A designer's best friend.

A common issue when providing legal representation and advice to start-ups and entrepreneurs is to find trademarks that were not created taking into account the legal side of the trademark’s wording and design. The creative process that produces a mark is often regarded exclusively from the standpoint of its marketability, the message it sends to consumers and its relation to the products or services that the company provides. However, this is a deeply flawed method. As any experienced company in protection and management of IP assets will tell you, your attorney should be by your side from the very moment when you decide to create a trademark.

The ultimate goal of any IP assets is to generate renevue. Early legal advice will not only reduce litigation costs (since the chances of getting your application opposed, or denied, will be greatly reduced) but it could also improve the competitive advantage that your trademark provides. In short: Early legal advice will provide a greater profit margin for you.

Therefore, our advice for you is to:

1. First listen, then trademark. It is highly advisable to consult your attorney during the creative process for the mark. This will help you detect similar or un-registrable trademarks in the early stages of the process.

It is important to remember that not all words and not all signs may be registered as trademarks. In addition, if you provide services or sell your products in several countries, the added legal complexity of different jurisdictions  (with differents requirements and standards) should be taken into account when you trademark your products/services.

2. Be flexible. Allow us to emphasize that: you really need to be flexible. A very common issue in a Trademark Law practice is to find trademark owners who have grown emotionally attached to their marks, and disregard the legal drawbacks of that particular mark.

Therefore, if your attorney considers that the best option is to modify your trademark (either by changing the wording or adding a logo, for example) it is probably best to listen to him. This will ultimately result in reduced litigation costs for you.

3. Be creative. This may seem to be an obvious thing, but it’s one of the golden rules to having a healthy portfolio of IP assets.

This includes minding the wording of the trademark as how it relates to your field of work. For example, if you own a Tech company, avoid trademarks that include “Tech”, “Tec”, “Tek” or “Teq” in their wording. Your chances of getting your application opposed or denied will be significantly high. Take, for example, the trademark “Apple” for a hardware and software company: Although it is a commonly used word, it is not related in any way to their field of business, and the chances of finding a similar trademark belonging to a similar company are very low.

And finally, if you have no option but to use a wording closely related to your field of business, it is advisable to add a logo. The chances of finding two similar logos are much lower than it is with wordmarks.

For any additional advices or recommendations for the early stages of creation of your IP assets, feel free to contact us. And remember: Your IP is not ‘accessory’ to your business, having a healthy IP portfolio and a strong strategy for management of your IP assets often marks the difference between winners and loser in the business world.

Constitucional action on TM matters in Colombia.

A recent court decision on trademark matters in Colombia has set an important record on due process for trademark registrations in this country, in deciding a constitutional action (Also known as ‘Amparo’ or ‘Tutela’ in Latin American countries) presented by our litigation department against the Colombian Trademark Office -The SIC-.

The case was related to a trademark application, in which the trademark registration was granted after dismissing an opposition from a third party and conducting the registrability exam that is required for all applications. The granting of the trademark registration was then appealed and, during the appeal process a new registrability exam was conducted which led the Trademark Office to reverse their decision and deny the registration of the trademark.

A constitutional action was brought against this decision by our litigation department, leaded by attorney Juan Sebastián Salazar, on grounds of violation of due process and the right to defense. The court ruled in favor of the plaintiff, and established:

-That the Trademark office’s ability to examine the registrability of a trademark has a temporary limit (Namely, the time between publication and the moment of granting or denial) and can’t be performed in appeal proceedings.

Any registrability examination conducted after the granting/denial of a trademark application is a violation of due process, due to the fact that the applicant will have no opportunity to defend his/her application.

-When an appeal is brought against a trademark registration granting, the Trademark Office will have to limit its decision to the grounds of appeal (Although, admittedly this was long ago established in Colombia procedural law). Therefore, the existence of other similar trademarks can’t be considered by the trademark office in this procedure.

We consider this to be a landmark decision for trademark matters in Colombia, since the Trademark Office will have to acknowledge its limitations regarding trademark registrability examinations, and its obligation of respect of due process and the right to judicial defense in administrative procedures.

*This article was modified on February 5th to clarify that the aforementioned constitutional action is also known as Tutela or Recurso de Amparo in Latin American countries.

Mexico becomes third Latin American country in the Madrid System.

It is official: Mexico has formally deposited the ratification instrument of the Madrid Protocol before the World Intellectual Property Organization. This means that the Protocol will enter into force in exactly three months since the date of deposit. As we have previously stated on this blog, Mexico becomes the third Latin American country to enter the Madrid Protocol –After Colombia and Cuba– and the first major Latin American economy to do so.

The ratified treaty was deposited before WIPO on the 19^th of November 2012, and it will enter into force on the 19^th of February 2013. This leaves the Mexican PTO –The IMPI– with three months to prepare and adapt to the Protocol’s procedures. The complete list of parties to the Protocol now rises to 88.

The Mexican game rules.

Along with depositing the ratified treaty, Mexico has set two conditions for its entrance to the Madrid System:

1. The Protocol sets a 12 month period as the default time for providing notice of the provisional denial of an application. Mexico has extended it to 18 months.

2. Similarly to Colombia’s entrance to the Madrid System, Mexico has decided to establish “Individual Fees” for procedures in which Mexico is a designated country, especially in procedures for trademark registration, post-registration country designations and trademark renewals. This means that Official Fees for Madrid Procedures in Mexico will probably be a little higher than usual.

The IMPI is bound to release a new schedule of official fees, including the Individual Fees for the Madrid Protocol in the coming months. We will publish such information on this blog as soon as it’s released.

3. The registration of licenses before WIPO’s international registry won’t have effect in Mexico. Therefore, when licenses are awarded on an international registration that includes Mexico as a designated country, the license will also have to be registered before the Mexican PTO for it to have effects on this country.

Not everything that glitters…

We’ve said it before, and we’ll say it again: The Madrid Protocol is indeed a wonderful tool for easing international trademark registration, but it is not without some worrying problems. When we heard about the entrance of the Protocol in Mexico, one of the first worries that came to our mind is related to a Mexican rarity in Intellectual Property issues: Mexico does not have a procedure for Trademark Oppositions.

Given the rise in applications that always follows the entrance to the Madrid Protocol, this could mean that the Mexican PTO may be flooded with conflicting trademarks, starting cancellations actions against each-other and greatly increasing costs for trademark owners. Law firms with practices in Mexico –Our firm included– will have to keep a closer eye on new trademark applications, and filing amicus curiae for examinators to consider before granting trademarks conflicted to registered ones.

The entrance of the Madrid Protocol will surely make the Mexican trademark market more dynamic and accessible for trademark owners. At B&R Latin America we will also be getting ready for this new tool and will make sure to provide the best legal counseling for our clients in Mexico.

Sources:

WIPO

Accession to the Madrid Protocol: Mexico

Licenses on International Registries for Mexico

The Ecuadorian Intellectual Property Institut has limited to 30 labour days the time frame an opponent trademark owner can file its opposition after publication.  Before this decision the Institut accepted that the deadline could be extended for another 30 days, making it a 60 days period.

If you have filed a trademark application in Mexico you have to know that there is not a opposition procedure.  Trademarks are not published and is the trademark office that looks for previous registered trademarks.