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Latin America inching towards the Madrid Protocol



Michael Loney, New York


Latin America has not been heavily affected by the world economic crisis, and intellectual property is becoming more important in the region

INTA attendees will receive an update on Wednesday on how the region’s IP systems are progressing in a panel moderated by Valdir Rocha from Brazilian law firm Veirano Advogados Associados.

The panel will focus on four topics: the Madrid Protocol and the Hague Agreement; enforcement of IP rights at Customs; domain names alternative dispute resolution; and the increasing relevance to local practitioners and in-house counsel of the use of trademarks on the Internet. Joining Rocha will be Ariela Agosin from Chilean law firm Albagli Zaliasnik and Hedwig Adelheid Lindner from Mexican law firm Arochi, Marroquin & Lindner.

There are a wide range of practices in Latin America’s IP systems. Most of the region’s countries are not members of the Madrid Protocol. The only Latin American countries to have signed on to the Protocol are Cuba in 1995, Colombia in 2012 and Mexico last year.

CAMEX, the Brazilian Chamber of Foreign Trade of the Federal Government, in April last year approved Brazil’s accession to the Madrid Protocol. The government intended to introduce legislation on the Protocol to the Brazilian Congress but no further progress has yet been made.

“The official intent is to have Brazil adhere to the Protocol,” said Rocha. “There has been no opposition from any sector but the BPTO because of its turnover [in staff] has an enormous backlog and probably doesn’t feel comfortable about meeting the deadline. We’ve been waiting for at least 10 years for the signing of the Madrid Protocol by the authorities.”

Rocha believes other countries may be waiting for the region’s largest economy to commit to the Protocol before making a move. “In Argentina the Madrid Protocol has not been signed yet,” he said as an example. “Since Argentina is a member of Mercosur, they will probably wait until the other members decide to adhere. Argentina is probably waiting to see what Brazil will do because Brazil is the largest economy in the Mercosur.”

Another example is Chile, which has a very open economy and several free trade agreements with countries in Asia and North America. “The Madrid Protocol is not being discussed yet so they have not adhered to yet,” said Rocha.

Internet updates

The way trademarks on the internet are treated also differs from country to country. Argentina, Chile and Mexico have no specific internet laws about trademarks.

“These are all civil law jurisdictions and the law is codified so wherever there is no specific laws governing the Internet the other laws would apply. My impression is that these major economies in the region will soon have to regulate cyberspace and e-commerce because the existing laws are not effective enough and criminal codes do not refer to some of the cyber crimes,” said Rocha.

Brazil is set for big change on this issue, however. A lot of counterfeit and infringing goods are sold through the Internet in the country. In response, Brazil has passed Internet legislation. After months of delay, Brazil’s Congress passed an Internet Bill of Rights on April 21. The so-called Marco Civil guarantees net neutrality, regulates government surveillance on the Internet and places limits on the date companies can collect from Brazilian customers. Internet providers will not be held liable for content published by customers but will be legally required to remove offensive material.

The new law also has implications for trademarks. Rocha said the new law will lead to an increase in trademark-related litigation. “The ISPs will not have the authority to take down websites or pages,” he said. “The notice and take down system will be very limited to pornography and nudity. That will be the limit. But for infringement the parties will have to go to court. So there will be an increase in litigation in Brazil including trademark infringement on the Internet.”

Brazil’s regulations for trademarks are undergoing other big changes this year. In March new guidance on famous and well-known trademarks became effective. The Brazilian Patent and Trademark Office (BPTO) published guidelines in a resolution changing the procedures to request “highly-renowned” status of a trademark in Brazil. Trademark owners could not previously file a request for well-known trademarks without it first being infringed or in litigation. They can now file for well-known trademarks independently without their marks being disputed.

They were not the only changes for trademark owners to come out of the BPTO office recently. In February this year the BPTO, which is under the leadership of new president Otávio Brandelli, published new fees for patent and trademark applications. This increased the cost of paper filings by 14%. The office has also launched a trademark mediations pilot project. This project was started in collaboration with WIPO and was officially extended in January.


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