Though Latin America’s major IP markets have recovered from the recession at varying rates, the region has positioned itself as an emerging market. An increase in trademark filings and the success of regional companies have cemented its status as a global player. A panel today will discuss these changes, as well as recent case law and fair use issues regarding social media.

Roberto Arochi, of Arochi Marroquin & Lindner, will address how brand owners can manage their portfolios, specifically when it comes to trade dress and registration issues. Washington, DC-based Cristina Carvalho, of Arent Fox, will review developments in Brazil involving social media and domain names. “I will touch on laws coming down the pipe on ambush marketing in light of two sports events Brazil will host—the World Cup in 2014 and the 2016 Olympics,” she says. And Damaso Pardo, of Perez Alati Grondona Benites Arntsen and Martinez De Hoz, will explore Argentina’s progress in implementing the Madrid Protocol. “An open and interesting discussion has been taking place in Argentina for the past five years,” he says, adding that the overall environment is increasingly favorable to the country joining the international trademark system. Valdir Rocha, of Veirano Advogados Associados in Brazil, will moderate the panel.

From trademark filings to secondary meaning

Last year, 96,000 trademark applications were filed in Mexico, an indication of the country’s economic recovery. But Arochi says the growth presents problems. “The problem is not filing so many applications,” he says. “The problem is we don’t have the vision to handle these trademark applications.” In addition, Mexico does not have a formal opposition process, letters of consent are not binding and companies under common control can register similar trademarks.

Argentina, meanwhile, has had a slow but steady recovery. Trademark filings fell around 20% as a result of the 2008 financial crisis, particularly from domestic companies. But the decline forced clients to make more reasoned decisions as to where and when to litigate. “The IP industry has evolved mainly in the enforcement area, where we have seen more activity from customs and law enforcement agencies to cope with increasing levels of counterfeiting,” says Gustavo Giay of Marval O’Farrell & Mairal in Buenos Aires. Brand owners also are increasingly devoting their resources to online enforcement. “It is interesting to note that most of the auction sites are actually owned by a few companies, the leading one being based in Buenos Aires, so online monitoring services throughout Latin America can be based in one country such as Argentina,” Giay says.

Of the three countries, Brazil has emerged strongest, having been only marginally affected by the global downturn. Former President Luiz Inácio Lula da Silva oversaw the country’s tremendous economic growth during his tenure. “Because at the time of the financial crisis Brazil was doing well, it attracted a lot of foreign investment from investors who could not get good returns in Europe or the US,” Carvalho says.

Organization before the Protocol

When the Madrid Protocol Implementation Act came into law in the U.S. in 2002, it was thought that it would not be long before Mexico followed. But that hasn’t happened, and accession in Argentina and Brazil is also some way off, with practitioners saying that part of the problem is simply that national IP offices are not ready. Backlogs, for example, remain significant. “If you assume that by adopting the Protocol Brazil could increase filings, I think it would be wise and prudent to put your house in order to handle the additional work,” says Carvalho.

But change may finally be coming. The Trademark Directorate of the National Institute of Industrial Property (INPI) in Brazil recently formed a Quality Management System to develop staff training programs and establish uniform examination standards.