HSM IP Provides COVID-19 Update for Caribbean and Latin America

As COVID-19 impacts the Caribbean and Latin America the intellectual property (IP) world keeps on spinning, with IP practitioners and IP offices and registries finding new ways of working to ensure that the rights of brand owners and innovators are still protected during the global crisis. Whilst things naturally change and develop daily at different paces in each respective country, with local governments taking steps to ensure that proportionate protective measures are put into place to protect citizens and residents, HSM IP is also constantly monitoring the situation in each country from an IP perspective, to ensure that clients have the most up-to-date information about what is possible.

Our team at HSM IP is available to help clients find the most practical solutions to the various issues posed. In this article, we hope to give you a flavour of the key types of approaches being adopted to date so that you have an idea of what you may expect.

As those with international IP portfolios will be aware, many countries in this part of the world are not yet set up for online filing and much of the work is typically conducted through the physical submission of original documents by hand, which often need to be notarised and/or legalized in advance of submission.  Given the various curfews in place, this can make it very difficult for IP practitioners to make such filings even where the registries are still operational.  Some of the countries which can already process certain applications online include the likes of Argentina, Brazil, the Caribbean Netherlands, Chile, Colombia, Curacao, the Dominican Republic, Ecuador, Puerto Rico, St. Maarten and Uruguay.

However, countries which usually fall into the latter category, such as Antigua and Barbuda, have now implemented progressive measures to ensure that trade mark applications can be submitted via email  during their current lockdown period with an undertaking that fees and the original application with supporting documents will be submitted at a later date. The date of receipt of the email with the scanned application form and supporting documents will be honoured as the filing date, even though applications may not be processed until the Registry reopens.

Furthermore, if priority is claimed, the proprietor will have three months to submit the supporting documents once the local lockdown period is over. Similar steps have been taken in Anguilla, the Bahamas and in the Turks and Caicos, with the submission of applications by email being permitted during this period. Trinidad and Tobago has implemented a new online filing and e-payment system. It seems that the pandemic is pushing the rate of modernization in this part of the world.

Other registries have been able to stay open for reduced hours to date. For example, the Bermuda Registry, whilst still requiring the submission of documents by hand, has been accepting new filings at set time-periods on a couple of designated days per week. However, with the country set to go into 24/7 lockdown for two weeks as of 4 April 2020, it is yet to be announced whether the Registry will accept filings made by email during this period.

The Cayman Islands IPO (‘CIIPO’) was also working on a reduced-hours basis until 25 March 2020. At the time of writing CIIPO is set to tentatively reopen on 6 April and all filings made by email during the period of closure will be processed thereafter. The Ministère du Commerce et de l’Industrie in Haiti was completely closed until this week and is now operating on a reduced hours basis.  The Bureau of IP in Suriname is also currently working on a reduced-hours basis.

Elsewhere, registries are closed completely until further notice and are not currently accepting new filings and applications. At the time of writing, this is the case in Aruba, Barbados, Dominica, El Salvador, Grenada, Guatemala, Honduras, Montserrat, Panama, Peru and Venezuela. However, most registries are automatically extending key deadlines (e.g. renewal and office action deadlines) during the period of closure.

This is the case in Barbados, Bermuda, the BVI, the Cayman Islands (deadlines falling between 26 March and 30 April 2020 will currently be extended for a period of 30 days from their expiry), Cuba (deadlines falling between 27 March and 4 May 2020 will be extended to 5 May 2020), the Dominican Republic, Ecuador, Guatemala, Jamaica and Puerto Rico, amongst others. Trinidad and Tobago will comply with all extension of time requests during the shutdown period (29 March to 15 April 2020) other than in respect of opposition deadlines and priority filing deadlines, which are determined by statute and will not be extended.

This article should be treated as a rough guide only as things are changing daily. HSM IP will continue to monitor developments in each country and is ready and able to provide tailored advice on specific queries as and when they arise. For further updates and information, please contact our Senior Associate, Sophie Peat at speat@hsmoffice.com.