Latin America & Caribbean

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.

The notorious markets you need to have on your policing radar
Notorious Markets List 2020: USTR resists call to include US platforms as Alibaba and Amazon remain
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.

Tracking fakes: revealing the most popular regions for buyers of counterfeit goods
13 Jan 2021

Tracking fakes: revealing the most popular regions for buyers of counterfeit goods

New research from WTR reveals where people searching for counterfeit goods are residing, uncovering a significant difference between brands.

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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

4 Jan 2021

Major police raid in clandestine workshop finds counterfeit packages filled with detergent powder of unknown origin

In this significant enforcement action, the Peruvian police seized counterfeit packages bearing several registered trademarks and logos, including Procter & Gamble’s ARIEL mark. Read more

Anti-Counterfeiting

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22 Dec 2020

Preparation and collaboration: the cornerstones of any successful brand strategy

Carnot Laboratorios general counsel Antonio Donatlán Herrera reveals how his team handled the IP intricacies of a multinational brand launch in an industry where the threat of counterfeits is a threat to human health. 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

11 Nov 2020

Nike victorious in long-running criminal trial against counterfeiters

This decision of the Peruvian Criminal Court may provide a precedent for the acceptance of technical reports and affidavits filed by the aggrieved parties’ ex parte experts in future trials. Read more

6 Nov 2020

Gap criticised for election tweet; INTA Annual Meeting looms; EUIPO cooperation success – news digest

In our latest round-up, we look at Volkswagen being the most tattooed car brand, INTA collaborating with Nigeria for IP training, Cambodia destroying counterfeit medicines, and much more. Read more

Brand management

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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

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

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

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

Enforcement and Litigation

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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

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

9 Dec 2020

Double examination of trademark applications: National Trademark Office develops worrying new practice

A new practice initiated by Colombia’s National Trademark Office is causing concern in the trademark community, as second-instance decisions - which, according to the law, cannot be subject to further legal remedies - are no longer the final decisions in the administrative process. Read more

3 Dec 2020

Partial cancellations under the new Mexican IP law

One of the most significant changes brought about by the new Federal Law for the Protection of Industrial Property is the introduction of partial cancellation actions, which should bring several benefits to the Mexican IP system. Read more

Government/Policy

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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

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

16 Nov 2020

“We remain strong” – INTA CEO pledges togetherness as 2020 Annual Meeting begins

The 2020 INTA Annual Meeting officially kicked off earlier today, with the association’s CEO declaring that “not celebrating the Annual Meeting has never been an option” and declaring that 2021 looks “bright” for the industry. Read more

28 Oct 2020

“An outstanding response” – Chilean IP office recovery praised after second arson attack on headquarters

The Chilean National Institute of Industrial Property has suffered a second arson attack in less than a year, with national director Loreto Bresky describing it as a “hard blow” for the agency. Read more

Law Firms

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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

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

16 Oct 2020

Korean IP Office counterfeit crackdown; Trump fakes memo; Trinidad and Tobago joins Madrid System – news digest

In our latest round-up, we look at Nestle beginning a water brands sale, the Pakistan IP Office publishing a list of prospective geographical indications, and much more. Read more

16 Oct 2020

Fighting counterfeits during a pandemic, monetising brands and picking external counsel – takeaways from the second week of WTR Connect

The highlights from the second week of WTR Connect include insight into the record-breaking filing levels in key Asia-Pacific jurisdictions, how Microsoft’s tech philosophy spurs the trademark department and strategies to bring down enforcement costs. Read more

IP Offices

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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

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

13 Nov 2020

Mexico continues to be an IP leader in Latin America

The country has an advanced system that is attractive to its northern neighbours. It also has an impressive roster of brands that are of significant value in the region. Read more

Online

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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

9 Oct 2020

Dispelling counterfeit myths, prioritising budgets, navigating political conflicts – WTR Connect week one takeaways

We present highlights and learnings from the first week of WTR Connect, including how to prioritise enforcement budgets, fight fakes on Weixin and navigate brands through turbulent political times. Read more

17 Sep 2020

Innovation at the Chilean IP office: spotlight on trademark tools and services

In the latest in our regular series, representatives from the National Institute of Industrial Property of Chile exclusively share information on the innovative tools and services that have launched or are being developed for the future. Read more

14 Sep 2020

The impact of covid-19 on intellectual property and the digital landscape

With online shopping and communication booming, the role of e-commerce companies is coming under greater scrutiny. The global pandemic could provide an opportunity to transform the ways in which they are regulated. Read more

Portfolio Management

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18 Nov 2020

Likelihood of confusion: the business field of the parties is key

Over the past few years, Argentina’s courts have developed a new practice for the assessment of the likelihood of confusion between two trademarks registered in the same class, as demonstrated by the recent decision in Assa Abloy AB v Alvarez. Read more

2 Nov 2020

Puma successful on appeal to the Supreme Court in PUMAKATARI case

This decision of the Chilean Supreme Court is significant in that it establishes that the protection of famous trademarks prevails over the principle of specialty. Read more

15 Oct 2020

New mandatory precedent concerning the assessment of evidence in non-use cancellation actions

The Administrative Court of Appeals of the Peruvian Trademark Office has held that the same evidence cannot be used to prove the use of two or more trademarks which contain a common element but have been registered separately. Read more

14 Oct 2020

Venezuela IP office renders its own resolutions null and void

The Venezuelan IP office has rendered a set of its own resolutions - published earlier this year - null and void on the grounds that they had been made by an incompetent authority and were therefore unconstitutional. Read more

Trademark law

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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

23 Sep 2020

The pros and cons of industrial designs, trademarks and trade dress

Having a distinct look is the best way for a product to stand out from the competition, but as Mexico awaits further guidance on new trade dress provisions, how should brand owners choose the right protection for their designs? Read more

Find an expert

Susan Okin Goldsmith
Partner
East Brunswick, NJ, United States
McCarter & English LLP