Latin America & Caribbean

Arrest over fake Tokyo 2020 medals; counterfeit lemons seized; Indonesia trademark rise – news digest

In our latest round-up, we look at the Chinese government bringing live-streaming for IP services to Douyin (the Chinese version of TikTok), a shipment of counterfeit belts being seized in Louisville, and much more.

Arrest over fake Tokyo 2020 medals; counterfeit lemons seized; Indonesia trademark rise – news digest
“We are in constant beta”: inside Mercado Libre’s brand protection programme
3 Aug 2020

“We are in constant beta”: inside Mercado Libre’s brand protection programme

In an interview with WTR, Juan Cichero, head of brand protection at Mercado Libre, explains how its IP protection offerings are evolving and outlines how rights holders can assist the company in its efforts.

Time is running out to have your say on whether non-legal trademark services suppliers are delivering what you need
29 Jul 2020

Time is running out to have your say on whether non-legal trademark services suppliers are delivering what you need

WTR needs your views on trademark search, watch and portfolio management services.

Latest

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5 Aug 2020

LOUIS VUITTON recognised as well-known mark in Classes 18 and 25

Within the context of opposition proceedings against the registration of the mark MUVITON in Class 5, INDECOPI has recognised the notoriety of LOUIS VUITTON in Peru for “clothing, shoes, bags, belts and travel suitcases”. Read more

4 Aug 2020

German steel company’s subsidiary successfully defends its rights in BAUKUS mark

Waelzholz Brasmetal, the Brazilian subsidiary of German steel company Wälzholz, has successfully expanded the protection of its BAUKUS mark in Paraguay. Standing in its way was a registration for an identical trademark covering identical products. Read more

28 Jul 2020

Court of Appeal issues important decision on link between trademarks and domain names

In an action for the revocation of the domain name ‘multimed.cl’, filed by the owner of the trademark MULTIMED, the Ordinary Court of Appeals has held that a domain name is the projection of a trademark in the digital environment, where their functions are linked. Read more

27 Jul 2020

Dyson, Jack Daniels, Walmart and more join expert roster for WTR Connect

WTR can now reveal more speakers to our upcoming WTR Connect event, including experts from Amazon, ASOS, Dyson, Gilead, Jack Daniels, SuperDry and Walmart. Read more

Anti-Counterfeiting

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8 Jul 2020

EUIPO top filers, China litigation data, diversity in trademarks, and much more: WTR’s summer edition now available

The summer issue of WTR is now available to subscribers; and includes an exploration of how private investigators are being employed by rights holders, analysis on the IP effects of the covid-19 pandemic, and much more. Read more

6 Jul 2020

Why Mexican rights holders may need to take the law into their own hands

With softened criminal penalties and agencies powerless to initiate their own seizure proceedings, brand owners should make a concerted effort and the best use of the remedies available to protect their marks in Mexico. Read more

23 Jun 2020

Impact of covid-19 pandemic on industrial property field in Brazil

The latest statistics released by Brazil’s Patent and Trademark Office show a drop in the number of patent, trademark and industrial designs applications. In contrast, there has been a sharp increase in the number of cases involving counterfeit medicines in the first months of 2020. Read more

20 May 2020

How do private investigators assist in brand protection cases?

WTR readers have a last chance to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with PIs. Read more

Brand management

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21 Jul 2020

“The death of trademark” – study finds that AI could adversely affect brand usage

A new research paper has looked at how improvements in AI could affect trademark doctrine – with the academic behind the study claiming that “trademarks may become less important in the future”. Read more

14 Jul 2020

Experts from Amazon, GSK, Hugo Boss, Sony, Target and Disney among first confirmed participants for WTR Connect

WTR can now reveal the first confirmed participants to our upcoming WTR Connect event, including David Gooder, USPTO commissioner of trademarks, and experts from companies including Burberry, Starbucks and Under Armour. Read more

8 Jul 2020

Diversity and inclusion: what success looks like in the trademark environment

Trademark experts offer critical insight into the creation, maintenance and monitoring of meaningful diversity and inclusion programmes. Read more

8 Jul 2020

Key requirements for trademark licensing in Latin America and the Caribbean

When creating a regional licensing programme, understanding the nuances of the rules and regulations at jurisdictional level is key to success. Read more

Enforcement and Litigation

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21 Jul 2020

Trinidad and Tobago’s Trademarks Act 2015 surprises practitioners five years later

Considering that Trinidad and Tobago’s Trademarks Act 2015 had been waiting more than five years to be implemented, it caught many by surprise when the country’s president proclaimed that the act would become immediately operative on 25 June 2020. Read more

17 Jul 2020

Owner of LACOSTE marks successfully prevents registration of mark including crocodile design

Sporloisirs SA, the owner of the LACOSTE marks and crocodile logo, has successfully appealed against a first-instance decision dismissing its opposition against the registration of a mark containing a crocodile design in Class 25. Read more

8 Jul 2020

Defending against bad-faith applications in the Andean region

Protecting brands against parasitic trademarks can raise numerous challenges in Bolivia, Colombia, Ecuador and Peru – but there are ways to overcome them. Read more

2 Jul 2020

Are non-legal trademark services suppliers delivering what you need? WTR wants to know

WTR is polling law firm and corporate trademark professionals for their thoughts on how the trademark services sector is matching up to expectations. Read more

Government/Policy

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24 Jul 2020

Trademarking national symbols in Costa Rica – what you need to know

An opinion issued by the Attorney General’s Office concludes that the Legislative Assembly is the competent authority to authorise the use of national symbols in trademarks. However, it falls short of detailing the relevant procedure for obtaining such authorisation. Read more

26 Jun 2020

Rise of the activist consumer: relationship between activism and brand loyalty revealed

A new report examines the links between activism and consumer behaviour, finding an increasing number of US consumers are making spending choices based on their social and political values. Read more

25 Jun 2020

Brazilian IP office looks to a brighter future following turbulent few years

An IP expert reveals that the Brazilian National Institute of Industrial Property is in a “better place” today than it was last year – although its future success hinges on effective collaboration with WIPO and adopting a regulation for IP agents. Read more

18 May 2020

ICANN seeks to draw line under Amazon ‘.brand’ spat with South American governments

Göran Marby, president and chief executive officer of ICANN, has written a communication which seeks to draw a line under an eight-year battle that has raged over Amazon’s application for its ‘.brand’ top-level domain. Read more

Law Firms

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26 Jun 2020

How the virtual boutique finds the middle ground between law firm models

IP attorney Julia Anne Matheson explains why the Potomac Law Group has developed a business model that could shape the future of the trademark industry. Read more

28 May 2020

Final chance to share your insights on private investigators and brand protection

There’s just a couple of days left for WTR readers to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with third-party investigators. Read more

27 May 2020

Digital receptions: how law firms are approaching networking for INTA’s virtual 2020 Annual Meeting

With the INTA confirming that its 2020 Annual Meeting will be a virtual event, law firms and service providers must now decide whether to host a networking reception in a digital environment. Read more

12 May 2020

A new normal: trademark community on life during and after the coronavirus pandemic – exclusive survey results

New research from WTR reveals the brand protection challenges being faced by trademark professionals during the covid-19 crisis, finding practitioners facing significant salary cuts, increased infringement and the spectre of budgets being slashed. Read more

IP Offices

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17 Jun 2020

Impact of covid-19 pandemic on IP practice in Mexico

Although Mexico has experienced an important slowdown in the activities associated with the protection of intellectual property, the IP system has not completely come to a halt, and IMPI is expected to resume its regular activities by 30 June 2020. Read more

16 Jun 2020

Bolivian Trademark Office’s response to covid-19 pandemic: when the cure is worse than the disease

The Bolivian Patent and Trademark Office was caught off-guard when the country was put into lockdown. The office has never offered or prepared for the provision of online services, and the actions taken in response to the lockdown arguably caused more problems than they solved. Read more

10 Jun 2020

Impact of covid-19 pandemic on IP practice in Colombia

While the Patent and Trademark Office of Colombia reopened on 1 April 2020 following a short closure, the situation is very different for the judicial system. Read more

8 Jun 2020

INDECOPI releases proposal on graduation of fines for comment

A proposal document recently issued by Peru’s National Institute for the Defence of Competition and Intellectual Property seeks to increase the predictability of fines. Read more

Online

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12 May 2020

Mexico IP office's new online platform; Daren Tang appointed WIPO director general; INTA mental health webcast – news digest

In our latest round-up, we look at Puma’s Olympics trademark application being rejected, Aon launching an IP risk platform, the Spanish Patent and Trademark Office creating a coronavirus time capsule, and much more. Read more

6 May 2020

Private investigators and brand protection: have your say

WTR is inviting trademark industry professionals to share their perspective on how private investigators (PIs) are assisting with brand protection work, and the challenges currently being faced when finding and working with PIs. Read more

17 Apr 2020

Apple most imitated phishing brand; Hugo Boss rebrands to Joe Lycett; new CITMA president – news digest

In our latest edition, we look at Patagonia dropping a trademark suit against OC Media, infringers piling on covid-19 domains, IP issues relating to 3D printing ventilators, and much more. Read more

6 Apr 2020

Managing finite filing budgets; the looming brand value crisis; Intel on diversity: new edition of WTR is now live

The Spring 2020 edition of WTR is now available online to subscribers, offering the latest litigation tips, insight into IP office innovation, wellbeing considerations, and much more. Read more

Portfolio Management

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26 Jun 2020

Kraft Heinz finally sees a positive quarter, but innovation and licensing key to maintaining momentum

The company has struggled as consumers increasingly opt for healthier products. Now it is seeking new ways to monetise its iconic brands while simultaneously implementing a transformation strategy. Read more

25 Jun 2020

How to combat parasitic applications in Bolivia

While protecting brands against bad-faith applications can throw up numerous challenges, a strong national regime offers various ways to overcome these Read more

25 Jun 2020

Two key cases for Colombia’s mosaic approach to defeating bad-faith applications

Colombia’s Superintendencia de Industria y Comercio uses a combination of the relevant Andean Decision and national law to fend off parasitic trademark applications. Case law suggests that the approach is working Read more

1 May 2020

New temporary e-filing system for duration of covid-19 national emergency

The Venezuelan Intellectual Property Office has announced that, starting from 27 April 2020 and as long as the national sanitary emergency remains effective, the office will implement a temporary e-filing system for certain IP-related matters, including trademark applications. Read more

Trademark law

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1 Jun 2020

Trademark Office issues first opposition decisions since change in law

Argentina’s Trademark Office has issued its first decisions in opposition proceedings since amendments to trademark law and practice were introduced in early 2018. Read more

23 Apr 2020

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. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Brazil

Lawsuits on the grounds of trademark infringement are prosecuted before state courts and through private criminal prosecution brought by the rights holder. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Mexico

There are several legal instruments available which carry significant benefits to those who choose to fight back and protect their intangible assets. Read more

Find an expert

Isabella Cardozo
Partner
Rio de Janeiro, Brazil
Daniel Law