INTA 2014: Why Chile fears the Madrid Protocol

Chile's “fear” of the Madrid Protocol was one of several updates on trademarks in Latin America at INTA's annual meeting in Hong Kong today, May 14.

Speaking on the final day of the conference, Ariela Agosin of law firm Albagli Zaliasnik in Chile said the country's absence from the Protocol “really needs to be discussed”.

“It will probably be, but hasn't been so far,” she said.

She admitted, however, that the Protocol is “not really on the agenda” in Chile, and that the Trans-Pacific Partnership and a pending new industrial property law are taking centre stage in the IP world there.

The pending new law, which would expand trademark scope and introduce a cancellation action for non use, will probably be approved “very soon”, Agosin predicted.

Moving on to border measures, she explained that there is a two-tier system in Chile. Under one, a trademark owner can file an action and ask a judge to seize alleged counterfeit goods, while under the other customs seize suspected fakes and notify right owners, which then have five days to file a case.

The first tier is “very slow” and not really working well, she said, but the second is much better, although IP owners have only five days to confirm the authenticity of the seized goods, which is “sometimes not enough time”.

In Mexico, the implementation of the Madrid Protocol has been “fairly smooth”, said John Murphy of Arochi Marroquin & Lindner. To date, 42 Madrid applications have been designated to local companies, he said, arguing that this “small” number could be due to lack of awareness, especially among smaller companies.

The number of applications designating Mexico as the office of origin, 5,770, is more impressive, he added.

The conference ends today.