By Mariano Municoy, Guest Blogger
There are many local factors that should be taken into account when designing a screening or search strategy in Latin America:
1) There are relevant differences in the Spanish language spoken in each country that may affect the quality of trademark searching.
The differences are similar to those between the English spoken in Canada, the United States and the United Kingdom, so they should be taken seriously, as depending on the case, they could have enormous consequences. For example, particular words that do not have any negative connotations under the Spanish spoken in one country may have negative connotations in another country. You should consider using a trademark search professional with sufficient knowledge in the Spanish spoken in the searched country.
2) Existing backlogs of pending trademark applications and out-of-date official databases create information gaps.
In most countries there are serious backlogs and a lack of resources at PTOs to examine and prosecute pending trademark applications, as well as to update official databases. The main reason for this nuance is that most PTOs started to work electronically relatively few years ago (the first ones at the beginning of the 1990s) while very few of them have recently implemented official systems for online filing and management of trademarks.
3) Most common trademark search strategy: screening, phonetic (word) and figurative (design) searches.
Based on our experience and current practice, the most common strategy observed for clearing before filing trademarks is first to do a screening and then, depending on screening results, requiring a trademark search with legal opinion.
Trademark screening refers to the action of accessing private or public trademark databases to take a preliminary view about the potential situation related to the searched term. Yet, public and private databases are not available in all Latin American countries, which explains the great utility of using the databases provided by CT Corsearch that cover the major countries of the region including Argentina, Brazil, Chile, Colombia, Ecuador, Mexico, Paraguay and Uruguay. For those countries where such tools are not available, the best option may be conducting an identical search without legal opinion. Once the result of the screening is analyzed, and depending on the particular needs of the case, it should be decided whether to conduct a more comprehensive trademark search which in turn could be accompanied by a legal opinion issued by a local expert (this is highly advisable).
The most common and broadest type of trademark search is a “similarity search” reporting not only identical but also phonetically similar marks. This type of search, more often than not, is requested together with a legal opinion issued by a local expert having deep knowledge on trademark regulations and the existing linkages in sub-regions, like the Andean Community of Nations (Bolivia, Colombia, Ecuador and Peru).
4) Less common (but not less important) types of searches and additional features to be considered in order to get a full availability report.
Given that trademark clearing and searching is a very dynamic activity influenced by multiple factors, including technological evolution (e.g., the Internet), there are multiple additional sources of content that may be worth including in a search, depending on the particular market of the products searched.
Additional content that could be included in a trademark search are: ccTLDs (local domain names), company names and GI & DO, among others. The local regulation related to such additional content differs country by country, which results in differences in their availability, as well as on the turnaround and the costs involved. Moreover, conducting investigations on the use of a conflicting mark (important and relatively easy when dealing when pharmaceutical products) is a fundamental tool to determine whether filing a cancellation action may be an option or not, as well as on the profile of the individuals or companies owning those conflicting marks in order to know their particular history before approaching them.
There are many more complexities affecting how to conduct trademark clearance and searching in Latin America and I’ll be writing about them in future posts on Trademarks + Brands.
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.