By Mariano Municoy, Guest Blogger
As it happens in every other country or region worldwide, trademark laws prohibit the filing and use of signs that reproduce or imitate existing trademark rights, considering the particular goods and services. Particularly for Latin America, the main two goals of trademark searches are:
-Detecting prior identical or confusingly similar marks applied or filed for the same, or related, goods that may be used by the examiner to reject the application during the substantive examination.
-Detecting conflictive trademark rights who may not only oppose to the application of the searched sign but also send cease and desist letters once a product or service is imported into Latin America.
In the second scenario, and when no trademark application has been filed or trademark search conducted before importing into the region, the effects of receiving such letters can reach stressful levels for legal counsel and even alter marketing plans already set within a company.
Ideally, a trademark search should detect conflictive records in order to allow legal counsel to design the best strategy to deal with them, which may range between desisting on the application up to attacking conflictive records through nullity actions and the like.
In most of the cases, the best solution is solving them amicably by negotiating, and the chances of doing so increase if the eventual conflicts are detected at an early stage, which is the main value provided by trademark searches. In particular situations, using cancellation actions based on non-use or registration made in bad faith may be the only options, but such actions are of limited use due to multiple reasons, such as the high burden of proof to be met by petitioners, the high legal costs involved and the extended timing to complete the procedures, among others.
Overall, Latin American regulations regarding trademark maintenance and renewals, as well as cancellation based on non-use, result in more freedom for the existence of crowding registers and the performance of the different activities included within the term trademark warehousing.
Last but not least, it is worth taking into account that the number of trademark filings continues to increase in the most important markets of the region so those risks may increase too.
Next Monday, the last post in the this 4-part series on trademarks in Latin America will review the process of conducting trademark searches in the region.
Mariano Municoy works for the Latin American IP law firm Moeller IP Advisors where he advises and designs legal strategies related to patents, trademarks and domain names protection as well as anti-counterfeiting and transfer of technology issues. Mr. Municoy is also a founding member of Moeller’s Regional Department of Regulatory Affairs and serves as a liaison between Moeller and numerous U.S. companies and law firms.
