A Look at Nontraditional Marks in Latin America and the Caribbean

To adapt to an ever-evolving technological and competitive world, nontraditional marks (NTMs) have become an attractive tool, as they can overcome frontiers and language barriers to build brand awareness, fulfilling a crucial marketing role. Affording adequate protection to these types of marks has therefore become important throughout the world, including in Latin America and the Caribbean.

Research reveals that while protection for NTMs such as those for color, scent, and sound is not uniform throughout Latin America and the Caribbean, many countries have a good legal basis for evolution in this area. This article provides an overview of the registrability of NTMs in the region and details registration issues related to 3D, color, position, sound, olfactory, motion, hologram, taste, and texture marks.

Three-Dimensional Marks

Three-dimensional marks are one type of NTM with the greatest practical relevance in Latin America because, as long as there is use, they allow for a perpetual protection of distinctive shapes. In contrast, the coverage provided by other types of intellectual property (IP) rights, such as copyright or industrial designs, are limited in time. Many countries have permitted the registration of NTMs for some time, the most notable exception being Venezuela, and until recently, Chile, where law makers have modified the trademark law to make it possible to protect NTMs.

Functionality issues, which are frequently encountered when 3D marks are assessed in Europe and in the United States, do not seem to pose similar concerns in the region except for Brazil, the Dominican Republic, and Mexico.

Although most Latin American jurisdictions deem that 3D marks must be inherently distinctive to be registrable as such, some countries, like Argentina, have decided that if the shape has acquired distinctiveness through use, it can be afforded trademark protection.

A prospective registrant of a 3D mark must reproduce it as accurately as possible, with particular requirements varying from country to country, which may include having to provide different views of the mark or a description.

Color Marks

While almost every country in Latin America allows the registration of color combination marks, only a group of countries permits single color marks.

The Andean Community countries, which are Bolivia, Columbia, Ecuador, and Peru, will grant protection to a single color as a mark provided it is limited to a specific shape or if it has acquired distinctiveness. There is a similar requirement in Argentina, Barbados, the Dominican Republic, Guatemala, Haiti, and Honduras, to allow the registration of single-color marks.

Some jurisdictions, such as El Salvador and Paraguay, also require acquired distinctiveness to register color combination marks.

Although filing requirements change from jurisdiction to jurisdiction, most countries only request that the applicant provides the graphic representation of the mark in color, without specifying the PANTONE color or any other internationally acknowledged color code.

The best standards for prosecution and protection of color marks in Latin America come from the Andean Community countries due to a good legal framework, clear guidelines, and specific case law. Colombia, in particular, stands out for its searchable online database and extensive number of registrations; the most prominent are two registrations that protect PANTONE 183C, limited by the shape of a plastic bottle and the shape of a glass to identify apple-flavored beverages.

Of the countries surveyed to date, Venezuela is the only jurisdiction that does not allow the registration of any type of color marks.

Position Marks

Although their respective laws do not specifically provide for position marks, Argentina, Bolivia, Brazil, Colombia, Costa Rica, the Dominican Republic, Ecuador, Guatemala, Nicaragua, Panama, Paraguay, Peru, and Uruguay all accept this type of mark if, in general terms, it is inherently distinctive. Paraguay and Chile are exceptions: they require position marks to have acquired distinctiveness to be eligible for registration.

It is important to highlight that up to now, owners of position marks have been seeking protection in Brazil through 3D and/or figurative marks since the law does not expressly provide for position marks. However, after conducting a public consultation, the Brazilian Trademark Office published a directive on September 21, 2021, effective October 1, 2021, which regulates the registration of position marks in Brazil.

Chile amended its IP law in 2021 to admit position marks. Although not explicitly listed as protectable, position marks may be considered registrable if they are intrinsically distinctive or if they have acquired distinctiveness through use in Chile.

Of the jurisdictions surveyed to date, Barbados, El Salvador, Haiti, Honduras, Mexico, and Venezuela have yet to change their laws to permit the registration of position marks.

Sound Marks

Most Latin American countries expressly include sound marks as registrable signs and will grant protection as long as the sounds are deemed capable of distinguishing goods or services of one company from those of other companies. They also need to meet the requirement of graphical representation to be protected.

Chile, Colombia, Costa Rica, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, and Peru consider that sounds can be inherently distinctive and may not require proof of acquired distinctiveness to be registrable.

Argentina, the Dominican Republic, Paraguay, and Uruguay do not specifically mention sounds among the signs that can be registered. However, their legal definition of what can be considered a mark is broad enough to allow the registration of this type of NTM.

Barbados and Brazil do not yet protect sound marks because their laws only permit the registration of trademarks consisting of visually perceptible signs. Venezuela and Haiti’s laws do not include them among the signs that can be registered.

Each jurisdiction has its own regulations and guidelines; however, graphic representation is generally required, and must be clear, unambiguous, self-contained, easily accessible, comprehensible, permanent, and objective. Musical notations or sonograms may also be registered.

Scent Marks

As with sound marks, most countries will allow scent marks to be registered provided that they can be graphically represented in a clear, unambiguous, self-contained, easily accessible, comprehensible, permanent, and objective way.

Among the countries researched for this article, Brazil, Venezuela, Barbados, Haiti, and Honduras do not admit scents as trademarks.

Filing requirements are not uniform in Latin America; hence, depending on the territory,  applications can be found that include chemical formulas, descriptions, and even samples of the aroma. For example, in Mexico, Hasbro Inc. applied for a registration in Class 28 for “an unmistakable scent formed by a sweet, somewhat mossy combination of a fragrance with vanilla tones, with small cherry accents and the natural smell of a salty wheat-based dough” (Registration No. 1966698, granted on February 5, 2019). In Argentina, Macroplast SA registered “the smell of orange blossom” to identify lubricants in Class 4 (Registration No. 3142589, granted on February 17, 2021).

In addition to the description, the applicant submitted a sample of the scent. And, in Colombia, the Universidad Industrial de Santander (UIS) applied for the registration in Classes 3 and 5 of a scent mark using the following description: “It is a fragrance of natural origin, which incorporates essential oils obtained from aromatic plants. It is a fragrance of the citrus floral olfactory family. The top notes are ylang-ylang, neroli and orange; the heart notes are fruity jasmine, citrus herbaceous, fresh lemon and rose; the base notes are musk, patchouli, woody, earthy and vetiver.” UIS also filed a chromatographic description of the scent (Application No. SD2017/0012803, filing date February 22, 2017). This application was still pending examination at the time of publication for this article.

Applications for the registration of scent marks are rare. This, combined with the amount of evidence required to establish that a scent functions as a trademark, as well as the graphic representation difficulties, resulted in only a low number of olfactory marks obtaining registration in Latin America. Nevertheless, interesting examples still exist.

For example, in 2004, the Argentine courts rejected oppositions based on lack of distinctiveness against six applications filed by L’Oréal to register various fruit smells applied to shampoo containers in Class 3. L’OREAL v. ANTIALL S.A., Federal Court in Civil and Commercial Matters No. 4, Clerk’s Office No. 8, June 17, 2004.

The court stated that scent marks had to be described in detail, with specification of the chemical components of the fragrance. It deferred to the trademark office for the determination of the necessary steps to describe such marks adequately, which requested the applicant provide the chemical composition of the fragrances, labels bearing the fragrances, samples of the shampoo containers, and any other document that could help identify the fragrances. Registration for all six applications was granted in 2009.

Other NTMs

Motion marks are considered inherently distinctive in almost all the jurisdictions. However, they cannot be registered in Barbados, El Salvador, Haiti, Honduras, Mexico, or Venezuela, because local laws either exclude them from registration or do not consider them among signs that are registrable.

Holograms are generally considered protectable in all jurisdictions, with the exception of Honduras, where such signs cannot be registered as trademarks.

Tastes cannot be registered in Barbados, Brazil, the Dominican Republic, El Salvador, Haiti, Honduras, Mexico, or Venezuela. There are no specific provisions that forbid the registration of this type of mark in the remaining jurisdictions.

Textures cannot be registered in Barbados, Brazil, El Salvador, Haiti, Honduras, Mexico, or Venezuela. In the remaining countries, texture trademarks are not expressly banned and therefore are eligible for registration.

Conclusion

The review of existing case law and legislation shows that Latin America protects a wide range of NTMs. Trademark offices there have allowed the registration of a significant number of 3D, position, sound and color-combination marks, motion marks, texture marks, holograms, and even olfactory marks.

While it appears that most countries in the region still need to change their legislation significantly to allow for the registration of NTMs, investigations reveal that obtaining registrations for NTMs in Latin America can be significantly less complicated and, as a result, cheaper than in other parts of the world.

Some jurisdictions have adopted clear guidelines to assist applicants with the registration of NTMs. Most jurisdictions still need to develop similar guidelines, a task they can accomplish progressively once the number of applications increases.

Though inadequate technology can hinder trademark offices in most countries, others, including Colombia and Mexico, have already adopted advanced platforms that allow searching online for NTMs.

In general, the protection of NTMs in Latin America has adequate legal grounds and a very promising future. Therefore, trademark owners should consider pursuing registrations in these jurisdictions.

Editor’s Note

This is the first in a series of feature articles authored by INTA’s Non-Traditional Marks Committee, in which they discuss the protection and enforcement of NTMs in various regions throughout the world. Upcoming articles in this series will cover Asia-Pacific, Canada, India, and the United States.

The Non-Traditional Marks Committee, Latin America and Caribbean Subcommittee has been monitoring the registrability of NTMs for several years, gathering information that is periodically included in this matrix.

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.

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