We talked recently to Mariano Municoy, IP attorney at the law firm Moeller IP Advisors in Argentina, about the challenges brand owners face in Latin America.
Municoy pointed out that just like other regions of the world, the use of social media is growing in Latin America. However, most Latin American countries are first-to-file trademark countries, which presents a unique set of legal challenges especially in light of the huge growth in the region’s number of trademark filings. Brazil, for example, has seen a 150% increase in the number of trademark filings. This results in slower processing time by trademark authorities, along with long processing backlogs.
This year’s FIFA World Cup in Brazil, followed by the 2016 Olympic Games in Rio, will generate a huge amount of social media marketing, so brand owners should be registering trademarks in Brazil early to overcome the often long wait for trademark registration. Brazil is not a member of the Madrid Protocol (Columbia and Mexico are the only Latin American members), so companies and brands interested in protecting their brands there should have already filed trademarks because of the huge processing backlog in Brazil. Municoy said the wait is at least three years, so if brands haven’t planned ahead for the FIFA World Cup or 2016 Olympic Games, they are already too late. However, they should still move ahead with filing their trademark, since filing in Brazil gives companies and brands some rights. Municoy advises that brand owners should spend time researching the specifics of Brazilian trademark law and plan ahead for the long trademark registration period.
The speed at which social media transmits information makes it hard for any brand owner to police usage of their brand. Brand owners in Latin America face particular challenges due to the number of different legal systems across the region and the limited amount of case law and legal provisions regarding social media. At a minimum, Municoy says that brand owners should conduct a basic trademark search and, when possible, do a full search to identify any potential areas of conflict. He noted that the sooner you identify a potential conflict, the easier it will be to solve.
The Latin American industries with the highest amount of trademark litigation include beverages in the Caribbean, coffee in Colombia, tobacco in Central America, and wine in Argentina in Chile, in addition to the pharmaceutical industry. Municoy advises that brand owners should become aware of regional and country differences in trademark law and plan early and act quickly to get the appropriate protection mechanisms in place.
What is your brand strategy in Latin America?