April 9th, 2015 by Camila Cooper
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit.
B&R Latin America helps you protect your products and services in 18 countries of Latin America in just one stop solution.
Contact us on firstname.lastname@example.org for more information.
In this Infographic B&R Latin America shows you what is a trademark and what type of trademarks there are:
The World Intellectual Property Organization database to search for trademark images is now functioning
March 5th, 2015 by Camila Cooper
The new world wide database for trademarks from the World Intellectual Property Organization (WIPO) allows the user to upload an image in their digital platform in order to search for other trademarks with a similar appearance and relevant data to compare it to theirs.
Last year (2014), in Hong Kong, the annual business convention for the International Trademark Association (INTA), introduced a new application, which is unique compared to other databases, private or public that the Intellectual Property (IP) has to offer. The purpose of this new technology innovation is to let the user interact in a world wide database and have access to all the trademarks, where he will find all the logotypes, label brands and other similar images.
One more benefit of this breakthrough is that this digital platform is really easy to handle, and any person that has had a minimum interaction with computers could understand how to upload an image. Besides comparing the trademarks, the application also identifies the codes for the Vienna Classification (VCL), the names registered on the titles for the trademarks, the country where it is register and others services. The search system is fast and well-organized regardless that is has 13 million files registered and 4 million images, in 15 international and national collections.
This is a great technological breakthrough for the WIPO, as this organization has focused all its efforts to encourage innovation and creativity for the Intellectual Property Division. Since they are the primary help for 187 states that are members in this organization, the WIPO is in charge in promoting a balance in the international legal frame work to satisfy all the needs that the community has.
Colombia, Mexico and Argentina are some of the countries that have this service, their procedures are different but their objective is the same, to provide a better service to users.
In Mexico the IP authority (IMPI) have system that lets the user search for other trademarks with a similar appearance by uploading an image giving them an immediately. In Argentina the National Industrial Property (INPI) have a system that they can search for a trademark but only by identity and if they want to do a phonetic search they have to get it from the Division of Technologic and Information.
On the other hand there are two countries that do not have this system of trademark search for images online: Paraguay and Uruguay.
In Uruguay, users have to go to the National Division of Industrial property (DNPI) since they do not have any type of online search to find a similar trademarks. All the procedures that they need has to be done in the DNPI. In Paraguay there is a type of search that lets the applicants compare their images with other trademarks, but they can only do this procedure in the data base of the DINAPI, users have to go to this institution and use their system to find what they are searching for.
For more information about this procedures or Industrial Property watch out for our publications
August 9th, 2014 by Geraldine Peeters
Under the Madrid Protocol, filing for an international trademark application is made a piece of cake. A single application can be filed for two or more countries if members of the Madrid Protocol. Only two countries; Colombia and Mexico in Latin America (Brazil is heading to it) are members of the Protocol. After the procedure of the protocol, the trademark gets filed after the examination of the application. This procedure has to be replied by each trademark office in each country. If everything goes by plan the application gets accepted and filed. Or the examination can result in rejection of the application.
A notification of provisional refusal forms a declaration stating the grounds on which the particular trademark office decides that protection cannot be granted in the contracting party (“ex officio provisional refusal”) or a declaration that protection cannot be granted in the contracting party because an opposition has been filed (“provisional refusal based on an opposition”) or both.
The grounds of the refusal may be absolute or relative.
- Absolute grounds include the lack of any distinctive character of the mark, the inclusion of generic marks as a trademark, the indication of quality or quantity in the trademark, marks that carry any deceiving names, that offence morality or that are contrary to honest practices
- Relative grounds may exist when the trademark that is applied for is in conflict with an earlier mark.
A notification of provisional refusal must relate to one international registration and must be dated and signed by the trademark office making it. Refusal of registration of a trademark must be provided in writing, in three languages or English, Spanish or French, which may be done by electronic means.
If a trademark office issued a provisional refusal of an application, a trademark specialist in Colombia or Mexico will need to be instructed to deal with the rejection before the local office. When a mark is subject of refusal, measures should be taken quickly. This refusal can be caused because of several reasons, it is important to find out how and when to respond to the decision of refusal. There comes the trademark specialist to the rescue. Because it would be a mistake to assume that trademark office practices and requirements are the same in every country.
A request for reexamination can be applied for by the proprietor of the mark before the office of the contracting party that has notified the refusal. Always consult with a local agent to be certain that an application conforms to local laws and practices. B&R could help you to overcome these issues and help you to register your trademarks in the fastest possible way.
June 5th, 2014 by Geraldine Peeters
The Mexican economy is one of the heavyweights of Latin America, next in line with Brazil. For example their patent applications have seen an increase of 178 % from 1995 to 2010. Translating into a steady growth over the years. As well for trademark filing a solid growth can be noted. Thanks to several international treaties that have been signed, Mexico’s general economy resulted in a prosperity.
To encourage this growth the Mexican institute for Intellectual Property implemented various programs to improve the organization’s efficiency. During 2008-2012, the IMPI put in effect a special program for improvement of Federal Public Administration Management. Furthermore the IMPI implemented the Patent Prosecution Highway to reduce the examination of patent applications. Moreover they carried out some technological changes in the system.
For example they updated the online system to file trademarks and designs, making the system more efficient. Statistics show that the reorganization of the only filing system paid off. Using the online system is easy and efficient, filing from one point, faster, safer, and more economic. You just need to register to obtain a user name and password. Register the trademark online, pay through electronic payment, sign the application with the Advanced Electronic Signature (Fiel) and send the request. Additionally in February 2013 the Madrid protocol got into force in Mexico. The advantages of using the Madrid Protocol is to obtaining registration in a fast and efficient way.
The first trimester of 2014 showed an increase of 150% in comparison with the previous year’s online filing. Online application made up about 13% of all trademark filings. It is expected that the online filing will be taking over the traditional filing system step by step. For industrial design other facts count, online filing is decreased. This probably due to the fact that designs are more complicated than trademarks are to file online.
Mexico has taken positive steps on Intellectual Property Rights. Innovation and the enforcement of IP rights are essential to economic welfare, competitiveness, growth and development.
IMPI: Marca en Linea
April 10th, 2014 by Geraldine Peeters
Mexico is one of the big players in the Latin American region. They can be acknowledged as an economically advanced nation. They were the first to enter the free-trade agreement with the USA in 1994. Also in terms of intellectual property the country is doing great. They recognized the value of investing in knowledge and information. Resulting in patent as well the trademark applications that keep increasing every year.
Although they are doing great in IP, and valuing the asset of intellectual property, there are some matters in which they fail to comply with international treaties. The regulation of geographical indications is one of these flaws in the IP protection of Mexico. A geographical indication is used as a sign on goods that have specific qualities and are ascribed to the specific geographical region. A geographical indication informs the consumer about the origin of a product and about the specific characters thanks to the place of production. “Geographical indications are protected in accordance with international treaties and national laws under a wide range of concepts, including special laws for the protection of geographical, indications or appellations of origin, trademark laws in the form of collective marks or certification marks laws against unfair competition, consumer protection laws, or specific laws or decrees that recognize individual geographical indications”, although the WIPO. An appellation of origin is a special cases of geographical indication. In special cases the quality or characteristics are due exclusively to the geographical location. The GI can be seen as a more general concept without real protection. AO is used in Law and protected by the Lisbon Agreement and other international treaties. The importance of GI is seen in the marketing potential. Consumers pay more and more attention to the origin of their products, this developed a specific market. The GI recognition stands for quality, authenticity and a lot of times for a traditional knowledge and cultural expression. This brings prosperity to the region in terms of exploitations and employment. For this matter it is important to protect the GI and prevail unauthorized use to avoid a loss of quality. Which can result in a deterioration of the GI as a brand and all the economic consequences that follow.
Rules for geographical indication are not included in the Mexican legislature. In the Mexican Law for Industrial Property under article 90 you can find a list of what may not be registered as a trademark. In article 90 X of the IPL it states that “Proper or common geographical names and maps, and also gentile nouns and adjectives, where they indicate the origin of the products or services and may cause confusion or error regarding such origin “are prohibited. The Mexican state doesn’t allow the registration of a trademark with geographical names or maps that indicate the origin of a product or service and may cause confusion about the origin. Neither are the rules about appellation of origin fully covering the topic. Whether a sign is recognized as a geographical indication is a matter of national law. Which the Mexican law doesn’t include. But currently there is a new law proposed by the Mexican legislature. This law is meant to protect consumers and producers. The Mexican culture is very rich and one that is known all over the world. With proper legislation one can enjoy the fruits of their rich culture. The law for geographical indications and appellation for origins will try to comply with the international treaties. The law proposes specific rules for registration and use of geographical indications and appellations of origin. Moreover it will impose sanctions in case of illegal use.
In Colombia we had recently the case of cheese nomination. With the entry of the free trade agreement with the European Union the Colombian market had to comply with the international norms. An example is the cheese-case. A geographical indication may not be used if the producer is not authorized. Better said, if the good is not produced in the area as nominated by the indication you cannot use the geographical indication. This was the case of a lot of cheese nominations on the Colombian market. Indications as Mozzarella, Parmesan or Camembert cheese could no longer be used by the producer. The SIC in Colombia judged that producers had to change the names they put on the packages. These indications could no longer be used by the producers resulting in a change of names on the packaging. The cheese could still be produced but not commercialized under these nominations. These names can only be put on the packages when produced in these regions respectively Italy or France. The international treaties provide sanctions that can range from court orders preventing the unauthorized use to fines and imprisonment.
In Europe the use of geographical indications and appellation of origin is far more integrated then in the Latin American region and covered by a stronger protection. A great part of the economy is based on products protected under these IP laws. One of the most famous examples can be found in France, in the Champagne region. The famous sparkling wine Champagne can only carry the name Champagne if produced in this region. The name Champagne carries out a great prestige and adds an economic value to the product. The region adds the value to the product. Thanks to the intellectual property rights that the product owns, it can be economically exploited. Since the treaties with European Union the Colombian law needs to confirm to this strict European uses of indication of origin and appellation of origin. Although the Colombian culture is rich in local products the exploitation in isn’t that elaborated. The Colombian coffee is one of the most famous export products that now are protected. In 2005, “Café de Colombia” was recognized as an appellation of origin in Colombia. The Colombian Coffee, ‘Cafe de Colombia’, became the first product protected by geographical indication registered in the European Union in 2007, that was not an European product. Following with two new appellations of origin for coffee from specific regions of Colombia that were recognized in 2011. A step in the right direction although more could be done to protect the various products Colombia has to offer.
December 10th, 2013 by Danny Grajales Pérez y Soto
The Trans-Pacific Partnership Agreement –TPP– is the most ambitious free trade agreement under negotiation at this moment, with 12 negotiating parties in the Asia-Pacific área including Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. This includes 3 major Latin American economies (Chile, Mexico and Peru), all of them also parties to the Pacific Alliance negotiations, and 2 of the top three economies in the global economy (The US and Japan). Although the agreement includes provisions on many trade-related topics, it has become notable for the controversy surrounding its Intellectual Property provisions.
The confidential draft of the agreement was leaked by the Wikileaks organization on November 13th 2013, and has lighted up the discussion regarding Trademarks, Patents, Copyrights and Geographical Indications provisions of the. Although most of the controversy has focused on Patents, the section on Trademarks has also stirred both praise and criticism from IP experts. Although the final text of the agreement is yet to be seen, the outlines of the final provisions on Trademark Law are already visible:
Non-traditional Trademarks. The very first provision of the agreement’s section on trademarks is the prohibition of requiring “visual perceptibility” for the registration of trademarks. This would make visual and sound trademarks available for registration in all member countries, such as the roar of the MGM lion or the “I’m loving it” jingle of the McDonald’s corporation.
Collective and Certification Marks. The agreement states that collective and certification marks shall be protected under every country’s trademark law.
Use of Identical or Similar Signs. The agreement provides that the owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner’s consent from using in the course of trade identical o similar signs, for goods or services that are related to those good or services in respect of which the owner’s trademark is registered.
Well-known Trademarks. The recognition of a trademark as a “Well-known trademark” can no longer require that trademark to have been previously registered.
Opposition and Cancellation. All member countries shall provide an opportunity to oppose the registration of a trademark or to seek cancellation. According to this draft, the agreement will not make it mandatory to have an opposition procedure (which Mexico lacks) as long as cancellations are allowed.
Examination. Refusal of registration of a trademark must be provided in writing which may be done by electronic means.
Electronic Trademarks System. All member countries must provide a system for the electronic application and maintenance of trademarks and have a publicly available electronic information system. This is a requirement that has been already met by the three Latin American negotiating parties of the TPP. Mexico’s online platform is specially notable for its flexibility and the openness of its databases, which are shared with all major international databases.
Non-Mandatory License Recordal. The recordal of licenses may not be required to establish the validity of the license, as a condition for use of a trademark by a licensee, or as a condition for the right of a licensee to join infringement proceedings initiated by the holder.
Madrid Protocol. All members of the TPP will have to ratify and implement the Madrid Protocol. This would mean that Chile and Peru would have to modify their legislation to include the possibility of Madrid Protocol trademark registrations.
The International Trademark Association –INTA– one of the most influential institutions on Trademark Law Practice in the world, has been actively advocating for the negotiating parties of the TPP to conform by their Model Free Trade Agreement, which is meant to be a guide to what would be desirable trademark provisions in free trade agreements. Furthermore, INTA has already started training of PTO officials in Mexico as part of partnership programs focused of non-traditional marks and the Madrid Protocol, in order to prepare government officials for the changes to come