Puerto Rico

Rising enforcement efforts show an increasing concern for IP rights in the Caribbean

Recent efforts by US Customs and Border Protection, the Jamaica Constabulary Force and INTERPOL are a stark warning to counterfeiters in the region – particularly where fake goods are linked to organised crime and terrorism.

Rising enforcement efforts show an increasing concern for IP rights in the Caribbean
From billboards to influencers: navigating new advertising rules across the Americas
2 Jan 2020

From billboards to influencers: navigating new advertising rules across the Americas

Trademark experts offer insight into the advertising regimes in their respective jurisdictions and, crucially, how brands can avoid falling foul of the law.

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23 Jul 2015

Trademark Office approves one, two and three-letter marks for publication

The Puerto Rico Trademark Office has recently approved for publication a number of trademarks consisting of arbitrary arrangements of one, two or three letters. Due to their arbitrary nature, one, two or three-letter marks qualify for trademark protection without need for proof of secondary meaning.

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3 Dec 2014

District court rules in ORIENTAL case on remand from First Circuit

In <I>Oriental Financial Group Inc v Cooperativa de Ahorro y Credito Oriental</I>, on remand from the US First Circuit, the District Court for the District of Puerto Rico has determined that the mark COOP ORIENTAL did not infringe the ORIENTAL mark, even though both marks are directed at financial services. The opinion shows that legally mandated terms such as '<I>coop</I>' or '<I>cooperativa</I>' may serve to create distinctions in otherwise identical marks.

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7 Nov 2014

Godly trademark feud knocks on federal court's doors for the second time

An intense quarrel over the name Assemblies of God and its Spanish counterpart, <I>Asambleas de Dios</I>, has landed in the US District Court for the District of Puerto Rico, in a case transferred from a sister court in the Western District of Missouri. In 2002 a previous lawsuit had been filed by the same plaintiff against the same defendants.

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20 Oct 2014

Appeals Court discusses nature of franchise agreements

In <I>Díaz v Pérez</I>, which concerned an employment claim against the Bayamón Cowboys basketball team, the team manager and the Basketball League, the Appeals Court of Puerto Rico has discussed the nature of franchise agreements. Among other things, the court held that a franchisee benefits from the use of a known trademark while retaining independence and, at the same time, receiving assistance and training from the franchisor.

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Enforcement and Litigation

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3 Sep 2014

Musical group sues rapper for dilution by tarnishment

Musical group Atención Atención Inc, which specialises in the creation of educational and entertainment content for children, has sued rapper David Sánchez Badillo, better known as Tempo, for trademark dilution by tarnishment. According to the complaint, Tempo made use, without authorisation, of the plaintiff's federally registered trademarks on one of his music tracks.

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19 Jun 2014

Court of Appeals issues decision on certification marks

In <I>Compania de Turismo de Puerto Rico v Oasis Inn Corp</I>, the Court of Appeals has confirmed an order enjoining a lodge from using the mark PARADOR as part of its commercial name. The PARADOR mark is owned by the Tourism Company of Puerto Rico, which certifies lodges into the Parador programme. Among other things, the court held that laches could not prevent the Tourism Company from exercising a legal right and obligation.

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12 Jun 2014

Conception of idea for mark does not constitute use required to acquire rights over mark

In <I>Colón-Lorenzana v South American Restaurants Corp</I>, the US Federal Court for the District of Puerto Rico has dismissed the plaintiff’s claim that the defendant had registered the mark PECHU SANDWICH without his consent, in a knowingly fraudulent manner. Among other things, the court held that the conception of an idea for a mark or solicitation for advertising of a mark did not constitute the use required to acquire rights over a mark under the Lanham Act.

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Edwin Tabaro
Managing Partner
Kampala, Uganda
KTA Advocates