Latin America & Caribbean

Cannabis brand parodies, a new bad-faith standard and more: Legal Updates from the Americas you may have missed

WTR’s Legal Updates are written by a select panel of over 160 leading experts who analyse the latest trademark-related developments and decisions in more than 60 jurisdictions.

Cannabis brand parodies, a new bad-faith standard and more: Legal Updates from the Americas you may have missed
Image recognition and KYC initiative top priorities for Mercado Libre, head of brand protection reveals
26 Jul 2021

Image recognition and KYC initiative top priorities for Mercado Libre, head of brand protection reveals

Earlier this month, Mercado Libre revealed that reports of IP infringement fell across its platforms in the second half of 2020. We spoke to head of brand protection Juan Cichero to find out what more the company is doing to differentiate its services and combat evolving counterfeit activity.

IP offices should be “protagonists and agents of change” urges INAPI director after launch of new multinational IP and gender network
7 Jul 2021

IP offices should be “protagonists and agents of change” urges INAPI director after launch of new multinational IP and gender network

Chilean National Institute of Industrial Property Director Loreto Bresky calls for IP offices to increase collaboration and follow in the footsteps of the new Latin American Network of Intellectual Property and Gender.

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26 Jul 2021

Significant raid carried out against importer of fake mobile phone accessories

More than 15,000 fake mobile phone accessories - bearing brands such as Apple, Huawei, Samsung and Xiaomi - have been seized following a huge raid in a commercial establishment and warehouse located in Downtown Lima. Read more

19 Jul 2021

New mandatory precedent regarding assessment of genuine interest in Andean opposition

According to a recent resolution of the Administrative Court of Appeals, the assessment of the genuine interest - based on a trademark application or a registered trademark - in an Andean opposition must be evaluated at the time of filing of the opposition. Read more

14 Jul 2021

Foreign companies as IP holders in Ecuador

Third-party appropriation of internationally famous trademarks is a problematic phenomenon in Ecuador. Some clarification by the Court of Justice of the Andean Community would arguably be welcome. Read more

7 Jul 2021

Publication of two new mandatory precedents regarding cancellation actions

Two new mandatory precedents concerning cancellation actions were recently published in Peru’s official gazette. One of the issues considered was whether the same evidence may prove the use of two or more trademarks in different cancellation actions. Read more

Anti-Counterfeiting

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24 Jun 2021

How to work with Customs – six key tips for brand owners

IP practitioners in Europe, Central America and the United States discuss how brand owners can work with Customs to clamp down on counterfeiting in their region. Read more

7 Jun 2021

Authorities seize fake fabric intended to be used for face masks

The Peruvian Police and the IP Prosecutor have conducted a huge raid against distributors of fabric rolls bearing well-known trademarks that were intended to be used to manufacture face masks. Read more

4 Jun 2021

Tesla overtakes Apple in trademark furore; Madrid Protocol passed in Jamaica; GOOD YEAR well known in India – news digest

In our latest round-up, we look at the explosive increase in trademark applications in Chile, the appointment of a new president at the Licensing Executives Society International, and much more. Read more

2 Jun 2021

Emerging threats and trends in online brand protection; share your insights

WTR is asking readers to share their experience of the online brand protection environment in the past 12 months, in an effort to identify how practice is evolving in response to emerging threats. Read more

Brand management

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9 Jun 2021

Communication, CSR and canny digital presence help Corona retain title of ‘most valuable beer brand’

The newly published Brand Finance Alcoholic Drinks 2021 report reveals that the total value of the world’s top 50 most valuable beer brands has declined by 16%, from $94.9 billion to $80.2 billion, over the past year. Read more

24 May 2021

Amazon, Apple and Facebook teams top the list as world’s leading corporate trademark professionals revealed

Released today, the fifth edition of WTR 300: The World’s Leading Corporate Trademark Professionals identifies the individuals deemed to be the leading lights of the corporate trademark world. Read more

21 May 2021

Chilean Senate approves Madrid Protocol; UKIPO publishes new corporate plan; Anaqua acquires Actio IP – news digest

In our latest round-up, we look at Alt Legal partnering with Clarivate, a brand incubator landing $70 million in funding, the USPTO announcing new covid-19 pilots, and much more. Read more

30 Apr 2021

Walmart takes on Kanye West; EUIPO extends presence in Africa; Crayola teams up with Build-A-Bear – news digest

In our latest round-up, we look at the USPTO seeking innovation medal nominations, the McCarthy Institute heading to Arizona, delivery apps changing the branding game, and much more. Read more

Enforcement and Litigation

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24 Jun 2021

Federal Court of Appeals departs from usual practice in SENSORMATIC case

Until now, if a trademark owner sought a temporary assignment of a domain name containing its mark until a final decision was issued, the court usually ruled in its favour. However, in a recent case, a chamber of the Federal Court of Appeals has changed this practice. Read more

22 Jun 2021

Superior Court of Justice: no exclusive rights over prefix derived from active ingredient of medicine

In this dispute between pharmaceutical companies Takeda and Cimed, the Brazilian Superior Court of Justice held that prefixes referring to the active ingredients of medicines cannot be appropriated as trademarks. Read more

28 May 2021

Important modifications to the Industrial Property Law: what you need to know

The recently-approved amendments to the Chilean Industrial Property Law represent an important legislative milestone, with some of the changes - such as the introduction of non-use cancellation actions - having been on the table for years. Read more

25 May 2021

“Joy and tranquility” – former INAPI director reacts to Chile moving closer to Madrid Protocol in exclusive interview

In an exclusive interview with WTR, INAPI’s former director Maximiliano Santa Cruz shares his perspective on Chile taking a step closer to the Madrid Protocol and calls for the registry to incorporate copyright and plant varieties. Read more

Government/Policy

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25 Jun 2021

Geographical indications in Venezuela: latest developments

Although Venezuela has withdrawn from the Andean Community, which is having a negative impact on filing GIs, recent developments in the procedure for protecting GIs suggest that the practice may be on its way up. Read more

3 May 2021

Innovation at the Ecuador Institute of IP: spotlight on non-core tools and services

In exclusive insights, the general director of the Ecuadorian Institute of Intellectual Property (SENADI) reveals the innovative non-core tools and services the registry offers for trademark users – and some of those planned for the future. Read more

23 Apr 2021

Chile to allow non-traditional trademarks; Spanish government pledges IP commitment; GRILLOUMI dispute – news digest

In our latest round-up, we look at Chinese officials obtaining registered trademarks for the entire South China Sea, Dubai Customs recycling 134,000 counterfeit items, and much more. Read more

9 Apr 2021

FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest

In our latest round-up, we look at GoDaddy increasing its TLD portfolio, Timberland’s trade dress getting the boot, the Peruvian IP office warning political parties to respect IP, and much more. Read more

Law Firms

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16 Apr 2021

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest

In our latest round-up, we look at Brainbase expanding its customer base, a new report that finds consumers trust tightly spaced logos, the Brazilian trademark office opening a public consultation, and much more. Read more

30 Mar 2021

France victorious in ‘france.com’ dispute; USPTO issues credential warning; EUIPO gets Green Apple award – news digest

In our latest round-up, we look at the UKIPO welcoming its position on the US Chamber 2021 Global IP Index, a CBD trademark spat resolving, the Chilean IP Office updating its trademark renewal system, and much more. Read more

26 Mar 2021

Taylor Swift settles Evermore dispute; Facebook partners with UKIPO; All Gas No Brakes brand ownership – news digest

In our latest round-up, we look at Burberry partnering with a video game developer, the EUIPO winning an award, the Peruvian IP Office auctioning off property owned by IP infringers, and much more. Read more

5 Mar 2021

USPTO ends specimen protest email; New York Times drops Time lawsuit; UK debut for Amazon Fresh – news digest

In our latest round-up, we look at a groundbreaking report on IP in Mexico, INTA holding events marking International Women’s Day, Apollo acquiring craft retailer Michaels, and much more. Read more

IP Offices

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23 Jun 2021

Register tracker: Latin America

We drill into the latest trademark trends and statistics for Argentina, Brazil, Colombia, Venezuela and Mexico Read more

17 Jun 2021

Exclusive roundtable – how three leading IP offices are stepping up their diversity, sustainability and accessibility agendas

The Long Read: The EUIPO, the Intellectual Property Office of the Philippines and the Chilean National Institute share insights into what they are already doing to address diversity and inclusion within the workplace, while reducing their carbon footprints, along with how they plan to improve further. Read more

14 Jun 2021

Peruvian Trademark Office: progress and plans for the future

Important achievements include the reduction of the timeframe for resolving cases and the successful implementation of digital tools, and current projects involve search tools using artificial intelligence. Read more

31 Mar 2021

Applications filed by women increase 101% in Chile – but wider industry input required to drive true parity

A recent report from the Chilean National Institute of Industrial Property has revealed that the number of trademarks filed by women increased significantly over the past year. Speaking to WTR, national director Loreto Bresky reflects on various initiatives behind the hike. Read more

Online

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13 May 2021

adidas successful in phishing case involving branded face masks

adidas has obtained the removal of a website used to carry out a phishing attack involving the ADIDAS trademark. Users were misled into believing that they would receive a free branded mask once that they had completed a survey. Read more

30 Nov 2020

Ranked: the IP offices with the most accessible web platforms

New data from WTR identifies the national IP offices with websites that are most accessible for users, including those with vision or motor impairment. Read more

24 Nov 2020

Michael Gleissner: massive scope of trademark and domain portfolio revealed in exclusive data

A major new investigation from WTR has identified over 6,800 trademarks and 6,900 domain names that appear to be related to multi-millionaire and serial trademark filer Michael Gleissner. Read more

19 Nov 2020

Inclusion in the IP profession; removing formalities requirements; UKIPO on Brexit – INTA 2020 update

As the INTA 2020 Annual Meeting draws to a close, WTR presents observations from the numerous sessions that have taken place over the past few days. Read more

Portfolio Management

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30 Apr 2021

From Apple to Nike: key recent decisions and developments from the Americas analysed

For our next instalment presenting recent Legal Updates that you may have missed we turn our attention to the Americas. Read more

26 Apr 2021

Supreme Court of Justice: “real and effective use” of trademark necessary to preserve registration in Mexico

The lack of definition in Mexican legislation as to what constitutes trademark use has caused headaches to trademark owners for many years. However, a recent resolution issued by the Supreme Court of Justice provides some welcome answers. Read more

16 Apr 2021

The KOTEX case or the importance of expressly stating the grounds on which an opposition is based

In a victory for Kimberly Clark Worldwide Inc, Peru’s Administrative Court of Appeals has declared - pursuant to a Supreme Court of Justice order - the nullity of two resolutions issued over 14 years ago in a dispute involving two KOTEX marks. Read more

30 Mar 2021

New procedure for the granting of GIs - what you need to know

This update highlights the main requirements that must be met in order to obtain GI protection in Venezuela pursuant to the new procedure established by the Trademark Office late last year. Read more

Trademark law

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11 May 2021

Procedures and strategies for anti-counterfeiting: Mexico

In Mexican law, IP rights violations can be considered either administrative infringements (ie, trademark or copyright) or criminal counterfeiting cases, depending on the facts of the actual matter, each with its own procedural regulations and effects. Read more

11 May 2021

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

4 Jan 2021

Fame in South America: how to establish and wield well-known status

Renown is a powerful tool for trademark practitioners, but when seeking to establish and utilise it in Central and South America, local nuance is all important. Read more

17 Dec 2020

“Not sure it is the right time”: practitioners question Chile’s move to approve the Madrid Protocol

Local experts have expressed concern that the country’s existing legal structures may not be ready to handle international registrations after joining the Madrid Protocol. Read more