This content is from: Trademarks

Latin American trademark offices highlight user-friendly trends

Representatives from IP offices across Latin America yesterday discussed how they are engaging users with increased internationalization and more streamlined procedures.

Miguel Margáin of the Instituto Mexicano de la Propiedad Industrial (IMPI) said that the Office has seen a steady increase in applications in the last few years. In 2014, the Office saw a 15 percent increase in the number of received applications, and a 2 percent increase in granted marks. He noted that, according to WIPO statistics, this makes IMPI the 14th busiest trademark office by application volume and ninth by grant volume.

Part of the increase in workload comes from Mexico’s accession to the Madrid Protocol in 2013, which has resulted in more uptake from users than expected. In 2014, nearly 17,000 Spanish-language applications listed IMPI as the designated office even though WIPO had estimated the number to be closer to 12,000. This in itself was a significant increase over the 7,800 Spanish-language applications that listed IMPI as the designated office in 2013.

“IMPI is now number 10 among the designated offices in just one year and 10 months,” Margáin said.

To adjust to this increasing volume, IMPI is embracing information and communication technology as a way of boosting efficiency and making the system more accessible to users. Margáin highlighted several initiatives toward achieving this goal, including implementing software that allows users to view online nearly any document related to their applications, as well as better access to the gazette.

Furthermore, IMPI is the first Latin American country to join DesignView and TMView, meaning that its design and trademark databases will be completely available for search on these systems.

All these tools are designed to increase user-friendliness, and Margáin said that there is more to come. He explained that IMPI is working to change users’ habits and to increase the use of online services. Though he noted that Mexican filers tend not to like to file online, IMPI’s goal is to encourage online filings and eventually move to an all-online system.

Increasing user-friendliness is particularly important in Mexico since about 40 percent of applicants now file without using trademark agents, and the number is expected to increase. Margáin pointed out that the government has embraced intellectual property as an important driver of economic growth. As part of this, IMPI increasingly regards consumers of its services as users, rather than simply as trademark applicants. He said that ideally these users will be engaged in other IP-related activities such as registering licenses, transfers and renewals, as well as applying for marks.

In addition to these initiatives to improve user access, Margáin explained that Mexico is keen to strengthen its substantive law. He pointed to the newest US Trade Representative Section 301 report, which cited the lack of a trademark opposition procedure as a weakness in Mexico’s IP system. Rather than interpreting this as a criticism of the system, he said that Mexico is embracing this as an opportunity to improve.

“We are working on having an opposition system, and this work is being done not only by the government, but also the private sector, trademark holders, chambers of commerce … we are working to find the best way to have an opposition system that will not delay applications,” he said.

Positive changes throughout the region

Representatives from other Latin American offices also gave reasons for brand owners to be optimistic. Maximiliano Santa Cruz of Chile’s Instituto Nacional de Propiedad Industrial said that his country will soon revise its Industrial Property Law, which covers all forms of IP. Some of the expected changes include faster procedures and lower fees, as well protection for more types of trademarks and for assets such as trade names.

Jose Luis Londoño of Colombia’s Superintendencia de Industria y Comercio also had positive developments to report. He noted that Colombia had made considerable progress to lower filing fees, which in 2010 were the fifth highest in the world. This was in part due to the fact that Colombia did not allow multi-class applications.

However, due to several changes including new procedures to allow multi-class applications, fees are now considerably lower. While the price of single class applications has only dropped slightly ($350 in 2010 to $332 today), multi-class applications have seen significant fee reductions. Applying for a mark in two classes in 2010 cost $700 in fees, while filing an application for two classes now cost $498.

In a bid to help users, Colombia has also gotten rid of several formalities requirements, including notarization requirements.

INTA signed Memorandum of Understanding with IMPI during the 2013 Annual Meeting and with the

Superintendencia de Industria y Comercio during a Latin America delegation tour in 2014, and looks forward to continuing working with these Offices and others throughout the region.

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