Trademark registration in LATAM: all the procedures in each country

In the particular historical and economic times we live in, we see emerging markets such as LATAM countries which have become investment goals in most corporate internationalization projects.

That is why from Protectia, in our desire to provide useful information about the international trademark protection, we propose the following scheme that collects all the necessary procedures for a trademark registration in LATAM, since the filing of the application to the granting.

Let’s see it in the specific of each country.


How to register an application’s icon

Trademark or design? This is the question

The exponential growth of applications for mobile devices is strong. Every day is more common to use several of these applications in our daily life and many new ones are arising to meet our personal and professional needs.

In such a competitive and visual market, the icon that identifies each application is a fundamental distinctive sign: users will recognize the app through it both in online stores as its own device application and associate its usefulness, how well they go with it, how facilitate work, help them in their training, etc. As a regular user, there are several applications that I use almost on a daily basis, whose icon I have special appreciation.

In the applications market, visual field established by the screen itself is fundamental, such as the image of icons identifying each application. Therefore, it is easy to realize how important it is to have an exclusive right to use such icons. 

It is clear then that the use of identical or similar to our icons by third parties should be avoided because of the confusion they might generate among users. It is also clear that having a record of this valuable icon will be an important asset for the commercial use of the application.

To achieve the registration we should know that there are two different ways we can use to legally protect an application icon. 

  • Registered trademark
  • Industrial design

Frontier between the two registration categories is sometimes fuzzy, but in practice the use of one or the other can be justified, and that’s what I’ll try to clarify.

Trademarks and designs present a clear similarity:

  • Like all industrial property registrations, trademarks and designs are territorial and granted independently by each state. For both trademark and industrial design exists the possibility of a Community registration: very interesting option which allows through a single procedure and amount to obtain protection within the 28 countries of the EU.

Let’s see for separate the differences between the two modalities.

How to register an application’s icon. Industrial design.

An industrial design is the appearance and ornamentation of a product, which makes it visually different from the others. This general definition covers:

  • Tridimensional elements, like the shape of a particular product;
  • Two-dimensional elements, such as ornaments, figures or products’ colors;
  • A combination of both elements.

Therefore mobile application icons meet this definition, so they can be registered to monopolize its use.

I show you some real examples of designs registered by Apple Inc.

 diseños inconos apple

However, industrial designs present a few limitations that must be taken under consideration:

  • Industrial designs protect novelty and uniqueness of the objects themselves. Novelty is especially important in this case considering that a registered industrial design which has been sold or exposed before its application could be easily nullified for lack of novelty.
  • Besides, industrial designs are registered for a maximum of 25 years renewable every 5 years from the time of application. 

These two reasons are good enough to dissuade from using this registration modality to protect an application’s icon. 

However trademarks can be renewed every 10 years without a time limit and it does not require novelty, which makes it an excellent choice as we are going to discuss below.


Trademark registration of Ice Bucket Challenge

Last week the protagonist on social media has been, no doubt, the campaign called “Ice bucket challenge”: the viral iced shower campaign created for charity with the intention to raise fund for research and fight against the degenerative neurological disease ALS (Amyotrophic Lateral Sclerosis).

The Ice Bucket Challenge is an idea of Pete Frates, promise of baseball and ALS sufferer; the American Association (Amyotrophic Lateral Sclerosis Association) developed the idea and turn it into a viral social campaign which has raised in the US over $60 million from the donation of people who has poured a bucket of iced water over their heads.

Now it seems that part of this money will possibly be used by the association for the trademark registration of “Ice bucket challenge” phrase.

According to the USPTO database, the ALS association applied last August to register both “Ice Bucket Challenge” 86375292 and “ALS Ice Bucket Challenge” 86375305 as trademarks; in the application, it is specified that the use of such trademark will be for charitable fundraising. (more…)

Google and the “Glass” trademark registration trouble

One of the most debated news of the week regarding intellectual property and big companies is that the king of search engines, Google, is trying to register as a trademark the word “Glass”, in order to protect its wearable computer solution. After obtaining the registration of “Google Glass” as a trademark, a few months ago the company files an application for the world “Glass”.Google_Glass_

As it had to be expected, the Mountain View group is having some trouble to obtain the registration of the word “Glass” as a trademark and facing quite a lot of criticisms.

In fact, the USPTO (United States Patent and Trademark Office) has objected to the application declaring that “glass” is merely descriptive (therefore lacking one of the main requirements for a word to be registered as a trademark) and also very similar to other software products, element that could induce consumers to confusion. (more…)

2019-04-19T06:20:26+02:00Categories: Trademarks|Tags: |