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
IP mediation on trade marks

LaGalguita is a Spanish SME that sells its own line of cosmetics: make-up, skincare, hand creams and body creams. After its success in Spain, Portugal and Italy, the brand decided to target Latin America, starting with Argentina and Mexico. For that purpose, the SME filed for trade mark registration in both countries.

While LaGalguita was developing its business in Europe, a local Argentinian company also started evolving and it became quite successful through “La Galguita Shop”. La Galguita Shop started as a fashion brand. The two businesses coexisted peacefully, even after the arrival of the Spanish SME in Latin America. However, after its success and expansion to other Latin American countries, La Galguita Shop started selling its own hand creams and body lotions in stores.

Consequently, the Argentinian company received a cease and desist letter from the Spanish SME on the basis that, by selling cosmetics under the name “La Galguita Shop”, consumers could be confused regarding the origin of the goods and, therefore, wrongly connect the two businesses.

Patent conversion to Utility Model in Argentina

Pickup’s World, Ltd. is an SME established in Dublin and founded by three industrial engineers, who shared a common passion: vehicle designing.

One of Pickup’s World’s partners, Alfred, who had worked for a leading German car manufacturer for several years, was aware of the increasing sales in pickup trucks of the company in the South American market. He was also aware of the repeated complaints received from clients in the region, especially in Argentina, about the cover for the open cargo area included at the back of trucks, deemed not secure enough.

After analysing the existing cover protections in this field of the market, Pickup’s World detected that all of them were made of soft materials and needed to be tied to all sides of the truck. Hence, it was very easy to sneak past the security of the cargo area.

As a result of this analysis, Pickup’s World developed a multi-adjustable rigid cover for pickups, the main solution of which –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 there 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 their first sale in Argentina, Pickup’s World was notified of the Argentinean Patent Office (INPI)’s rejection of their invention, since the examiner considered that it did not imply a relevant inventive step from the state of the art.

Idea/expression dichotomy in Ecuador

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

The parties held several meetings in Quito and, after analysing the whole portfolio, Cherryland’s representatives selected eight of the artists’ plays, which had all previously been registered in the Ecuadorian Intellectual Property Office (SENADI). Eventually, however, the Latin American company only bought rights for three of them and requested the right to adapt another one for a new project.

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

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

Trade mark opposition procedure in Argentina

The German SME ‘Fordermorder GmbH’, specialised in the manufacturing of machine components, decided to expand their business to Latin America and Argentina was selected as the first destination.

The EU SME was aware of the importance of IP protection, and decided to register the company’s name and logo as trade marks, as well as the name of their star product “Zeit”. The trade mark applications were filed for products included in Class 7 of the Nice Classification: machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated, etc.

Four months later, after the applications were filed, Fordemorder’s IP lawyer informed them that an opposition had been filed against the “Zeit” trade mark application by the owner of the mixed mark (word + logo) ‘Zeit’, who had already registered the mark for jewellery products in Class 14 in Argentina.

Given that ‘Zeit’ was the German company’s leading product and taking into account that the conflicting products were so different and the signs were not strictly identical (the previous trade mark consisting of a graphic element on top of the word ‘Zeit’) , they considered that the opposition would likely fail and preferred to proceed with the registration procedure.

IP considerations when expanding your online business to Chile

Fusion is a German SME that has created a notebook, the pages of which are made from a polyester component instead of wood. This enables the user to write, scan with a mobile, upload the content directly to the cloud and erase the pages with a damp cloth. The company has allied with some of the most relevant cloud storage companies, so that when users scan their page through the app, they can organise and decide where this page should be saved in the cloud. The notebook can then be reused indefinitely, saving therefore paper and plastic, which will, in turn, benefit our environment.

After a successful launch in Europe, the company is now ready to make the move to Latin America, starting with Chile. Aware of the need to properly protect their invention, the company decided to file the appropriate trade mark, patent and copyright application to protect its brand, polyester composite and application software, respectively.

However, unaware of the existence of another famous cloud storage company in Latin America called “Iguana Drive”, Fusion offered the same cloud storage options through their app as those offered in Europe. Diego, one of their Chilean users, thought it would be a great idea to add “Iguana Drive” to Fusion’s app. Thus, he developed a new plugin (without Fusion’s authorisation) that would allow the addition of this new functionality to the original app. The plugin was offered through a non-official repository under the name of “Fusion Associates” and, although well elaborated, it did not include the necessary security measures. As a consequence, many users who installed this plugin in their cell phones in Latin America were affected. Many unsatisfied users reported back to Fusion.

Liability of Internet intermediaries for the sale of counterfeit products in Peru

Mercadodepulgas.com is a successful Spanish start-up that runs an online platform where users can buy and sell second-hand products. Sofas, bikes, electronic devices and the like are exchanged in the platform. The website and app have become very popular due to the ease of its use and its effectiveness in allowing users to get in touch.

The start-up has had great success in the Spanish market. Because of this, the company decided to expand its business to Peru. To this end, the company created a new, similar platform for the Peruvian market, with a slight adaptation of the language used in the website.

Mercadodepulgas did not have to wait long to find out that while Peruvian users also sell bikes and sofas, the platform is also used to offer pirated or counterfeit products. This was something the start-up was not prepared for, since Spanish users only used the platform to exchange old items they had at home and that did not want anymore. The partners of the start-up started to doubt the viability of the expansion: what would happen if IP owners decided to sue the start-up for the sale of counterfeited products carried out by their users on the company’s platforms? Could the start-up be held responsible for such activities?

Protection of non-Traditional Trade Marks in Mexico

GalakTic, an Irish SME engaged in the beverage industry, has been successfully commercialising their drink in Europe for 5 years. They have decided to launch their product in Mexico. The distinctive shape of the bottle and the brand name used in Europe are to be used in Mexico too, as will be a new jingle specifically created for the Mexican advertising campaigns.

The name of the product was already registered as a trade mark in the EU, and the shape of the bottle was registered as a design in the EU 5 years ago.

Customs 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 commercialising a new product, which is expected to be released in Mexico soon through a local distributor. The owner has already obtained trade mark protection in Europe and is now considering whether to protect it in Mexico or wait to see how the commercialisation goes.

The company has already been warned about potential risks of counterfeiting if they fail to properly protect their products in Mexico.

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 operating from Italy focussing on the fashion industry. 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.

Fraudulent invoices in Brazil

Underground Kingdom S.L. is a Spanish company involved in the audio-visual business. The company filed an application to protect their trade mark in Europe and it was granted in July.

As a part of their latest documentary, they wanted to include Brazilian music artists. In addition, they were thinking of promoting and distributing their documentary in Brazil. Therefore, the company decided to file for trade mark protection (name of the company) in Brazil, in addition to copyright.

A few months later, Underground Kingdom received an email from UBRAM (“União Brasileira de Marcas Registradas”) which said that, according to their records, the substantial examination had not been requested by the applicant within the deadline. Thus, INPI the national trade mark office would be forced to shelve the trade mark application unless said examination is formally requested within 10 days from the date of the notification. In addition, the company should also provide proof of payment of the fee –amounting to 387, 50 Brazilian reais (86€) plus a surcharge of 500 Brazilian reais (115€), to be deposited in the bank account attached.

However, within the next few days, they were contacted by phone by an IP agent of INPI. The agent explained that, due to the backlog and as part of the new agility measures adopted by the new president of INPI, UBRAM was subcontracted in order to manage all payments. He then urged the CEO of the European SME to proceed as instructed if he did not want his trade mark application to be abandoned.