INTA Dialogue on Registering Marks with Customs in Latin America

Published: December 16, 2020

Ana Escobar Romano FERRERE BOLIVIA Santa Cruz, Bolivia INTA Bulletins—Latin American Subcommittee

Being a member of INTA means having access to information pertaining to trademark practice all over the world. As part of this effort, INTA’s Anticounterfeiting Committee, through its Latin America and Caribbean Subcommittee, has been developing a project on best practices for customs recordation processes.

In line with this initiative, the Subcommittee recently held a policy dialogue on anticounterfeiting and registering trademarks with customs officials in Chile, Colombia, and Mexico. Alfredo Medina (Medinalegal, Mexico) moderated the event held on October 27, which featured prominent practitioners Fernando Triana (Triana, Uribe & Michelson, Colombia) and Andres Grunewaldt (Silva, Chile), and the Mexican Customs Investigation Administrator, Maria Eugenia Maldonado.

The dialogue was part of an ongoing project led by Vanessa Cabrera (Troncoso Leroux, Dominican Republic), a member of the Latin America and Caribbean Subcommittee. The project identified countries with best practices in place for customs recordation, evaluated them, and shared the knowledge with countries whose customs recordation practices stand to benefit. The project aims to connect brand owners with customs authorities and give them a broader understanding of how these offices work.

The event walked through the systems in Chile, Colombia, and Mexico for trademark recordation at customs and how they effectively address counterfeiting. In all cases, recordation is voluntary and helps trademark owners work with customs offices to facilitate possible actions on counterfeit products.

The speakers noted that trademark recordation at customs ultimately means a better option for enacting border measures, which is essential for stopping infringing goods from entering markets where it is much more difficult to seize counterfeits.

“Customs is the first line of defense—where the products arrive and before they are atomized in the market where they become impossible to reach in their entirety,” Mr. Medina said.

The event, as well as the continuous work led by the Anticounterfeiting Committee, highlights how, if a country has functional customs trademark recordation processes in place, investigations and actions in relation to counterfeit products can be enacted from the arrival of the infringing goods. This can give trademark owners more control over stopping the diffusion of products in the market. If customs has a clear and direct pathway to communicate with trademark owners, then it is in position to start any action within the timeframe established by law.

In addition, the speakers observed that for registrations to be even more successful, it is necessary to constantly train authorities on how to identify counterfeit goods so they can be prepared to alert owners in their databases.

The event had a significant turnout, particularly among brand owners. The Subcommittee held similar events in Brazil and Guatemala in the past and expects to host more in the near future.

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

© 2020 International Trademark Association