Famous and Well-Known Marks Committee Organizes Panel in Paraguay on Risks of Genericide

Published: May 1, 2019

Lorena Mersan MERSAN Abogados Asunción, Paraguay

Paraguay’s National Direction of Intellectual Property (DINAPI), together with INTA’s Famous and Well-Known Marks-Latin America and Caribbean Subcommittee, organized a panel discussion titled “Risk of Genericide of Famous Marks.” The event, which took place on April 10, was held at DINAPI’s offices in Asunción, Paraguay. More than 160 participants were in attendance, including DINAPI officials, intellectual property (IP) agents, attorneys, and law students.

Panelists included José Luis Londoño, INTA’s Chief Representative Officer, Latin America and the Caribbean, Federico Berger (IPars Abogados en Propiedad Intelectual, Argentina), Carolina Montero (Abril Abogados, Spain), DINAPI General Director Joel Talavera, and DINAPI Industrial Property General Director Berta Davalos.

Mr. Londoño began the discussion with an overview of INTA’s initiatives. Then Mr. Berger gave a general introduction to the topic of genericide and the risk of famous marks becoming generic.

Next, Ms. Montero presented an overview of the European Union’s perspective on genericide. She highlighted specific EU regulations, as well as cases-such as KORNSPITZ, Ganchitos, and Bio-Danone-in which famous marks have been subject to cancellation due to genericide. She pointed out the vital importance for title holders to take active measures in preventing courts from declaring the genericide of their marks.

Mr. Berger discussed the current issues surrounding genericide in Argentina, and other relevant legislation in Latin America, specifically focusing on cases involving the NACHOS brand in Colombia and the recent CrossFit case in Brazil.

Finally, he offered tips for avoiding the genericide of marks. His advice included using the registered symbol ®; never using the name of a brand as a verb or in plural form, or citing a mark as an adjective; using the mark in a product line; and actively discouraging the use of the mark as a generic term.

INTA congratulates the DINAPI authorities and the outstanding working team for helping to organize this successful event.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association