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Trade dress, the protection of non-traditional marks in Latin America

By: Jaime de la Mora

July 5, 2023

According to various Industrial Property studies, mark applications in Latin America increased by 30% in the last year. As we well know, the main purpose of preventing your intangible assets from being taken by a competitor is to make sure that your company has an adequate protection for such valuable assets.

On average, 80% of a company’s value is derived from its intangible assets, which means that marks, such as non-traditional ones: olfactory, sound, hologram or three-dimensional and the complete experience perceived by the consumer, better known trade dress, have a highly significant impact on your company. And although it is possible to support these assets, each country has its own legislation that allows or does not allow the protection of these, or contains its own considerations, which can make the process complicated and expensive.

The protection of this type of mark and trade dress aims to avoid confusion or deception in the market and preserve fair competition, as well as open new opportunities for mark monetization.

The trade dress can be registered as a commercial mark if it complies with the requirements established by the applicable legislation. Failure to protect such distinctive characteristics or trade dress, or doing so inadequately, may involve some risks for both mark owners and competitors. Some examples are:

  1. Mark confusion and dilution: If a trade dress is too similar to another existing mark, there may be confusion among consumers.
  2. Infringement of intellectual property rights: The unauthorized use or reproduction of a protected mark or trade dress may imply an infringement of the intellectual property rights of a third party.
  3. Difficult to protect non-distinctive elements: Some elements can be difficult to legally protect if they are considered generic, functional or common in the industry.
  4. Protection and maintenance costs: Failing to adequately protect your mark could imply a high cost for defending your rights in the event of an infringement. That is why it is essential for mark owners to take the necessary measures.

However, it is important to know the multiple benefits that non-traditional marks provide if they are taken on the right track. Some of them are:

  1. Innovation: They stand out for their innovative approach. They disrupt conventions and propose new solutions, products or services different from those found in the market.
  2. Personalization: They regularly focus on offering highly personalized products or services.
  3. Agility and adaptability: They are more agile and flexible in the way they operate.
  4. Focus on specific niches: They target specific markets that traditional marks forget.
  5. Market disruption: Challenge the status quo and shake up established industries.
  6. Competitive prices: Adopt agile and efficient business models that compete compared to those of traditional marks.
  7. Unique shopping experiences: They offer different and memorable shopping experiences.

The World Intellectual Property Organization (WIPO), through the Permanent Committee on the Law of Marks, Industrial Designs and Geographical Indications, has tried to establish criteria to regulate them, but it has not been possible to establish a harmonious agreement due to the complexity involved that these generate.

Experts at ClarkeModet have built the following map that compiles the opinion of experts in mark protection, wherein we can see how the protection of non-traditional marks and trade dress is applied in the eleven main countries of Latin America where they have a presence.

Some interesting findings are that in Mexico the protection of non-traditional marks is legislated, but in Brazil and Chile, there is no legal specification for the protection of trade dress, however, it is possible to protect the established image with personalized strategies, according to the product or service. For example, the registration of packaging as a three-dimensional mark or industrial design and the protection of visual identity through unfair competition or even through copyright.

On the other hand, in Peru, the figure of the trade dress does not exist as such, but registration can be requested as packaging or three-dimensional mark. As for the olfactory ones, they can be registered, but there are none registered due to the complexity in representing the smell graphically, the same case for Uruguay, wherein a format to present these marks is not regulated. In most countries, color protection is possible only by combining them and not in isolation.

Protecting your non-traditional marks and trade dress is essential to ensure the success and survival of your assets. By doing so, you will be able to obtain benefits such as exclusivity in the market, protection of the mark’s reputation and international expansion, as well as generate various monetization opportunities through the exploitation of your rights, for example: mark licensing, alliances, three-dimensional figure in packaging, among others.

Let’s take the case of the protection of the Turin chocolate mark and its non-traditional marks such as the registration of its three-dimensional mark characteristic, they have not only been able to exploit the proposal of its various packages, but also the application of its flavor in popsicles and cakes. Thanks to this, the company was able to consolidate its position in the market and expand its business model.Being aware of the value of your marks and knowing the protection options for your product or service in a Latin American country is vital, as well as having the expert advice of an Industrial Property professional to carry out an ideal protection strategy in the Latin American region to maximize the rights of your organization.

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