Dr. Begoña Glez. Otero
IP Researcher and Consultant
Trademarks are normally at the forefront of the intellectual property portfolio of any SME. Reasons are quite obvious. Trademarks serve as an ID through which it can be easily identified from the rest of competitors. Consumers can distinguish the products and services of a company thanks to their trademark and if eventually becomes a brand, the trademark upgrades to a trust indicator. And of course, trademarks can provide a better approach to reach a bigger and varied audience. Thus, these intangible assets become crucial for any SME when looking at internationalizing their business.
In the case of Latin American countries, many of them have recently undergone major reforms of their intellectual property laws to implement international standards of protection and also as a mean to foster further foreign investment. In the particular field of trademarks, during the last two years Mexico, Brazil, Peru, Argentina (and it seems Chile will add soon to the list) have introduced important changes that affect their trademark regimes.
To shed some light for those of you with interest in applying for a new trademark in any of these countries or to be better prepared for defending your current trademark registrations, the below list includes the most relevant changes:
- New and further adoption of non-traditional trademarks in Mexico, Argentina and Peru. Non-traditional trademarks were already admitted in Argentina, Brazil and Peru, but not in Mexico. With the latest law reforms, non-traditional signs are no longer excluded by absolute grounds of refusal in Mexico. The 2018 law has included smell and sound marks, animated, holograms and even a broad concept of the American “trade-dress”. Argentina’s last amendment from April 2019 has introduced the registrability of shapes and colours that have unexpectedly become distinct. Additionally, Peru has accessed the Singapore Treaty of the Law of Trademarks by the end of 2018. This is the first treaty to explicitly recognize non-traditional trademarks. Peru’s adhesion to this convention might have an increase in the number of non-traditional trademark applications, as some media have recently noticed.
- No more claiming of class headings in Mexico and Argentina. In accordance with the international trend, both Mexico and Argentina have introduced the prohibition of claiming a class heading when applying for a trademark. In the case of Mexico, this is also relevant when filing a declaration of use. Reason is that in the event that the goods or services for which the trademark is used cannot be clearly ascertained from the class heading, it might be necessary to re-apply for the trademark.
- Introduction of the secondary meaning doctrine in Mexico and Argentina. Acquired distinctiveness through use was not explicitly recognized as an exception to absolute grounds of refusal in both countries.
- Introduction of declarations of use in Mexico and Argentina: The use requirement is mandatory in all Latin America countries with the only exception of Chile. In general, five years of non-use constitutes grounds for cancellation. Each country has its own regulation and standard regarding on this regard. Yet, with the latest amendments to the trademark law, both Mexico and Argentina have included a compulsory submission of “declaration of use”. Failure to submit such an affidavit in Argentina will result in the presumption of non-use and thus cancelled. In the case of Mexico, the consequences of non-submission are harder, as the Mexican intellectual property office (IMPI) will automatically cancel the registration and publish it in the Official Gazette, terminating all rights. Times for submission differs too, as in Mexico this affidavit must be submitted at two points of the life of the trademark: first, within three months following the third anniversary of the trademark, counted from the date of registration; and second, at the time of the submission of the renewal application, which is every 10 years counted from the application date of the trademark. In Argentina the law indicates the submission will be due once the registration has been in force for 5 years.
- Changes in opposition proceedings in Mexico and Argentina.
In Mexico, opposition decisions need to be motivated (legal grounds and reasons of their decision) by the IMPI but they are still not binding for the office. Also, regarding the submission of evidence, the opposition must be filed with the relevant evidence accompanying. The IMPI will notify the applicants by means of the Gazette of the oppositions filed, granting them a non-renewable period of one month, to respond and present evidence. Once the evidence has been presented, the parties may submit their arguments in writing within a period of two days
In Argentina, the new opposition procedure shifts the burden of proof to the opponent. In the previous system, the mere filing of the opposition blocked the prosecution of a trademark application and the applicant had to file a lawsuit seeking that the opposition be declared groundless by the courts.
- Inclusion of bad faith registrations in Mexico. The new law expressly recognizes bad faith as a prohibition for the registration of trademarks and thus, may be invoked in opposition and/or in cancellation proceedings. The law provides a broad definition of bad faith and modifies article 151.5 of the Industrial Property Law, which establishes that for a cancellation action based on bad faith, it is sufficient to prove that the person who applied for and obtained registration in Mexico of a trademark previously registered abroad, without the consent of its rightful owner, had a direct or indirect relationship with her/him.
- Adding of Brazil to the international trademark registration route. The Brazilian Senate has finally approved Brazil’s accession to the Madrid Protocol at the end of May 2019. This will open the door to international trademark registration with multiclass applications, the possibility of co-ownership of trademarks and other rules related to the Madrid Protocol. However, there are certain concerns whether the Brazilian Intellectual Property Office (INPI) will be ready by October 2019. There are some technical and legal constrains. On the former, regarding the readiness of the INPI website, the need for specialized working force to join the office and in particular translation services. On the latter, the INPI has recently released its draft guidelines in relation to multiclass applications and co-ownership that bring on the Madrid Protocol. There is a public consultation open until June 13 and June 20 to give feedback and suggestions. If you are interested in participating, the link is here.
- Consents and coexistence agreements have been recognised as valid means to overcome relative grounds objections under certain circumstances in Mexico.
- Inclusion specific protection for Geographical Indications (GIs). Argentina had already recognized the protection of GIs from the early 2000’s. However, with the latest modifications operated in 2019, GIs that are expressly recognized by Argentina have been included as signs exempted from registration by third parties. Peru and Mexico have included the protection of GIs in their countries with the legislative reforms in 2018.
All these amendments move Mexico, Argentina, Peru and Brazil one step closer to international and European standards of protection, providing higher levels of legal certainty for those willing to open shop in any of these countries and thus, boosting business opportunities for European SMEs looking at Latin American countries as an expanse destination.
To conclude and in view of the changes, it is also strongly recommended to obtain professional assistance from a local IP expert before proceeding to register a trademark in any foreign country.
Furthermore, if you are interested in expanding your trademark portfolio to any Latin American countries and have any queries on the information of this blog entry, do not hesitate to contact the Latin America IPR SME Helpdesk. Our Helpline service provides you with professional IP advice – customized, straightforward, and free of charge- within 3 working days. Also, feel free to browse through our library for any other practical IP materials.