Latin America & Caribbean

Tommy Hilfiger and Under Armour among first to join Mercado Libre’s new Anti-counterfeiting Alliance

We go behind the scenes at Mercado Libre’s new Anti-counterfeiting Alliance to learn how the collaboration project fits in with the platform’s aims to fight online infringement.

Tommy Hilfiger and Under Armour among first to join Mercado Libre’s new Anti-counterfeiting Alliance
A new dawn: how INAPI is recovering following devastating arson attacks
25 Nov 2021

A new dawn: how INAPI is recovering following devastating arson attacks

In an exclusive interview, INAPI national director Loreto Bresky reveals how the last 12-month period has been one of the most complex in the agency’s history, and pledges “we are going forward”.

INTA reveals new Strategic Plan; NFTs to revolutionise anti-counterfeiting; INAPI gives Madrid Protocol update – INTA 2021 report
19 Nov 2021

INTA reveals new Strategic Plan; NFTs to revolutionise anti-counterfeiting; INAPI gives Madrid Protocol update – INTA 2021 report

For a final time, WTR takes a look at the highlights and learnings from this year’s INTA Annual Meeting.

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26 Nov 2021

New Administrative Court of Appeals mandatory precedent on issuance of new resolutions

At issue was whether the maximum term for resolving administrative proceedings under Peru’s Legislative Decree 1075 applies where a first decision has already been issued, but has subsequently been declared null. Read more

19 Nov 2021

Shell ditches ‘Royal Dutch’; INFORM Consumers Act applauded; EUIPO adjusts attachment pilot – news digest

In our latest round-up, we look at Authentic Brands Group buying a UK photography archive, 10 million adverts for counterfeit goods being removed, and much more. Read more

16 Nov 2021

“The change starts with you” – INTA embraces diversity message in 2021 Annual Meeting opening ceremony

The 2021 INTA Annual Meeting kicked off with an inspiring message to delegates on the importance of diversity, equity and inclusion and becoming a brand steward. Read more

12 Nov 2021

New IP office standards body set to launch in effort to combat stark digital disparities

The International Intellectual Property Standards Group will launch in the coming months with the aim of advocating for improved standardisation at IP offices, WTR can reveal. Read more

Anti-Counterfeiting

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9 Nov 2021

Maradona trademark dispute; Afghanistan IP office resumes operations; Ghana joins Geneva Act – news digest

In our latest round-up, we look at Chinese buying agent WeGoBuy launching an offer to users of a counterfeits forum, PepsiCo being ordered to cease use of its ‘Rise’ name, and much more. Read more

9 Nov 2021

Puma obtains removal and destruction of shoes bearing its figurative mark

German sportswear manufacturer Puma SE has obtained the withdrawal from the market and destruction of sports shoes sold in a major Uruguayan footwear retail chain. Read more

5 Oct 2021

Changes to border measures and IP crimes: what you need to know

A reform of Ecuador’s IP laws came into force on 27 August 2021, providing greater efficiency in prosecuting IP crimes and correcting previous flaws in the border measure system. Read more

1 Oct 2021

INTA announces Annual Meeting keynote; tips from a USPTO examining attorney; domain security concerns – news digest

In our latest round-up, we look at the future of NFTs in the IP industry, the Hershey Company taking the Cookie Department to court, and much more. Read more

Brand management

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10 Nov 2021

“Enormous momentum” – global spread of plain packaging revealed in new report

A new report delves into health warnings and plain packaging on tobacco products, revealing a significant uptick in brand restrictions over the past couple of years. Read more

29 Oct 2021

Who are the world's in-house trademark stars? Not long left to nominate for WTR Industry Awards

There's only a short time left to ensure that the critical work undertaken by corporate trademark professionals is recognised in the 2022 WTR Industry Awards and the next edition of WTR 300.  Read more

20 Sep 2021

Brand activity propels Korea up innovation rankings as China edges nearer to top 10

WIPO has published its 2021 Global Innovation Index, with brand-related activity propelling Korea into the top five of its innovation rankings for the first time. Read more

27 Aug 2021

Delta Airlines’ delta variant dilemma; Amazon launches IP Accelerator in Singapore; EUIPO e-sports webinar– news digest

In our latest round-up, we look at Walmart announcing a new initiative to help brand advertising, a Ferrero Rocher counterfeiter being found guilty of infringement despite handling authentic goods, and much more. Read more

Enforcement and Litigation

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1 Nov 2021

Appeal court considers award of damages following assignment of trademark

This dispute over the use of certain designs on underwear raised some interesting issues such as the proof of infringement and the award of damages where the trademark at issue has been assigned. Read more

22 Oct 2021

Further blow for Crocs as 3D trademark registration is declared void on appeal

Crocs Inc has been dealt another blow in its dispute with Grupo Ramos (the Dominican Republic’s largest department store), with the general director of the Patent and Trademark Office confirming that Crocs’ 3D mark for its Cayman shoe design is invalid. Read more

14 Oct 2021

BODY LASER held to be valid for beauty parlour services

Argentina’s Federal Court of Appeals in Civil and Commercial Matters has confirmed that, although the mark was suggestive, it did not constitute a necessary designation of the services at issue. Read more

8 Oct 2021

Dispute between Evacol and Crocs over famous clogs is far from over

The Andean Community Court has replied to questions submitted by a Colombian court in proceedings initiated by Crocs against Evacol pursuant to the commercialisation of clogs allegedly infringing its 3D trademark. Read more

Government/Policy

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30 Sep 2021

Large seizure of fake toys and party decorations in exclusive Lima City district

A large amount of party decorations and toys, including Lego and Paw Patrol, were seized in a raid against a shop located in the upscale district of Santiago de Surco. Read more

17 Sep 2021

Parallel imports in Venezuela: international trademark owners beware

Although Venezuela has not been seen as a priority by many international companies when it comes to trademark protection, this could change as a result of measures implemented by the Venezuelan government to stimulate imports. Read more

9 Sep 2021

Huge raid carried out against clandestine workshop of counterfeit H&S shampoo

The biggest action of the year so far in relation to an IP and public health crime has recently taken place against a clandestine factory in which fake Head & Shoulder goods were produced. Read more

10 Aug 2021

Amazon and GoPro file counterfeit lawsuit; Aldi trolls Marks & Spencer; Manchester United to be renamed – news digest

In our latest round-up, we look at INTA unveiling a student moot court competition in the Andean Community, Canon USA updating its anti-counterfeiting consumer education, and much more. Read more

Law Firms

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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

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

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

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

IP Offices

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3 Nov 2021

Register tracker: trademark trends in Latin America (May-August 2021)

Latin American brand owners post strong foreign filing levels during mid-year period Read more

27 Aug 2021

Brazil is an important market for global brand owners, and the data is telling of this

The country has the largest trademark register in South America, and in 2019 it took a major step to improving its IP infrastructure through its accession to the Madrid Protocol Read more

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. Read more

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

Online

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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. Read more

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

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

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

Portfolio Management

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29 Sep 2021

QUINDIPAN not confusingly similar to appellation of origin ‘Café de Colombia’

The Colombian Coffee Growers’ Federation has failed to prevent the registration of QUINDIPAN in Classes 30 and 43. Its main argument was that ‘Quindi’ is similar to ‘Quindio’ - an area of great importance for coffee production in Colombia. 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

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

Trademark law

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9 Aug 2021

CCFN keeps an eye on Mexico GI regime after a year of USMCA

Focus remains on Mexico adhering to the terms of the United States-Mexico-Canada Agreement as Consortium for Common Food Names senior director Shawna Morris considers the treaty’s effects on geographical indications over the past 12 months. Read more

28 Jul 2021

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. 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