Guest Blog Post by Mark Teuten
With legal qualifications from both the UK and Uruguay, Mark Teuten is an expert in one of the most contentious issues in international trade: the protection of intellectual property. Here he gives us an overview on how to protect your trademarks in Latin America.
1. Filing: File as early as possible for your most important brand/s. All Latin American countries have a first to file system and if somebody “pirates” your mark it is costly and time-consuming to get it back. In the meantime you will not be able to use the mark. In a recent case in Uruguay it has come to light that the ride sharing company UBER has had its mark registered by the Taxi Driver’s Union! The Union obviously saw this as a novel means of keeping Uber out of the marketplace.
Oops.
2. Multi-class applications: Take advantage of multiclass applications in those countries where the possibility exists. This means a wide range of products and services can be protected under a single registration, which reduces initial filing costs and subsequent renewal fees.
3. Use requirement: All countries in South America, except Chile, now have a use obligation, so that 5 years of non-use constitutes grounds for cancellation of a mark. For small companies not making regular sales, make sure you keep copies of invoices and that the invoices make specific reference to the mark or marks being used. Some countries are extremely rigorous in reviewing evidence of use, making it necessary to show the whole chain of transactions between the trademark owner and the eventual user in the country.
Fake sports goods, especially football shirts are everywhere in Latin America.
4. Licenses: These do not need to be recorded in order to be valid between the parties, but if they are not recorded then the licensee cannot be joined in any legal action for trademark infringement and cannot claim damages. In many cases it is the licensee who suffers more direct losses in terms of loss of sales than the trademark owner. So recordal should be considered. This is the case for licenses between independent companies and also where a local subsidiary company has been established in the country.
I spotted Trunki fakes at a major shopping centre in Uruguay (and let the UK company know…)
5. Protection of the mark post registration: In some countries enforcement is a problem because of corruption, but generally it is due more to ignorance on the part of the relevant authorities – police, judges, etc – as to the damage caused by counterfeit goods. In other countries, such as Uruguay for example, protection levels are very good and action can be taken promptly and efficiently to prevent infringements and relatively high levels of damages have been awarded.
Follow Cervieri, Monsuárez & Asociados on LinkedIn for updates on events and the odd rather interesting picture of detained containers by regional Customs Offices.
Conclusion:
Make sure your brand is protected before making any move into Latin America. Whilst there is no regional filing system under either the Andean Pact or the Mercosur, several countries are party to the Madrid Protocol. This permits international registration of a mark, so those countries can be included in a central filing under the Protocol. Otherwise, national filings are required in each country.
Mark can be contacted via email at
(note: the pictures on this post do not refer specifically to trademarks but to wider intellectual property issues to get you thinking…)
