Latin America & Caribbean

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.

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest
FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest
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.

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

Latest

View all
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

6 Apr 2021

Use of Toyota’s marks on car parts held not to fall within Article 157 exception

Peru's Administrative Court of Appeal has found that use of the sign USE FOR TOYOTA/LEXUS AUTOPARTS on imported oil and fuel filters did not fall within the exception provided for by Article 157 of Decision 486. 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

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

Anti-Counterfeiting

View all
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

23 Mar 2021

Apple counterfeits takedown blitz; Chile moves closer to Madrid Protocol; fake 3M mask warning – news digest

In our latest round-up, we look at a new anti-counterfeiting label being developed, Everlast inking a deal with SportLife Brands, the Mongolian IP Office joining a gender campaign, and much more. Read more

18 Jan 2021

The notorious markets you need to have on your policing radar

The latest USTR list provides crucial intelligence for rights holders, with eight new physical markets added. Read more

15 Jan 2021

Notorious Markets List 2020: USTR resists call to include US platforms as Alibaba and Amazon remain

The Office of the US Trade Representative has released the findings of its 2020 Review of Notorious Markets for Counterfeiting and Piracy. Read more

Brand management

View all
18 Mar 2021

Estee Lauder and Walt Disney big performers as WTR Brand Elite stocks continue upward momentum

The WTR Brand Elite project tracks how a defined set of brand-focused companies with industry-leading trademark teams perform against stock market indices. 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

2 Mar 2021

IP Hall of Fame nominations open; USPTO reflects on future of designs; Philip Morris prevails in Korea – news digest

In our latest round-up, we look at Mr Potato Head going gender neutral, Beyond Meat signing new licensing deals, Pink Lady owner defending its trademark, and much more Read more

26 Jan 2021

Apple wrestles ‘most valuable brand’ crown from Amazon as diversification drives growth

Apple has replaced Amazon at the top of the Brand Finance Global 500 2021 ranking of the world’s most valuable brands following a stellar 87% increase in brand value over the past year. Read more

Enforcement and Litigation

View all
18 Mar 2021

Precautionary measures issued based on trade dress of BaByliss hair straightening iron

The Peruvian Trademark Office has recognised that the grey-blue colour and the font used for the word element ‘Nano Titanium’ are part of the trade dress of BaByliss’ Nano Titanium hair straightening iron. Read more

15 Mar 2021

Amendments to the Administrative and Contentious-Administrative Procedural Code: key points highlighted

IP practitioners should take note of the changes introduced by Law 2080, which will have a significant impact on IP administrative and contentious-administrative procedures in Colombia. Read more

12 Mar 2021

No GASTÓN spoons and forks – sign that could affect the prestige of a person refused

Peru’s Administrative Court of Appeal has confirmed the first-instance resolution that rejected the application for the mark GASTÓN, ruling that the mark could affect the reputation of the Peruvian chef Gastón Acurio. Read more

4 Mar 2021

Fashion boutique ordered to pay exemplary fine for copying Burberry pattern

Burberry has obtained an outstanding result in a dispute with a Peruvian fashion company over the use of its pattern trademark, with the Trademark Office using its discretion to increase the amount of the fine imposed. Read more

Government/Policy

View all
25 Jan 2021

Good news for IP owners as several IP treaties are reinstated in Venezuela

In a welcome development for IP rights owners, late last year SAPI announced the direct application of the TRIPS Agreement and other international IP treaties in Venezuela. Read more

14 Dec 2020

Who are the innovators of the trademark industry? Nominate and have your say

WTR is seeking nominations to recognise the innovators in the trademark industry as part of a new project – and it will only take a couple of minutes to do so. Read more

12 Dec 2020

Why Mexico needs clearer publicity rights

With image rights protected mainly by the Federal Copyright Law, the overlap between an individual’s right to control use of their image and the automatic copyright established on behalf of an author can lead to courtroom conflicts. Read more

4 Dec 2020

Gender pay gap reports a necessary diversity tool for Latin American law firms, experts urge

While most firms ensure that no specific role is paid differently due to gender, a gender pay gap report lays bare whether a firm has men over-represented in the highest-earning positions. Read more

Law Firms

View all
31 Dec 2020

Trademarks during covid: exclusive insights from law firm experts in Brazil

WTR presents exclusive insights on how the events of 2020 shaped the trademark practice of Andréa Possinhas and Isadora Lima at Gruenbaum, Possinhas & Teixeira in Brazil. Read more

24 Nov 2020

USPTO seeks anti-counterfeiting comments; Diageo hunts for premium brands; Smashburger dispute – news digest

In our latest round-up, we look at MarkMonitor becoming a licensed domain name registrar in China, INTA announcing the recipients of its President’s Awards, and much more. 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

12 Nov 2020

“Firms wouldn’t even accept a woman’s CV”: challenging diversity in Latin American legal culture

Often, the diversity discussion is centred on the goals of firms based in North America or Western Europe. But the conversation is also growing in Central and South America. Read more

IP Offices

View all
22 Feb 2021

Success of online training seminars for law enforcement officers continues

Last year, against the background of the covid-19 pandemic, the first online training seminars for law enforcement officers specialised in IP matters took place in Peru. This type of training presents several advantages and has continued to prove popular this year. 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

1 Dec 2020

How Mexico is on the case when it comes to well-known trademarks

Mexico’s participation in various free trade agreements and recent update of the Industrial Property Law make it a jurisdiction worth considering when seeking to establish and utilise renown for a trademark in the region. Read more

Online

View all
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

18 Nov 2020

The verdict on virtual exhibits at the 2020 INTA Annual Meeting

With the 2020 INTA Annual Meeting in full swing, WTR speaks with exhibitors at the virtual event to see how their experience compares with previous years and what changes they would like to see at future digital conferences. Read more

23 Oct 2020

Messi granted trademark in Colombia; Amazon counterfeit lawsuit; brands no longer fear Trump – news digest

In our latest round-up, we look at the NCPC and IPR Center teaming up to fight fake vapour products, the Brazilian IPO granting the first geographical indications to indigenous people, and much more. Read more

Portfolio Management

View all
25 Feb 2021

New mandatory precedent regarding the use of a trademark consisting of packaging

In cancellation proceedings involving a trademark consisting of the Sunny Girl dolls packaging, Peru's Administrative Court of Appeals has established a new mandatory precedent concerning the proof of use of a trademark consisting of packaging. Read more

22 Jan 2021

Vans successfully registers iconic ‘Checkerboard Slip-On’ design for trainers

The Peruvian Trademark Office’s Direction of Distinctive Signs has upheld an appeal by Vans Inc claiming that its internationally famous ‘Checkerboard Slip-On’ design has a high level of distinctiveness and is associated with a specific business origin. Read more

15 Jan 2021

Stricter requirements for proving use of a trademark through invoices

The National Service of Intellectual Rights of Ecuador has recently issued several resolutions which have radically changed the criteria for using invoices as proof of use. Read more

11 Jan 2021

Tommy Hilfiger obtains invalidation of similar figurative trademark

This case shows that the commercial use of a registered trademark should be considered in invalidity proceedings – especially those involving bad faith. Read more

Trademark law

View all
2 Dec 2020

Why owners of famous trademarks can benefit from local recognition in Brazil

Protection for highly renowned trademarks is set out in Brazil’s Industrial Property Law and securing such recognition can be key when it comes to enforcing rights both within the administrative sphere and before the courts. Read more

15 Oct 2020

Innovation at WIPO: spotlight on alternative dispute resolution at IP offices

An exclusive guest post on how WIPO has been working with global IP offices to promote the advantages of alternative dispute resolution services. Read more

12 Oct 2020

One year of Madrid in Brazil – IP office claims success, local experts voice concerns

The Brazilian Intellectual Property Office has described last year’s implementation of the Madrid Protocol as "successful"– but local experts claim a number of issues remain for domestic and foreign brand owners. Read more

23 Sep 2020

Money saving tips, Asia top filers, UDRP review: WTR’s autumn edition now available

In a bumper edition we present budget management tips, reveal the top law firm and corporate filers in key jurisdictions across Asia, analyse the findings of our survey on non-legal trademark services, and much more. Read more

Find an expert