Experience is, in most of the cases the best teacher. Visit our Case Study section to take advantage from the experience from other European SMEs experience when managing their Intellectual Property in Latin America and to benefit from their learning outcomes to prevent taking wrong decisions.


Case studies:

Title Description
Commercialising a new method in Chile

BLISSAKKO is a French SME active in the field of healthy living created by Lucas, a French lifestyle coach, and Juan, a Spanish entrepreneur.

Its story started in 2010 when Lucas developed a 30-step method to live a more mindful and healthy life and published a book describing this method in English, German and French. Building on the book’s success in Europe, Lucas teamed up with Juan to start a company helping people to implement the method. On this model, two health centres were opened in Paris and Frankfurt and “BLISSAKKO” was registered as a European Union trade mark in view of future openings in other large European cities.

In parallel, Lucas’ book was translated into Spanish. The idea was to reach a wider community not only in Spain but also in Latin America, with a trial period in Chile and the launch of the first Blissakko health centre in Santiago. Before going further, both founders were keen on ensuring that their method would be well-protected in Chile.

Beware of Brazilian legislation when negotiating your R&D agreement

QTechnology is a Portuguese SME dedicated to selling computer software. The company, interested in improving one of its software products, contacted a Brazilian University, whose department of computing has established a strong reputation in artificial intelligence.

The company and the University concluded a R&D agreement, by which the University was in charge of performing research in the area of face recognition with the financial support of the company. In addition, the company provided the University with access rights over the source code and know-how of the computer software to be upgraded.

Six months later, the University informed QTechnology that they had made improvements on the face recognition system by modifying what existed and thus the program had become consistent and reliable. The University claims that the improvements are theirs and that they were already negotiating with a local institution to use this system. 

QTechnology was puzzled since the section ‘use and exploitation of intellectual property’ of their R&D agreement establishes that the company would own the intellectual property rights of the project results. Moreover, the same section of the agreement clearly stated that the company had granted the University access rights to the computer system in face recognition for the purpose of carrying out the project, but not for other purposes. 

Patent infringement in Mexico

Freiheit, a German SME in the communication sector, filed on July 2018 a patent application before the European Patent Office (EPO). The patent, that presented an innovative communication device with unique interoperability functionalities, was sucessfully registered in all the European countries designated by the company.

Freiheit, aware of the business opportunities offered in Latin American in the telecommunication sector, decided to attend two trade fairs, one in Colombia and the other one in Mexico, in order to evaluate potential partnerships and trade opportunities in this region. In addition, the company conducted a feasibility study to make sure that no similar patent was already registered in these countries. The research provided a positive result for the company: to the date, no patent registration had been filed.

The response in both trade fairs was fantastic and therefore the company decided to file a patent application before the national offices of these two countries. However, when preparing the patent applications the German company discovered that a Mexican competitor, who attended the same trade fairs, had copied their invention and already filled a patent application in Mexico.

Unauthorised use of Trademarks in Mexico

TeleHolly is a Mexican television network broadcasting content on celebrities, music, television and entertainment in general. This company owns the well-known trademark TeleHolly, registered in Mexico for entertainment, television programming and telecommunication services.

Septtris, a small Italian company specialized in organizing all kinds of social and entertainment events, produced a series of videos and photos to promote their services in Mexico. The Italian company uploaded on their Facebook, Instagram and Twitter accounts a number of videos and photos of the parties they have organized, featuring interviews with the guests and participants. The interviewers were holding microphones with the distinctive TeleHolly logo, as if TeleHolly was covering the event.

One month after broadcasting the campaign, Septtris received a very aggressive cease and desist letter (C&D) from TeleHolly, giving them 24 hours to remove the videos and images in question and informing that legal actions could be taken. The Mexican television company, rather than seeking economic compensation, was focused on repairing their corporate image.

 

Trademark Opposition in the Andean Community

Trisk Motor AG., a German SME producing spare parts for vehicles, is introducing its business in the Latin American market. In order to do so, they registered their trademark “TriskMotor” (Wordmark) in Peru, Argentina and Brazil within Class 12 of the Nice Classification.

On the other hand, Auto Pirámide S.A., a company from Ecuador devoted to the commercialization of national spare parts for vehicles, with great success across the country, filed an application for the  registration of the wordmark “TryssMotor” in Ecuador to identify goods within Class 12 of the Nice Classification.

As soon as the trademark application was published by the IEPI (Ecuadorian Trademark Office), the IP lawyers of Trisk Motor detected it and informed their clients about a possible likelihood of confusion between the two marks.

Copyright Infringement in Mexico (II)

Iguana Ltd. is a UK-based communication agency that was willing to renew the corporate identity of Guanajuates, a client in Mexico. As a first step, they decided to redesign the company’s logo of the Mexican enterprise.

Tired of unsuccessful, time consuming exchange of drafts that largely exceeded what was budgeted, the CEO ordered the graphic designer of the European SME to stop spending additional time on the design, as it would be impossible to charge the customer for it.

The Mexican company was sent a final version of the logo, which included a fancy font that was finally accepted.

Software protection in Brazil and Mexico

GIS – Gestão Integrada de Seguros, is a Portugal-based SME with more than 30 years of experience in the development and commercialization of software products for the insurance market. GIS enjoys a well-established commercial and implementation network which extends to Spain, France, Poland and Portuguese-speaking African countries.

Attracted by Latin America as a key market for its software products and services, GIS decided to expand its business to Mexico and Brazil, by means of local partnership.

Supported by the in-house legal expert, the Portuguese SME applied for trademark protection in Brazil (trademark and IP protection strategies were EU based only) and started negotiations with potential local partners, but several problems arose, such as:

  • Tricky local regulation
  • IP Rights registration backlog
  • High software importation taxes
  • Very slow response time by the Brazilian IP Office
  • The requirement of the Brazilian local partner to get access to the full source code instead of just getting access to the part of the code that requires adjustments for its implementation in the Brazilian market

The miscommunication and lack of follow-through by both parties leaded to the suspension of the negotiations by the Brazilian partner until the Trademark was granted.

App protection in Chile

Flonder, a Spanish SME that created a product delivery app, was planning to expand to Chile, Colombia, Brazil, Mexico and Peru at the lowest cost.

The Spanish company decided to enter in the Latin American region by collaborating with a local partner. Negotiations with a Chilean company went well and they agreed on sharing the distributors channels and, thus, publicly announced that Flonder would start operating in the Latin American country on the 15th of September, for which a series of promotional events were organized.

The Spanish company had an in-house legal expert with experience on IP registration in Europe, where the company’s name was recently protected as an EU trademark. However, with regards to Latin American different IP systems, they found that formalities varied significantly from country to country. Flonder was not sure about how to proceed in time for the announced date. A risk of becoming exposed to trademark trolls existed.

Practical measures for enforcing your Software copyright in Argentina

Illusion Machine, Ltd. is a leading Irish SME firm specialised in providing advance software products for audiovisual and multimedia industries.

This Irish company, which operates an online shop, offers on its website 3-month trial versions of its software products in order to give their potential customers the chance to try its products and then decide whether they are interested in buying its full version.

In order to avoid and detect potential software infringements, the company shields its product with anti-piracy software. Among them, Illusion Machine includes a technological solution that allows them, on the one hand, to track and report unauthorized usages after the expiration of the free trial provided, and on the other hand, to obtain the IP address of the computer where the software has been downloaded. These safety measures were activated once the free trial version was downloaded and the customers had accepted its terms and conditions, including the privacy conditions, which allow the company to collect data from the user´s computer related to license compliance and optimization.

In 2018, Illusion Machine detected an increasing number of cases of manipulation of trial versions of its software products in Argentina that were committed by small film production companies.

Taking Down Counterfeit Products on Amazon Mexico

Boost2Party S.L. is a Spanish SME dedicated to online selling of costumes, accessories and party decorations. With their own online shop and running in 10 European countries, they decided on expanding to Latin America. First in their list was Mexico, and to save costs, they opted for using the online market platform, Amazon.

Following a similar IP strategy as in the EU, they applied for a trademark in Mexico and extended their surveillance to this country. A couple of months after, they found on Amazon Mexico a list of counterfeit costumes and accessories that looked almost identical to theirs.

Unregistered Designs

Laranjon is a European SME devoted to the fashion industry operating from Italy. The marketing department of the company launched the new spring-summer campaign. New merchandising was created for this purpose, including a pen with a new, stylish and very attractive design for promotional purposes.

Upon internal consultation with their in-house legal staff, Laranjon decided to proceed as usual and not register the pen’s design created by its team.

A few months later, the Italian SME was surprisingly invited to join the I-Design competition, which was taking place in Montevideo in one month. 

After a few months, the company discovered that the pen’s design was copied, and was being sold, by Pucha, a Uruguayan company, in several countries in Latin America.

Fraudulent invoices in Brazil

Underground Kingdom S.L is a Spanish company involved in the world of audio-visual business. The company filed an application to protect their Trademark throughout Europe, that was granted in July.

As part of their latest documentary, they want to include Brazilian music artists and are thinking of promoting and distributing their documentary in Brazil. So, the company decided to file for Trademark protection (name of the company) in Brazil, in addition to Copyright. 

A few month later the company received, first, an e-mail from UBRAM, an organism claiming to be subcontracted by INPI and requiring them to pay an additional amount of monney. They also received a phone call a few days later. 

Design registration in Chile and Costa Rica

Flancox, a Bulgarian company devoted to food packaging products and services, developed a new, unique packaging with the shape of various fruits (e.g. banana, orange, kiwi, strawberry).

The production costs took more than it was expected and, hence, the SMEs’ CEOs were forced to reduce costs in other areas, particularly in IP protection.

Being the appearance of the product the most distinguishing element, they opted to apply for Design registration (as “modelo industrial”) in the countries of interest -namely, Chile and Costa Rica- and left Trademark registration for later.

Franchise Protection in Colombia

Esprimere, an Italian coffee shop, has registered their trademark ‘PronTissimo’ (wordmark) and their logo (figurative mark) in their national IP office. It has contacted local IP lawyers in all the countries since it is planning to expand to Mexico, Venezuela, and Colombia and has applied for the registration of both trademarks in all three countries.

Esprimere has a franchise agreement in place with a Colombian enterprise, Cortico SA, outlining the franchisor and franchisee rights and obligations within the Colombian territory. Aiming to increase its attractiveness, Cortico hired a local artist for a make-over of their logo. Esprimere believes that this is in breach of their franchise agreement and that the trademark is infringed.

Cancellation of Industrial Designs

Bavarian Designs GmbH, is a German SME company dedicated to designing containers for the food industry.

Given their innovative designs, Bavarian Designs was contracted by one of the leading companies in Argentina in the industry of dairy products, called La Norteña, to develop a new design for their milk paperboard containers.

After 3 months, Bavarian Designs delivered La Norteña a new container. 

The new design was so innovative that Bavarian Designs decided to register in Argentina the container design as industrial model.

Six months later, Bavarian Designs was convened to a pre-trial mediation proceeding instituted by La Leche Fresca, one of the direct competitors of La Norteña, who was starting to use an identical milk paperboard container, and, consequently, was seeking to invalidate the registered design, because they considered that the ornamentation mainly responds to a functional effect.

Patent conversion to Utility Model in Argentina

Pickup’s World, Ltd. is a SME established in the London’s' suburbs. One of Pickup’s World’s partners, Alfred, who had worked for a leading German automakers company several years, was aware of the increasing company's sells of pickup trucks in the South American market, and the repeated claims received from its clients in this region, especially in Argentina, for developing a cover for the open cargo area included at the back of the truck, due to security reasons.

Having analysed the existing cover protections in this field of the market, Pickup’s World detected that all of them were built of soft materials and needed to be tied to all the sides of the truck, being very easy to violate the security of the cargo area. 

As a result of this prior analysis, Pickup’s World developed a multi-adjustable rigid cover for pickups, whose main solution, in contrast with the existing designs, was a hard-retractable structure that could be locked.

Considering that Pickup’s World’s main target was to first launch the product   in Argentina, they decided to file a patent application in this country in order to obtain a right that gives them the exclusivity to commercialise the cover and prevent others to use their invention.

Months later after filing the patent in Argentina and having recently closed its first sell in Argentina, Pickup’s World was notified of the Argentinean Patent Office (INPI)’s objection rejecting their invention, as the examiner considered that it did not imply a relevant inventive step from the state of the art.

Design protection in Peru

Lope & James SPRL, a Belgian prêt-à-porter company launched its collection ‘Montagnes’ which contains a 2-D monogram incorporated into textiles produced on an industrial scale. As the small company is based in Europe, it relies on the Unregistered Community Design. Therefore, it did not register the design neither in Belgium nor in the EU. The company rightly relied that its right comes into existence automatically after the first disclosure of the design to the public in the EU and thus giving the owner the right to prevent unauthorised copying of the design.

Lope & James started negotiations with a Peruvian enterprise which would potentially distribute the collection. A few months later the Belgian company became aware that the Peruvian counterpart was launching a collection on their own. The monogram used in the fabric was extremely similar to the ‘Montagnes’ collection.

In order to stop the infringement, Lope & James contacted a Peruvian lawyer, but unfortunately could not provide any certificate of ownership neither under copyright nor industrial design granted in Peru. There were non-disclosure agreements in place.

Copyright infringement in Argentina

Semuret Tour S.L., is a Spanish SME specialized in providing fishing tours tailor made for practitioners of this sport in Spain.

After one year of running the business in Argentina with very good results the company started to experience an increasing interest of the Argentine public in their fishing tour packages in the Patagonian region.

In order to satisfy the local demand, the company decided to operate a local website with exclusive content.

The company decided to contract the services of a local website designing company, Horizonte & Arte S.A., who would be in charge of building the new website. However, no contract was executed between both parties.

After three months of operating the local website, Semuret Tour received a cease and desist letter (C&D) from Mr. Fábrega, the legal owner of the photographies included in the Argentine Semuret Tour’s website. Through the C&D he requested the cessation of the unauthorised use of his graphic material and compensation.

Horizonte & Arte S.A. admitted to Semuret Tour that the disputed images were collected from Mr. Fábrega’s free access website.

Technology Transfer in Chile and Colombia

A young group of Dutch researchers created a start- up “LinkBro” within the field of telecommunications. The core of its business was devoted to a new mobile payment technology, registered in the Netherlands under the Patent Cooperation Treaty (PCT).

After attending a technological fair in Latin America, the EU company received a generous purchase offer from a Chilean company and licensing requests from Colombia regarding the promoted technology.

The Dutch team, interested in continuing with that line of business and uncertain about the real value of the invention, is unsure as to which of these two options is more beneficial.

Protection of non traditional marks in Mexico

GalakTic, an Irish SME engaged in the beverage industry, designed a new packaging and created a jingle to promote the launch of its new product in Mexico. The new look of the product, together with the jingle, will appear in all digital media advertising, television and radio.

The owner of the company, who has already registered the name of the product as a word trademark in Europe, decided to extend its protection to Mexico. In addition, and bearing in mind that musical compositions could be protected as sound trademarks in Europe, he resolved to protect the company´s jingle through a Mexican trademark.