Case studies
The Latin America IP SME Helpdesk offers a wide range of case studies showcasing different experiences from EU SMEs doing business in Latin America. The topics range from the registration of trade marks in Mexico to the protection of confidential information in Argentina.
These case studies aim to illustrate the difficulties related to the protection of intellectual property that EU SMEs deal with when internationalising to Latin America, and how to avoid them.
Action against counterfeits
The German SME ‘Fordermorder GmbH’, specialised in the manufacturing of machine components, decided to expand their business to Latin America and
Argentina was selected as the first destination.
The EU SME was aware of the importance of IP protection, and decided to register the company’s name and...
App protection in Chile
Flonder, a Spanish SME that created a product delivery app, was planning to expand to Chile, Colombia, Brazil, Mexico and Peru at the lowest cost.
Bad faith registration in Chile
ZenZit is a Spanish medium-sized company in the toy sector that has a strong presence in Europe and several Latin American countries through distribution agreements.
Bad faith registration of trade marks in Brazil
A well-known German manufacturer of automotive headlights, “Xell”, identifies its products with the trade mark “OW” (OktoberWagen). A Brazilian company named Yois, engaged in the production and distribution of automotive parts, began negotiations with the German company in order to become the...
Cancellation of Industrial Designs
Bavarian Designs GmbH is a German SME involved in the design of containers in the food industry.
Coexistence agreement in Brazil
Over the last years, the Spanish brewery Aqua&Terra has capitalised on the current craft beer boom in Europe by successfully producing and distributing its star brand “Veralinda”.
Coexistence Agreement in Peru
An Italian company, Franklin & Marshall S.R.L., decided to enter the Peruvian market and applied for the registration of its trade mark MMM&F, for clothing, footwear and headwear (Class 25).
Copyright infringement in Argentina
Tour S.L. is a Spanish company that provides tailor-made fishing tours in Spain.
After a year of good results while running the business in Argentina, there was an increased interest in the fishing tour package offers in the Patagonian region.
Copyright infringement in Mexico
Iguana Ltd. is a UK-based communication agency that was willing to renew the corporate identity of Guanajuates, a client in Mexico. As a first step, they decided to redesign the company’s logo of the Mexican enterprise.
Creative commons enforcement in Brazil
João is a Portuguese blogger who has gained increasing reputation in the media sector. He publishes content, such as images, texts or videos on his blog under a Creative Commons BY (attribution) – NC (non-commercial) licence. This type of licence grants all potential users the right to share and...
Customs trade mark database in Mexico
Based in Cork, Brenan LTD is an Irish manufacturer popular among the English and Irish consumers for its kitchen tools. The company is commercialising a new product, which is expected to be released in Mexico soon through a local distributor. The owner has already obtained trade mark protection in...
Cybersquatting in Colombia
The French company “Louis Pingouin”, famous for its leather accessories (purses, shoes, wallets among others) has registered its trademark in almost all Latin American countries, including Colombia.
Deceptive use of appellations of origin in the Dominican Republic
Vittorio Brothers is a small family company located in the region of Parma in Italy. The establishment has produced Parmigiano Reggiano cheese for around a decade and they export their products to several countries, including the Dominican Republic.
Recently, the manager seemed concerned about a...
Design protection in Peru
Lope & James SPRL, a Belgian prêt-à-porter company, launched their collection ‘Montagnes’. This collection contained a 2-D monogram incorporated into textiles produced on an industrial scale.
Design registration in Chile
Flancox, a Bulgarian company focused on food packaging products, developed a new, unique packaging with different fruit shapes. The production costs were higher than expected. Hence, the SME’s CEOs had to reduce costs in other areas, particularly in intellectual property (IP) protection. For this...
Enforcing copyrights in Bolivia
Erik, a young Spanish chef living in Madrid, had been carrying out gastronomic and scientific research related to the properties of Bolivian highlands food products, and announced that he had finished his first draft of a book on the subject. He also announced that he was planning to print its first...
Franchise protection in Colombia
Esprimere, an Italian coffee shop, has registered their trade mark ‘PronTissimo’ (word mark) and their logo (figurative mark) with their national IP office. The company contacted local IP lawyers from Mexico, Venezuela and Colombia, since they are planning to expand to these three countries...
Fraudulent invoices in Brazil
Underground Kingdom S.L. is a Spanish company involved in the audiovisual business. The company filed an application to protect their trade mark in Europe and it was granted in July. As a part of their latest documentary, they wanted to include Brazilian music artists. In addition, they were...
Idea/expression dichotomy in Ecuador
Sam and Daisy, two young French artists, started negotiations with Cherryland, a well-known Ecuadorian company that organises outdoor activities. The parties held several meetings in Quito and, after analysing the whole portfolio, Cherryland’s representatives selected eight of the artists’ plays...
Invention exploitation beyond patents in Peru
Bravka, a Slovenian SME in the agriculture sector, developed an innovative technology to protect crops from frost. In 1991, one of the affected farmers decided to create a method to control frosts more efficiently and economically. The resulting machine was inspired by a hard frost that affected...
Intellectual property arbitration on patents
BleuBlancRouge, a French pharmaceutical SME, owns multiple patents, one of which was registered in Brazil through the Patent Cooperation Treaty. BleuBlancRouge has now signed a patent licence agreement with a Brazilian company and has decided to include an alternative dispute resolution (ADR) clause...
IP clauses in contracts
Uniseliz, SARL, a French SME focused on the importation of alcoholic beverages, signed an international sales agreement with a Cuban export company. The Cuban company agreed on selling a large number of “Sierra Madre” rum bottles. The trade mark of this rum was registered in the European Union as a...
Lack of patent protection
ARMAGE2 is a Spanish company that produces farming mechanical tools and owns patents and utility models concerning some of their technology, which they have registered in Europe, Argentina and Brazil. Their Argentinean supplier offered to start distributing two patented products in Uruguay, as they...
Liability of internet intermediaries for the sale of counterfeit products in Peru
Mercadodepulgas.com is a successful Spanish start-up that runs an online platform where users can buy and sell second-hand products. Sofas, bikes, electronic devices and the like are exchanged in the platform. The website and app have become very popular due to the ease of its use and its...
Patent conversion into utility model in Argentina
Pickup’s World, Ltd. is an SME established in Dublin and founded by three industrial engineers, who shared a common passion: vehicle designing. One of Pickup’s World’s partners, Alfred, who had worked for a leading German car manufacturer for several years, was aware of the increasing sales in...
Protecting video games in Mexico
RedSquare, a video game company headquartered in France, created the now famous psychological horror game “Visage” back in 2017. After having succeeded in French- and English-speaking countries, the company decided to have the script translated into Spanish in order to launch the game in Spain and...
Protection of non-traditional trade marks in Mexico
GalakTic, an Irish SME engaged in the beverage industry, has been successfully commercialising their drink in Europe for 5 years. They have decided to launch their product in Mexico. The distinctive shape of the bottle and the brand name used in Europe are to be used in Mexico too, as will be a new...
Software protection in Brazil and Mexico
GIS – Gestão Integrada de Seguros, is a Portugal-based SME with more than 30 years of experience in the development and commercialization of software products for the insurance market. GIS enjoys a well-established commercial and implementation network which extends to Spain, France, Poland and...
Technology transfer in Chile and Colombia
A young group of Dutch researchers created a start-up company called “LinkBro” within the field of telecommunications. The core of the business focused on a new payment technology for mobile phones, which was protected after filing an international application in the Netherlands Patent Office under...
Technology transfer in the footwear industry
Oval Shoes is a European SME based in Sweden and specialised in the design and manufacture of high-quality shoes. Largely, their success has been due to the good quality of their shoes, achieved with the use of a special technique for the treatment of the leather with which they are manufactured...
Trade fair Brazil
The German SME Recht attended the 2018 Bernie Fit edition in Brazil, an annual trade fair where sporting goods and fitness are exhibited. Among other products, Recht presented a new Pilates reformer machine: the Zen model. Although Recht had applied successfully for patent protection in Brazil for...
Trademark opposition in the Andean Community
Trisk Motor AG., a German SME producing spare parts for vehicles, is introducing its business in the Latin American market. In order to do so, they registered their trademark “TriskMotor” (Wordmark) in Peru, Argentina and Brazil within Class 12 of the Nice Classification.
Trademark registration in Colombia
DynaMeds, a Danish SME that develops packaging for drugs and medicines, was willing to expand its business to Colombia, Chile and Mexico, as these markets looked very promising for their products and services.
Trade mark registration in Chile
The Spanish SME Tortillas Bravas, S.L. owned the word trade mark LA GRAN BRAVA in Spain. The company decided to register this trade mark abroad too, in particular in Germany, the United Kingdom, the United States of America and Chile.
Trade secrets in Brazil
A Portuguese entrepreneur engaged in negotiations with a Brazilian company in pursuit of a joint effort in an innovation-related project. The parties signed a Memorandum of Understanding where they included the tasks each party was committed to develop,
the background each part would contribute to...
Trademark coexistence agreement in Bolivia
The Croatian SME “SUCHOC”, a producer of artisanal chocolates, filed a trademark application before the National Service of Intellectual Property of Bolivia (SENAPI), in order to protect its brand “KEKSI” in Bolivia – but did so without conducting a prior trademark search.
Unregistered designs
Laranjon is a European SME operating from Italy which focuses on the fashion industry. The marketing department of the company launched the new spring-summer campaign. New merchandising was created for this purpose, including a pen with a new, stylish and very attractive design for promotional...