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Introduction: a paradox in Trademark Law
In principle, trademark rights are territorial: to oppose the registration of a sign in a country, one must have an existing right in that same territory. However, within the Inter-American region, an exception exists. Thanks to the General Inter-American Convention for Trademark and Commercial Protection of 1929, it is possible to obtain the rejection of a trademark application, even without having a locally registered title, provided that certain conditions are met.
The Inter-American Convention of 1929: an overlooked but powerful tool
The General Inter-American Convention for Trademark and Commercial Protection, adopted in Washington in 1929, currently includes nine ratifying states: United States, Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru. These countries have officially committed to applying its provisions, enabling them to benefit from the protection and opposition mechanisms provided by the Convention.
In contrast, some signatories of the Convention, such as Bolivia, Brazil, Chile, Costa Rica, Dominican Republic, Ecuador, Mexico, Uruguay, and Venezuela, have only signed the text without proceeding with ratification. While their signatures indicate a willingness to support the principle of trademark protection across the Americas, these countries are not legally bound to apply the Convention’s rules, including the opposition mechanism.
The primary objective of the Convention is to provide effective protection against abusive trademark filings within contracting states. It complements and enhances the Paris Convention by introducing a unique opposition mechanism. This mechanism relies not only on the existence of a registered trademark but also on the knowledge of the prior sign by the applicant and the likelihood of confusion. This system offers broader protection by reducing the need for local registration, in contrast to the Paris Convention, which primarily relies on registration priority.
Article 7: Opposing a Trademark Application without local rights
Conditions for implementation
Article 7 allows a trademark holder to oppose the registration of a similar sign in another contracting state, provided that the following conditions are demonstrated:
- The holder has a protected right (through registration or use) in one of the contracting states;
- The contested applicant had knowledge of this right at the time of filing;
- The goods or services are related and likely to cause confusion.
Proof of knowledge of the prior sign
The central element here is knowledge. It is not necessary to prove worldwide fame, but rather to provide concrete evidence (commercial contracts, email exchanges, trade show participation, advertising campaigns, regional market presence). This aspect fundamentally distinguishes the Inter-American Convention of 1929 from the standards of the Paris Convention, which focuses more on registration priority.
Concrete examples and recent Case Law
- COHIBA Case (2022-2025, United States): The Cuban trademark holder successfully had trademarks registered by a third party in the United States canceled based on the 1929 Inter-American Convention. The judges recognized that the knowledge of the sign and the likelihood of confusion took precedence over the absence of prior local registration.
- SULA Opposition (2020, TTAB): A Honduran trademark holder invoked Articles 7 and 8, which was examined by the U.S. Patent and Trademark Office (USPTO). Although the request failed on product similarity, the principle was upheld: use in one contracting state may be sufficient to challenge a filing in another.
These decisions illustrate the vitality of a text often considered outdated, but still usable to prevent opportunistic filings.
Strategic considerations for Trademark holders
The application of the 1929 Convention offers several advantages:
- Neutralizing bad faith filings without having to pre-register the trademark in all contracting states.
- Expediting oppositions with a clear and recognized legal basis.
- Reducing international protection costs, by focusing filings in strategic countries while benefiting from a conventional shield in others.
However, this protection requires solid evidentiary preparation and a mastery of the procedural timelines of each office.
Conclusion
It is not always necessary to justify local trademark rights to win an opposition: the Inter-American Convention of Washington 1929 proves this. This tool, still underused, should be integrated into any trademark protection strategy operating between Latin America and the United States.
Dreyfus & Associés assists its clients in identifying the most effective legal foundations for protecting and defending their intangible assets.
Nathalie Dreyfus with the support of the entire Dreyfus team
FAQ
1. Which countries are parties to the 1929 Inter-American Convention?
Ten countries, including the United States, Cuba, Colombia, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru.
2. Do you need to register your trademark locally to benefit from the Convention?
No. A registered or recognized use in one contracting state may be sufficient to oppose elsewhere.
3. What is the difference between the Paris Convention and the Washington Convention?
The Paris Convention often requires proof of fame. Here, only the knowledge by the applicant and the likelihood of confusion are required.
4. How do you prove the applicant’s knowledge of the sign?
Through any objective evidence: commercial exchanges, contracts, trade shows, regional advertising campaigns.
5. Can you invoke the Convention outside of signatory countries?
No, its effect is strictly limited to contracting states.