Latin America and Caribbean

A problem that impacts day to day in our country, and specifically the owners of trademarks, is the deficient or lack of regulation in our legislation regarding what is and what should be understood by "use of a trademark", "use of a trademark in accordance with the customs and habits" and "effective use v token use".

The Brazilian Patent and Trademark Office (PTO) has introduced its long-awaited plan to solve its patent backlog, a project called the "Preliminary Standardised Office Action Program". The idea is to reduce backlog by 80% over the next two years – after which the PTO estimates it will take under 24 months to examine new applications.

The Mexican Institute of Industrial Property (the IMPI) denied applications for the mark "Pinche Gringo BBQ" and design to Daniel Andrew Defossey and Roberto Luna Aceves, on the grounds of Article 4 of the Industrial Property Law (LPI). It stated that the mark was contrary to public order, morality and good customs. The term "Pinche" is a pejorative word and "Gringo" refers to a person born in the United States, especially one who is English-speaking. However, interestingly, the real meaning of "Pinche" is a person who provides services in the kitchen or an assistant cook.

The reform of August 10 2018 to the Mexican Industrial Property Law substantially changed the Mexican trademark landscape. Among the most relevant changes brought by this legislative reform, particularly the acceptance on behalf of the Mexican Institute of Industrial Property (IMPI) of non-conventional trademark applications – such as smell and sound trademarks – positions Mexico today at the forefront of innovation.

The Madrid system will enter into force in Brazil on October 2 2019, three months after the delivery of the instrument of accession of Brazil to the World Intellectual Property Organization (WIPO). In the wake of the adherence to the international system, the Brazilian Patent and Trademark Office (BPTO) released four resolutions that not only address ratification, but also touch new and uncharted areas for international companies with trademarks in Brazil, including adopting necessary international norms for the local trademark regime, like multiclass filings, co-ownership, and divisional applications and registrations adding flexibility to the local system.

Performing trademark clearance searches should always be the first step taken prior to filing a trademark application, as they are an effective way of preventing legal risks before launching a brand.