I- Recurring practice in the region
During more than two decades working in industrial property, I have observed a phenomenon that, although it seems technical, has profound legal and economic consequences: the registration of generic, descriptive, or commonly used terms as trademarks.
What initially seemed like an isolated problem in Guatemala is now replicated in multiple Latin American jurisdictions. In recent conversations with colleagues from Colombia, Panama, and the Dominican Republic, I confirmed that the same situation exists in their countries, with very similar impacts on companies’ competitive dynamics and legal certainty.
II- Why are these terms registered?
There are different motivations. In some cases, applicants act in good faith, believing they have the right to protect a term associated with their business. They often receive advice from professionals without adequate expertise in intellectual property, which leads them to believe that exclusivity over generic or descriptive terms is viable.
In other cases, the strategy is more calculated: registering these terms to gain an unfair competitive advantage, whether through legal action, threats of lawsuits, or requests for financial compensation. This practice becomes a means of exerting pressure rather than a true mechanism for commercial differentiation.
III- Legal and economic consequences
When a generic or descriptive term is registered as a trademark, its owner is granted a power that should not exist, that of excluding other competitors from using that term in the marketplace.
The consequences include:
- Cease and desist letters (C&D): sent to competitors demanding immediate cessation of use of the term.
- Threats of litigation: even in the criminal sphere, they generate fear and unnecessary defense costs.
- Financial compensation: In some cases, payments amounting to thousands of dollars are requested.
- Market distortion: free and healthy competition is restricted.
Beyond legal disputes, the real cost lies in the impact on innovation and competitiveness: companies that could grow or differentiate themselves are limited by artificial monopolies on common words.
IV- Real cases in the region
In various Latin American countries, inappropriate registrations of clearly generic or descriptive terms have occurred. Although they do not always reach the press, these cases directly affect entrepreneurs and medium-sized companies that lack the resources to litigate.
V- Recommendations and next steps
The first step is to recognize that this is a structural problem. If intellectual property offices continue to accept these applications without requiring express waiver, the incentives to register generic or descriptive terms will continue to exist. Some necessary actions include:
- More rigorous examinations in national offices, with uniform and consistent criteria.
- Clear regulations that require applicants to expressly waive exclusivity over commonly used terms. This is already the case in Guatemala through Article 38 of the Industrial Property Law, Decree 57-2000.
- Specialized training for lawyers and agents who advise on the matter to avoid improper registration based on ignorance.
- Regional dialogue to share experiences and best practices, seeking regulatory convergence that strengthens fair competition.
VI- Final reflection
The improper registration of generic or descriptive terms is not a simple administrative error: it is a risk to free competition, innovation, and market transparency in Latin America.
As intellectual property professionals, we have a responsibility to raise awareness of this problem and to propose to clients the protection of a sign that is distinctive, original, and different, in order to differentiate themselves from the competition. After that, we can only hope that the client will listen and accept our recommendation.