Review of the Article: “Trademark Protection in Latin America” by Raquel Flanzbaum*
By Ojam Bullrich Flanzbaum
* Article published in the Tokkyo News, the only daily newspaper in the Intellectual Property world in Japan, created in 1963. Published on October 20, November 1, December 2 and December 3, 2024.
The author begins by mentioning that, in order to obtain an adequate trademark protection in Latin America, it is important to examine the main economic blocs in their various integration phases, as well as their common IP provisions.
The Andean Community of Nations, the Mercosur and Central America –as an economic bloc– are the main areas considered in this analysis, and Decision 486, the Protocol of Mercosur and other regional free trade area agreements –including IP provisions– are the main regulations addressed.
The author also explains the role of the Madrid Protocol in the region.
As a second step, the article delves into some basic considerations, important to understand how to protect trademarks in Latin America. Some frequently asked questions are also answered to help this analysis.
In line with the above, the author explains three basic principles in the region: territoriality, attributive system and first-to-file system.
The main frequently asked questions examined in the article are the following:
- How is the registration procedure?
- How long does the trademark protection last?
- How long does it take to obtain a trademark registration?
- Is there a use requirement to register a trademark?
- What kind of signs can be protected as trademarks?
- When can a registered trademark be renewed? Is it necessary to file an affidavit of use? Is there a grace period?
- Which are the documents and legalization requirements necessary to file and prosecute trademark applications in the region?
Nineteen jurisdictions are mentioned in all responses, that is, the countries that make up Central America plus South America and Mexico, as well as Cuba and the Dominican Republic in the Caribbean region (these islands are considered part pf Latin America in terms of history as they were Spanish colonies).
Regarding the class system in the region, namely the multi-class system and the single-class system, the author examines which country follows each and what are their advantages and disadvantages. She considers particularly the case of Brazil where, even though a single-class application system exists, the Brazilian Trademark Office is accepting multi-class applications coming as a consequence of Brazilian designations. This can pose a problem because, if an office action issues in one class, all other classes are suspended until the objection is overcome.
The author also explains whether it is a requirement, in the different jurisdictions, to translate the signs written in an alphabet other than Latin, and (i) whether these signs are considered device marks, and (ii) whether searches by meaning are mandatory.
The author also comments on how each jurisdiction has regulated the cancellation of a trademark registration due to non-use. In all the countries of the region a registration can be cancelled if the trademark was not used in a given period of time.
In brief, the author mentions that trademarks must be registered country by country, and that there is a real common IP regulation in the Andean Community of Nations, applicable to the countries belonging to this bloc: Colombia, Ecuador, Peru and Bolivia. The Madrid Protocol has to be considered as well when protecting trademarks in Colombia, Mexico, Brazil and Chile.
In her view, if the Madrid Protocol is used, it is highly advisable that the trademark owner should hire alocal attorneyto monitor the specific designation in order to avoid future problems (for example, if a cancellation action against a designation is filed and this action is only notified to the trademark owner through a local Bulletin, this lawyer will detect it).
Availability searches are also advisable and, when the sign is written in an alphabet other than Latin, it is important, if possible, to state the meaning of the word or sign in the application form.
In the author’s opinion, although some markets in Latin America seem to be small, such as Uruguay or Paraguay, it is better to try to obtain registration in these jurisdictions, as this will help to fight against piracy in the region.
Specifically, the author finally mentions that piracy is an issue in the region and that preventive measures (for example recording the trademark registration with Customs), will be useful to detect infringing products, as this will allow the officers in charge to suspend the importation or exportation of these products.
Regarding the judicial remedies, the author points out that infringement lawsuits can be followed at a criminal court or at a civil court in all jurisdictions. Injunctions can also be filed in both types of claims as the TRIPs Agreement, Sections 50 and 51, is applicable.
In conclusion, she mentions that trademark protection is important not only to commercialize products and services but to prevent piracy in the region as well.
If you so wish, please feel free to contact Raquel Flanzbaum at rflanzbaum@ojambf.com regarding this subject.
