TMview steps in Latin America

Teresa Colaço
Quality Manager – INPI Portugal

The idea behind the creation in 2010 of TMview, the online trademark consultation tool currently managed by EUIPO -formerly known as the Office for Harmonisation in the Internal Market (OHIM)-, was the incorporation of the trademarks from around the EU network into its database, allowing easy and effective search among the participating EU national offices and EUIPO.

TMview was launched with trademarks from Benelux, the Czech Republic, Denmark, the United Kingdom, Italy, Portugal, the OHIM and the World Intellectual Property Organization (WIPO)- around 4 million trademarks in total, being Greece the last European country to join in 2013.

As regards Latin America, the Mexican integration in 2013 became TMview’s first steps into the region. Since then, five more LA countries have joined this platform: Brazil (February 2016), Colombia (June 2017), Peru (October 2017), Argentina (November 2017) and Chile (April 2018). The entry of these six countries of Latin America, enriched this database with more than 9.3 million trademarks, and currently, they represent over 20% of its content.

TMview provides access to more than 47, 5 million trademarks from 65 participating offices, providing valuable first-hand information about both trademarks applications and registrations in different economies and regions.

European SMEs seeking to internationalize their business will find below some key benefits of using the platform that may increase legal certainty and help to better plan their strategy on IPR protection:

  • Accurate and reliable information is provided at any time (online) since the respective/corresponding national Office updates it daily.
  • The service is free of charge and is available 24 hours a day, 365 days a year.
  • Data is available in more than 35 languages, including all the official EU languages.
  • Materials are ready for printing and/or downloading, so that users could bring them to legal administrative procedures and court proceedings in case of conflict or infringement, as well as before customs authorities.
  • Easy-to-use and all-in-one tools: directly linked to the EUIPO and national databases through a unique platform, providing first-hand information from the official registers.
  • Provides online knowledge database with articles, tutorials, and support for users.
  • Enables an easy and efficient search through all TMs: national, regional, and international.
  • Enables companies to know what products and services its competitors on the market are protecting.
  • Allows users to know the availability of their ideas for a trademark name.
  • Due to its constant updating, users can check both the updates on trademarks legal status and the deadlines for opposition proceedings.

As Miguel Angel Margáin, Director General of the Mexican Intellectual Property Office expressed in June 2013, “Users can search for trademarks which are being examined or look at trademarks that are registered at international level which helps them to analyse and monitor applications in IP offices which form part of TMview” (in European TDMN News 02/2014).

It is also important to mention the existence of the DesignView database, which collects the same type of information as the TMview but related to registered designs. It is worth pointing out that unlike Europe, the majority of Latin-American countries’ design laws provides no protection for unregistered designs. Only three countries in that region provide such protection: Panama (2 years), Nicaragua and Guatemala (3 years) in a similar way to the European Union. Therefore, European SMEs interested in operating in Latin America should not rely on unregistered protection of their designs in this region.

In conclusion, EU companies that are considering to internationalize their businesses should not forget that, to properly manage and develop their IP portfolio, they have at their disposal a variety of means devoted to reduce the risks and doubts that may arise when entering new markets. It is advisable in any case to carefully plan and seek IP expert assistance to ensure a strong protection of the intangible assets.

Beware of fraudulent invoices regarding your patent application or your trademark registration

INPI Portugal
Instituto Nacional da Propriedade Industrial

In the last years, we have noticed in Europe an increase in the number of fraudulent invoices being sent to users relating to trademarks or patents applications. If you receive an invoice that is unexpected or from an unfamiliar entity, please contact your Industrial Property (IP) Office or attorney before paying the invoice.

While many of the fraudulent invoices are sent via regular mail, some are sent by email. In Brazil, for instance, users are also receiving phone calls from people pretending that they belong to the legal department of the IP Office and that the applicant is at risk of losing his trademark. Typically, the invoices seek payment for various services related to applications: registration fees, filing fees or monitoring fees.

Such invoices —which are intentionally designed to look like real invoices from an official source— have nothing to do with the processing of your patent application or trademark registration, and the services they purport to provide have no value beyond the services already provided by your national, regional office or an international organization, such as WIPO, EPO or EUIPO.

National Patent and Trademark offices, as well as relevant international organisations and user associations, are working to inform users about this trend and to help them avoid falling for such scams. For example, warnings have been posted on several websites that include names of known perpetrating “companies” and examples of misleading letters. The Trademark International Index and Trademark Info Corp. became very popular in Mexico a few years ago.

As regards criminal proceedings, the EUIPO closely cooperated with the Swedish public prosecutor’s office who brought to Court an extensive scam scheme principally targeting EUTM owners. The Court passed four custodial sentences ranging between two months and one year for four of the defendants for attempted aggravated fraud.

The more this practice spreads over the Latin American countries, (in Brazil has some significance), the more important it is for applicants of international trademarks or patents from these countries to be aware of this situation.

If you are a PCT or an International Trademark applicant and you receive one of these invoices, first check WIPO’S warning page and see if it matches any of the examples. If not listed there, send an e-mail to WIPO with a copy so it can be added to the collection.

If you registered by yourself, you are also recommended to contact the National Intellectual Property Office involved to be sure that there is no scam and make a complaint, if afirmative. Most of them provide assistance on this issue (i.e. Brazil), but if you want to know more about what to do in case you receive one of those invoices, do not hesitate to contact our free of charge, confidential, fast Helpline. Our experts will be happy to support you.

And most importantly: Do not pay!

Madrid System governed only by the Madrid Protocol

INPI
Instituto Nacional da Propriedade Industrial

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks — the Madrid Protocol — is one of two treaties comprising the Madrid System for international registration of trademarks.

The protocol is a filing treaty and it provides a cost-effective and efficient way to ensure protection for marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.

The Madrid Protocol also simplifies the management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau.

With the recent access of Algeria to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the filing and management of international registrations will be simplified. Signatory to the Madrid Agreement since 1972, the country was the last of the 95 members of the Madrid System which was not party of the Protocol.

This represents a milestone for the Madrid System. From now on all the international registrations of marks will be exclusively governed by the Madrid Protocol.

As explained by WIPO, “An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the trademark Office of a designated country within a specified period (12 or 18 months), the protection of the mark is the same as if it had been registered by that Office. The Madrid system simplifies greatly also the subsequent management of the mark, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Further countries may be designated subsequently.”

CIBEPYME – The platform to support SMEs in their processes of internationalization to Latin America

INPI
Instituto Nacional da Propriedade Industrial

Created in the scope of the Ibero-American Program of Intellectual Property, the platform CIBEPYME is available to SMEs since 28th of October 2015.

This platform aims to support SMEs who intend to internationalize their products and services in the countries of Latin America.

The main objective of this platform is to enhance the use of intellectual property and to promote the effective management of intangible assets by SMEs, providing information, services and free assistance (through the inquiry form).

The CIBEPYME also allows the sharing of best practices, awareness campaigns, as well as case studies of companies that bet in the registration system, and also the dissemination of news and activities in each country.

At the moment, the information is only available to the countries belonging to the Latin American Program of Industrial Property (IBEPI http://www.ibepi.org): Argentina, Brazil, Colombia, Costa Rica, Ecuador, Spain, Mexico, Paraguay, Peru, Portugal, Republic Dominican Republic and Uruguay.

The content of this website is in Spanish (in Portuguese only for Portugal and Brazil micro sites). The information will also be available in English soon.