Latin America & Caribbean

“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.

“An outstanding response” – Chilean IP office recovery praised after second arson attack on headquarters
Still time to nominate for the 2021 <em>WTR </em>Industry Awards and <em>WTR </em>300 projects
26 Oct 2020

Still time to nominate for the 2021 WTR Industry Awards and WTR 300 projects

There is still time to nominate corporate trademark professionals for recognition at the WTR Industry Awards 2021 and in the next edition of WTR 300.

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

Latest

View all
28 Oct 2020

Criminal action filed for tampering with Huawei mobile phones

Following the seizure of Huawei mobile phones in Lima, the prosecutor has filed a criminal claim before a specialised court on the grounds that the defendant had tampered with the phones in a manner detrimental to Huawei Technologies Co Ltd. Read more

23 Oct 2020

Success for MGA Entertainment as counterfeit L.O.L. SURPRISE! toys are removed from sale and destroyed

This case shows that, in the absence of trademark registration, alternative measures can be taken against counterfeits: here, copyright law was applied to protect the IP rights of MGA Entertainment in Uruguay. 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

Family of former FIFA vice-president fails to prevent broadcast of TV series depicting 2015 corruption scandal

The court of appeal in Buenos Aires has confirmed the dismissal of a petition for a preliminary injunction filed by the son and daughter of former FIFA vice-president Julio H Grondona seeking to prevent Amazon Prime from streaming the series El Presidente. Read more

Anti-Counterfeiting

View all
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

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

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

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

Brand management

View all
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

29 Sep 2020

Brands less important to consumers demanding social improvements, report reveals

Brandwatch has released the results of a survey of consumer perception on brand purpose in the light of the coronavirus pandemic. Read more

24 Sep 2020

Computing and software companies driving positive growth in latest WTR Brand Elite results

Companies that invest in their brands and are supported by leading trademark teams have maintained their positive momentum in the latest WTR Brand Elite, registering their sixth month of stock value growth. 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

Enforcement and Litigation

View all
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

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

7 Oct 2020

Are sales necessary to show use in the Andean region?

The issuance of Interpretation 225-ip-2019 by the Andean Court of Justice is a welcome development for IP rights owners in Bolivia, as it should put an end to the onerous and unpredictable demands for evidence of use in cancellation actions. Read more

15 Sep 2020

Limitation of product description in trademark registration following non-use cancellation action

Colombia’s Trademark Office has recently clarified the interpretation of Article 165 of Andean Community Decision 486 concerning the coverage of a trademark registration following a cancellation action on the ground of non-use. Read more

Government/Policy

View all
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

8 Sep 2020

Trump trademark approved in Argentina; Beijing IP Court update; Gucci ‘fake not’ collection – news digest

In our latest round-up, we look at outrage over a WWE order about names and likenesses, Bumble announcing plans to go public, how counterfeiting remains a problem on Taobao, and much more. Read more

7 Sep 2020

Republic of Panama successfully defends itself against international arbitration claim filed by Bridgestone

The Tribunal of the International Centre for Settlement of Investment Disputes has dismissed a $20 million claim filed by Bridgestone Licensing Services Inc and Bridgestone Americas Inc against the Republic of Panama. Read more

24 Aug 2020

Innovation at the Peruvian IP office: spotlight on non-core tools and services

A representative from the Intellectual Property Office of Peru (Indecopi) shares the innovative tools and services it has launched or is developing for the future. Read more

Law Firms

View all
8 Sep 2020

Controlling Black Lives Matter: the battle to trademark a movement

A WTR investigation finds over 50 attempts to register Black Lives Matter brands in 2020 so far, with one activist telling us that legal protection is necessary “so that people can't profit from it who haven't shed blood for this movement”. Read more

7 Aug 2020

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. Read more

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. 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

IP Offices

View all
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

25 Sep 2020

GATORADE: first trademark to be recognised as notorious in Dominican Republic

Based on a large amount of evidence submitted by Stokely-Van Camp Inc, the Distinctive Signs Department of ONAPI has declared that the trademark GATORADE was notorious for sports beverages and water consumed during sports activities in Class 32. Read more

24 Sep 2020

Recent news from the Brazilian PTO: what you need to know

Trademark owners and practitioners should take note of two pieces of news - regarding the division of applications/registrations and trademark co-ownership - that the Brazilian Patent and Trademark Office recently published on its website. Read more

14 Aug 2020

Ben & Jerry’s gets political; Brazil to decide on iPhone mark; another Amazon anti-counterfeiting measure – news digest

In our latest round-up, we look at the Saudi Authority for Intellectual Property looking to regulate its IP industry, Instagram’s new Reels brand facing a trademark lawsuit, and much more. Read more

Online

View all
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. 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

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

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

Portfolio Management

View all
9 Sep 2020

Crocs Inc victorious on appeal in oppositions against 3D marks in Class 25

In a victory for US footwear company Crocs Inc, the Administrative Court of Appeals of INDECOPI in Peru has rejected Industrias Humarsa EIRL’s applications for the registration of 3D trademarks for shoes. Read more

2 Sep 2020

New Law for the Protection of Industrial Property to come into force – what you need to know

Mexico’s new Federal Law for the Protection of Industrial Property was published in the Official Gazette on 1 July 2020 and will come into force on 5 November 2020. This update highlights the key changes that trademark owners and practitioners should be aware of. Read more

12 Aug 2020

Impact of covid-19 pandemic on Argentina’s trademark practice

The major financial crisis that resulted from the covid-19 pandemic has hit Argentina particularly hard. The number of trademark applications and renewals has decreased, and trademark conflict resolution has dropped to close to nothing. However, it is not all bad news. Read more

11 Aug 2020

‘Dominican rum’ registered as denomination of origin

Six years after the Dominican Association of Producers of Rum first applied for the ‘Dominican rum’ denomination of origin, the National Industrial Property Office has finally granted the application. The denomination of origin has caused controversy, with certain rum producers opposing the application. Read more

Trademark law

View all
10 Aug 2020

Trademark damages: exploring the ever-evolving global dichotomy between civil and common law

Considering the approach to damages in the United States and Colombia, civil and common law systems appear to be moving together, rather than apart, meaning that rights holders can expect more multi-faceted, holistic decisions, which attempt to right the wrong done. Read more

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

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

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