International Intellectual Property – Bolivia – Jorge Luis Soruco Auza

SORVILL is a law firm specialized in Intellectual Property Law. With more than 40 years of experience, we are known for offering a comprehensive, efficient, timely and personalized service and advice, taking care of the interests of our national and international clients to the smallest detail.

Our team is specialized in trademark registration; patents; industrial designs; copyrights; domain names; sanitary registration; utility models; trade names; commercial slogans; litigation in all instances (opposition, revocation appeals, hierarchical appeals, cancellations, invalidity, infringements, border measures), as well as our Watch Service for our client’s portfolio.

Currently in Bolivia, a country where there is a lot of informal trade, the protection of international trademarks before the relevant authorities is becoming widespread.

As a result of these protections, a series of infringement actions, border measures and more precautionary measures are being taken to protect the rights of the owners. Among other cases, we have seen that when smuggled goods enter the country, many importers have also wanted to protect their market by registering trademarks, thus preventing such trademarks from being used by their peers.

This led to many actions of opposition, cancellation and even nullities, within the legal system on behalf of the real owners of important trademarks, which, being known, are the attraction of infringers.

Our firm has focused on maintaining the protection of trademark rights not only through the Watch Service and supervision of trademarks, but also by advising our clients on the actions to be taken to defend their infringed rights.

Nowadays, intellectual property needs special attention in terms of border control measures. These measures can be defined as those processes that come to be applied by countries, allowing national customs to seize both the entry and exit of pirated or counterfeit goods in different commercial markets. International regulations such as TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) provide a basic legal framework for border enforcement. An interesting aspect of this agreement is that countries must apply the legal framework according to their internal regulations to safeguard commercial channels. Thus, the agreement empowers customs authorities to withhold or destroy goods that violate intellectual property laws; however, this action will be coordinated with the holder of the goods, authorizing him to request the relevant authorities to take the necessary actions.

In this line, the merchandise that travels through the international markets will be unpredictably tied to the intellectual property regulations. Currently, the world market suffers from piracy and counterfeiting activities that represent between 5% and 8% of world trade, entering the informal trade.

The effectiveness of these cross-border measures is closely linked to cooperation between right holders and customs authorities; in this way, IP right holders can protect themselves from huge losses caused by counterfeit products on their income, as well as on the reputation and goodwill they obtain for their high-quality products. Intangible asset registration and border protection is a smart move to develop a global brand protection strategy.

Thus, SORVILL’s concern to be able to advise our clients on the importance of understanding intellectual property infringement.

We are confident that the registration of a trademark is fundamental for its protection, however, without vigilance, advice and an ex-post strategy, there will not be a strong protection of the distinctive sign.

As it is well known, a trademark must have essential functions to have a positive impact on the final consumer, for which it is necessary to consider the function indicating the business origin, a function that grants the trademark holder the exclusivity of being able to assign the distinctive sign in question to the products and services it intends to protect.

In the same line, we have the function indicating quality, which refers to the guarantee that the products or services bearing the trademark, certifying that the products or services come from the same company.

On the other hand, the GOODWILL function, or REPUTATION, must be considered, essentially linked to brands that have high prestige, which is the result of how it was made accessible to the public and the channels that were used to reach such reputation.

Finally, we are faced with the ADVERTISING function, which has an important impact when defining a market study; advertising is not currently understood without a brand or sign that indicates the product or service to be advertised.

At SORVILL, we focus on protecting the intangible assets of our clients, providing them with an effective trademark protection strategy; in this way, to have a strategic presence in the market, it is important to carry out a search for prior art or viability of the trademark before filing an application, and thus be successful in obtaining the registration.

After establishing the importance and viability of the trademark, at SORVILL we know that once the intangible asset is registered, it is of utmost importance to constantly monitor it. Therefore, the so-called Watch Service is a service that allows us to take care of the sign throughout its validity. We believe that once the trademark has been applied for, it may suffer potential risks that may result in future damage to the sign. The threats that are presented tend to achieve a risk of confusion and/or association, either in the denomination, phonetic or visual aspect of the trademark, which leads to a need for vigilance.

The importance of participating in the different international conferences is recognizable when advising our clients. As we have international clients dedicated to different areas of the industry, it is necessary to be up to date to provide effective assistance.

SORVILL also takes important attention to constant training in various platforms, courses, and workshops, which allows us to be constantly updated in the area, but above all to have harmonization with national systems outside Bolivia related to IP.

SORVILL is an active member of prestigious intellectual property associations such as: INTA (International Trademark Association), ASIPI (Interamerican Association of Industrial Property), AIPLA (American Intellectual Property Law Association), and ABPI (Bolivian Association of Industrial Property), which allow us to be constantly updated in intellectual property, to give the greatest benefit to our clients.