Gérez votre propriété intellectuelle dans Amérique Latine

Case studies

L'expérience est, dans la plupart des cas, le meilleur professeur. Visitez notre section Études de cas pour apprendre de l'expérience des PME européennes dans la gestion de la propriété intellectuelle en Amérique latine et de bénéficier de leurs enseignements pour éviter des décisions erronées.

Case studies

Title Description
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. 

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.

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.

Software protection in Brazil and Mexico

GIS – Gestão Integrada de Seguros, is a Portugal-based SME  in the field of development and commercialization of software products for the insurance market, that enjoyed a well-established commercial and implementation network which extended to Spain, France, Poland and Portuguese-speaking African countries.

Attracted by the Latin America, as a key market to 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.

Although everything seemed to be clear, the Brazilian company unexpectedly decided to suspend negotiations until the Trademark –which was applied for right before negotiations started- 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.

Negotiations with a local partner in Chile went well and they agreed on sharing the distributors channels and, thus, publically 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, when it came to Latin America, they found that formalities varied significantly and were not sure about how to proceed and were afraid that they would not be ready for the announced date and, therefore, exposed to trademark trolls.

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.

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 for the Class 12 from 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 trademark registration for “TryssMotor” (Wordmark) in Ecuador to identify goods in Class 12 from Nice Classification.

As soon as the trademark application is published by the IEPI (Ecuadorian Trademark Office), Trisk Motor’s IP lawyers from Peru detected it, informing their clients about a possible likelihood of confusion if the trademark is granted to Auto Pirámide S.A.

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. 

 

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.

Patent infringement in Mexico

Freiheit, a German SME in the communication sector, filed on July 2016 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. 

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 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.

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