unit urging the public to “treat mum right” by avoiding fakes, and much more. Read more

IP offices

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17 Aug 2018

Chile punches well above its weight from a trademark and branding perspective: exclusive data analysis

In this week’s country data report, we examine the major trademark trends in the Chilean market. We show that both domestic and foreign filings are stable, reveal the most valuable brands in the country, and analyse the key trademark classes used for both inbound and outbound applications.   Read more

24 Jul 2018

Plain packaging for bank loans, Honduras to appeal WTO ruling and legality of Burberry burning: news round-up

In our latest round-up, we look at the TTAB siding with Italian fashion brand Gucci in a dispute with a family member of Gucci’s founder, Kazakhstan enacting new IP law amendments, and much more. Read more

24 Jul 2018

New IP officials appointed against backdrop of great uncertainty

New IP officials, including a new director of trademarks, have recently been appointed in Venezuela. These appointments come in a climate of great uncertainty, mainly due to the suspension of the payment of official fees by foreign IP owners earlier this year. Read more

5 Jul 2018

"Planning for positive change": the law firm perspective on Brazil joining the Madrid Protocol

​​​​​​​After over a decade of discussion, Brazil looks increasingly likely to accede to the Madrid system. We speak to local law firm practitioners about how it is expected to impact their own practice and the wider trademark scene. Read more

Online

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21 Feb 2018

Spreading the message – the IP offices taking significant strides to engage with the public about trademarks

In the third part of our series tracking IP office innovation, we take a deep dive into how registries are spreading the trademark message to a wider audience. Read more

20 Feb 2018

Online trailblazers – the IP offices breaking new ground in digital services, and those falling behind

In the second of our four-part series on IP office innovation, we take a look at digital tools and services. We reveal the registries leading the way in areas including website functionality, e-filings and open data access. Read more

12 Jan 2018

Havana Club hostility, new UK IP minister, and General Mills 'logo trolls’ Kellogg’s: news round-up

In our latest news round-up we look at the announcement of a new IP minister in the UK, INTA welcomes its new president, the latest development in the long-running Havana Club dispute, and much more. Read more

1 Jan 2018

Mexico: Cat and mouse: how rights holders chase online infringers

The anonymity offered by the Internet is a significant lure for infringers. However, despite the online landscape being largely ungoverned, Mexican rights holders can still take steps to protect their intellectual property Read more

Portfolio management

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29 Aug 2018

Can fluid marks be considered part of a client’s IP portfolio in Mexico?

Mexico recently introduced a number of legal amendments whereby the types of registration for distinctive signs were extended to include non-traditional marks. However, fluid mark protection remains a riddle. Read more

2 Aug 2018

Authorities should distinguish between ads and trademarks: exclusive interview with PepsiCo’s Sergio Barragan

We speaks with Sergio Barragan of beverage giant PepsiCo to discover his approach to managing the company’s extensive Latin American brand portfolio. Read more

29 Jun 2018

Symbols of the rich and famous: challenges for fashion and luxury brands

Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place. Read more

18 Jun 2018

“Providing customers with what they want is one of the best ways to reduce piracy”: inside Grupo Televisa’s enforcement efforts

How the Mexican media giant approaches brand and content enforcement. Read more

Trademark law

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12 Sep 2018

Trademark procedures and strategies: Brazil

As a general rule, the Industrial Property Law states that ownership of a mark is acquired through a granted registration, following which the rights holder has the right to exclusive use of the trademark throughout the national territory. Read more

22 Aug 2018

Brazil on the path to Madrid

After over a decade of debate, Brazil is expected to join the Madrid Protocol next year. But while accession seems inevitable, local practitioners have mixed feelings about the move. Read more

1 Aug 2018

Chaos as PTO imposes overly strict power of attorney requirements

New power of attorney requirements imposed by the Patent and Trademark Office (PTO) have caused administrative chaos in Bolivia. Following intervention by the Ministry of Economic Development, the PTO is now having to backtrack. Read more

31 Jul 2018

Amendments to Industrial Property Law due to come into force - key features explained

Earlier this year, the Mexican Senate approved a decree which introduced significant amendments to the Industrial Property Law. This update highlights the key changes introduced by the decree, which is due to come into force on 10 August 2018.  Read more

Find an expert

George de Lucena
Head of Brand Protection
Rio de Janeiro, Brazil
Daniel Legal & IP Strategy