Contrary to popular belief, there is no such thing as an 'international' or 'worldwide' patent, or 'international trade mark' that covers the whole planet in one application. A mechanism exists under the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organisation (WIPO), whereby applicants can make international patent applications, however this merely simplifies the process to make national applications in each PCT member state (of which there are over 125) and protects the applicant's rights to a national application for a limited power of time. Similarly with trade marks, international registrations can be made via the Madrid Protocol (to which there are currently 84 member states, but of Latin American countries, only Cuba is a member state) and the Paris Convention (to which there are over 100 members), however there is no mechanism in place that provides international 'blanket' patent/trademark protection. Significant benefits arise from these international treaties/conventions, however many applicants and/or patent/trade mark owners misunderstand their international IP rights. Depending on the status of any patent/trademark application with IP Australia, further applications can leverage off those IP Australia applications courtesy of these treaties/conventions. All Australian businesses that currently operate, or intend to operate, in the Latin American market should review their current IP rights in relation to the region.
IP applications in Latin America
National applications need to be made in each individual country in Latin America and in some countries, for instance Brazil, the process can take a minimum of three years until final registration. In general, however, the process takes approximately two years from application until final registration, presuming that no objections are raised by the authorities or the public. All applications need to be filed in Spanish, except Brazil, which requires that the IP Rights in Latin America application is filed in Portuguese, and those translations need to be certified. The applicant may choose to have a local representative in that country of application, and that relationship will need to be evidenced in the form of a power of attorney from the applicant to the agent. Just like those applications in Australia, the application will need to include designs and/or drawings (in the case of patents), logos, descriptions of those goods/services in which it seeks to protect its trademark and so forth. Applications are reasonably straightforward, however the authorities can take a hard line on accepting some trade marks in the event of the prior registration of a same and/or similar trade mark, and even in some cases where the chances of there arising confusion in the market are minimal. Any objection raised by the authorities, can be appealed by the applicant.
It is common to see Australians come to Latin America and market their product and/or service, for example through various trade shows, set up, trade and then realise they have no protection, or even worse are in infringement of a third party’s IP rights. Before setting up, ensure your IP rights are protected and check whether you can use your IP. This can be achieved by conducting quick and inexpensive searches. From a business perspective, we have found that clients that have had their IP in order send a good message to the marketplace as they are strategically and effectively able to transact with their buyers, especially in the case where the buyer is a large multinational, which in some cases require that you are the owner of the IP rights prior to entering into a purchase contract. In most Latin countries, the rule of law is adhered to and strictly enforced, regardless of whether or not you are a foreigner, so protection of one of your business’ most valuable asset is a worthwhile cause. -Harris Gomez is the managing principal of Latin American specialists, the Harris Gomez Group (hgomezgroup.com)