Manage your Intellectual Property in Latin America

Case studies

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
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 started to negotiate with a Brazilian company with a view of joining efforts 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 will contribute to the project and a preliminary distribution of the budget if the funding was finally granted.

In order to ensure his clients portfolio and know-how were not unduly revealed or stolen by the Brazilian company, the Portuguese entrepreneur decided to ask his lawyers to draft a contract including non disclosure agreement clauses and penalty clauses.

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

Copyright infringement in Mexico

Liquori di Roma, a family-owned company headquartered in Vernaza (Italy), which produced, imported and distributed spirits and fruit syrups, found in a business trip to Guanajuato (Mexico), that Dulcecito –a local business was selling their own spirits in a bottle that was almost identical to those used by Liquori for their flagship product, the only difference being the product name included.

The bottle was characterized by a unique pattern, created by Liquori´s founder by late 90’s, consisting of some original illustrations engraved in glass.

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.

The resulting machine was inspired by a hard frost that affected plantations in October 1991. That year, one of the affected farmers decided to create a method to control frosts more efficiently and economically.

Some years later and after several tests he obtained a patent and trademark protection in some European countries and in the United States.

Moreover, 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 their leather accessories (purse, shoes, wallets and others) has registered its trademark in almost all countries of Latin America, including Colombia.

Some months ago, the company decided to create a website targeting Colombia. When they tried to register the Domain Name (DN), the registration was denied since a Colombian company already registered the domain name and used it to sell suitcases and schoolbags.

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 SME “SUCHOC”, devoted to handmade chocolates production, filed its Trademark application “KEKSI” before the National Service of Intellectual Property of Bolivia (SENAPI) without conducting a prior trademark search.

Once the application was published in the Official Gazette, the Bolivian company “BOCHIC” filed an opposition based on likelihood of confusion with its prior Trademark “KEKIS” to protect 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 trademark MMM&F, well-known among Italian consumers for clothing and related goods.

However, the Peruvian Trademark Office denied ex-officio the application since they found the applied for trademark confusingly similar to the previously registered trademark MMM (special characters), registered to protect electronic products.

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. 

Lack of patent protection

ARMAGE2 is a Spanish company that produces farming mechanical tools and owns patents and utility models over certain tools in Europe, Argentina and Brazil.

Its Argentinean distributor offered it to start distributing two patented products in Uruguay. Unfortunately, the patents were applied for in Spain more than 12 months before; therefore, ARMAGE2 was not able to claim priority for its Uruguayan patent application.

Creative Commons enforcement Brazil

Joao was a Portuguese blogger with a certain reputation within the media sector. Media contents, were published on his blog under a Creative Commons License. One day Joao notices that a company was using his work without fulfiling the terms of the license.