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.


Title Description
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.

Trademark registration formalities in Colombia

DynaMeds, a Danish SME devoted to drugs and medicines packaging, was willing to expand to some Latin American markets. Aware of the importance of protecting the brand, they contacted a local IP lawyer on each of the countries of interest (Colombia, Chile and Mexico) supported by the in-house legal department of the company. As they previously did in Europe, they decided to file a word trademark application (only the name of the company) in all the said territories. The CEO of the European enterprise took the occasion of a business trip to Colombia to meet the local law firm and fulfil all the formalities. After a few months, the Colombian lawyer informed that the Intellectual Property Right (IPR) was successfully granted, but argued that DynaMeds’ logo must also be protected as a trademark in order to prevent it to be used or even registered by anyone else. Moreover, a special legalized Power of Attorney (PoA) would be needed for the new trademark application.

Coexistence agreement in Brazil

Modelled on the English football team Spartan FC, the UK menswear company Spartan 1960, got licensed the needed UK trademarks owned by the soccer team and started operating nationally.

Some time after, SC Spartan Carioca, a Brazilian football club located in Rio de Janeiro, approached the UK SME with interest to distribute their products in Brazil and suggested a profit share if they allow the UK brand to be registered in Brazil.

In order to strengthen their negotiating position, the English company performed a prior search with the intention to apply for a trademark registration in the Latin American country. Moreover, they figured out that the Brazilian company was the owner of a well-known trademark and, hence, had an exclusive right over the term ‘spartan’.

Trade secrets in Brazil

A Portuguese entrepreneur engaged in negotiations with a Brazilian company in pursuit of a joint effort in an innovation-related project. The parties signed a Memorandum of Understanding where they included the tasks each party was committed to develop, the background each part would contribute to the project and a preliminary distribution of the budget if the funding were finally granted.

The Portuguese entrepreneur decided to ask his lawyers to draft a contract including non-disclosure agreement clauses and penalty clauses, so as to ensure his clients’ portfolios were not unduly revealed or stolen by the Brazilian company.

Negotiations went well. However, a few months later, the entrepreneur became aware that his future ‘partner’ had decided to go on with some of the ideas and used the information disclosed during negotiations.

Protecting video games in Mexico

RedSquare, a video game company headquartered in France, created the now famous psychological horror game “Visage” back in 2017. After having succeeded in French- and English-speaking countries, the company decided to have the script translated into Spanish in order to launch the game in Spain and Mexico as pilot countries to test the market in Spanish-speaking countries.

However, having conducted a market study, the company realised that some video game fans had accessed the “translation” folder of the software. This enabled them to publish a subtitled version of “Visage”, which had reached the Mexican market.

Custom’s trademark database in Mexico

Based in Cork, Brenan LTD is an Irish manufacturer popular among the English and Irish consumers for its kitchen tools. The company is commercializing a new product, which is to be released in Mexico soon through a local distributor.

The owner has already obtained trademark protection in Europe, and he is considering whether protecting it in Mexico or waiting until see how the commercialization goes.

The company has also been warned about potential risks of counterfeiting if it does not protect its products properly in Mexico.
 

Invention exploitation beyond patents in Peru

Bravka, a Slovenian SME in the agriculture sector, developed an innovative technology to protect crops from frost. In 1991, one of the affected farmers decided to create a method to control frosts more efficiently and economically. The resulting machine was inspired by a hard frost that affected plantations during that year.

Years later, he obtained a patent and trademark protection in some European countries and in the United States.

Right after, a Peruvian company (Piscul) offered to become his distributor in Spain in exchange for a royalty.

A year before the patent was due to expire, the EU entrepreneur detected that his licensee was commercializing his machine in Peru without his permission.

Idea-expression dichotomy in Ecuador

Sam and Daisy, two young French artists, started negotiations with Cherryland, a well-known Ecuadorian company that organizes outdoors activities.

The parties held several meetings in Quito and after analysing the whole portfolio, Cherryland’s representatives selected eight of the plays, which were all previously registered before the Ecuadorian Intellectual Property Office (IEPI). But finally, the Latin-American company only bought the rights of three of them and asked to adapt another one for a new project.

Besides discussing the adaptation of the play, Sam and Daisy also orally provided their ideas for designing and manufacturing a special portable theatre to perform their plays.

The adaptation was a success, but a few months later, Sam and Daisy became aware that Cherryland was also using some of the discarded works without their permission. Moreover, and although it seemed to be of no interest for the Ecuadorian enterprise, it had developed and exploited the portable theatre as it was described by the European artists.

Unfair competition and deceiving geographical indications in the Dominican Republic

TREMIK, a Scottish SME company engaged in the manufacture and sale of Scotch whisky in the Dominican Republic, noticed that a Dominican company was commercializing products labeled as Scotch Whisky without due authorization.

Unfortunately, Scotch Whisky was not registered as an Appellation of Origin in the Dominican Republic at that time, and the Dominican manufacturer was not using any confusingly similar trademark.

Cybersquatting in Colombia

The French company “Louis Pingouin”, famous for its leather accessories (purses, shoes, wallets among others) has registered its trademark in almost all Latin American countries, including Colombia.

A few months ago, the company decided to create a website targeting the Colombian market. However, when it tried to register the corresponding Domain Name (DN), registration was denied since a Colombian company had already registered the domain name www.louispingouin.co and was using it to sell suitcases and school bags.

Copyright Infringement

Erik, a young Spanish chef who lives in Madrid, has been doing certain gastronomic and scientific research related to the properties of Bolivian highlands food products, and has announced he finished his first book draft on the subject. He also announced that he is planning to print his first edition in Bolivia in order to be widely known in that market. 

Trademark coexistence agreement in Bolivia

The Croatian SMESUCHOC”, a producer of artisanal chocolates, filed a trademark application before the National Service of Intellectual Property of Bolivia (SENAPI), in order to protect its brand “KEKSI” in Bolivia – but did so without conducting a prior trademark search.

Once the application was published in the Official Gazette of Bolivia, the Bolivian company “BOCHIC” filed an opposition to this application, based on the likelihood of confusion between “KEKSI” and its own prior Trademark “KEKIS”, under which the company commercialized candy and chewing gum.

IP clauses in contracts

Uniseliz, S.A.R.L, a French SME devoted to alcoholic beverages importation, signed an international sales agreement with a Cuban export company, where, both companies agreed on the sale of a lot of “Sierra Madre” rum bottles, “Sierra Madre” was registered in the European Union as a European Trade Mark and had a great reputation among rum connoisseurs since it is considered one of the best Cuban rums.

Coexistence Agreement in Peru

An Italian company, Franklin & Marshall S.R.L., decided to enter the Peruvian market and applied for the registration of its trade mark MMM&F, for clothing, footwear and headwear (Class 25).

However, the Peruvian Trademark Office (INDECOPI) denied the application ex officio. They found that the Italian company applied for a trade mark confusingly similar to a previously registered one, “MMM”, for Class 25.

According to Peruvian Law, INDECOPI is entitled to object to a third party´s trade mark without the need of a prior opposition.

The Italian company considered that INDECOPI was wrong in their conclusions since both trade marks were already coexisting within different markets around the world.

Their first idea was to challenge the decision by stating that, since no oppositions were filed, the Trademark Office cannot consider the registered trade mark as a ground for refusal.

Bad faith registration in Brazil

A German manufacturer of headlights noticed that its trademark had been applied for by a Brazilian company they has negotiated in the past.

Trademark registration in Chile

Tortillas Bravas, S.L., a Spanish SME owned the Spanish trademark X.

Based on this trademark, it decided to register it abroad too. In particular, in Germany, United Kingdom, United States of America and Chile. 

Bad Faith Registration Chile

A Spanish medium-size company (“XXX”) that operates in the manufacture and distribution of toys sector decided in 2013 to redesign its logo and register it as a new trademark.

The company used to operate in Europe and in Latin America, mainly in Argentina, Colombia and Chile through distribution agreements. They decided to register the new logo as a Community Trademark at a first stage and waiting a few years before registering the trademark in Latin America, since the former logo was registered in Argentina, Colombia and Chile.

Industrial designs in Brazil

An Italian furniture designer produced and sold a limited edition (only for Brazil) to a single store in Rio de Janeiro: the Paparazzi collection. Following his lawyer’s advice, he protected every piece as industrial designs in Brazil.

Trade fair Brazil

The German SME Recht attended Arnold Classic 2007’s edition in Brazil, a biannual trade fair on Sporting products and Fitness.
Among other products, a new Pilates reformer machine was presented: the Zen model.