AIPLA - AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION
2011 Intellectual Property Report for South America
Joaquim Eugenio Goulart – Chair
jgoulart@dannemann.com.br
Partner at Dannemann, Siemsen Advogados
www.dannemann.com.br
Rafael Pastor – Vice-Chair
rafael.pastor@bakermckenzie.com
Señor Associate at Baker & McKenzie (Santiago – Chile)
www.bakermckenzie.com
South America Subcommittee
IP Practice in Latin America Committee
1- ARGENTINA:
1.1. The so called "Repetition Marks" (Jorge Otamendi) published on the Marca Sur
International 2011.
In re "Roemmers S.A. c/Laboratorios
Casasco S.A. s/withdrawal of opposition"
(Expte. 868/09), the defendant, owner of the
trademark
DIBAFLEX
had
opposed
registration of DIVAXEL filed by the
claimaint. Roemmers filed a Court action to
obtain the withdrawal of the opposition and
further required that, in case the Judge
considered the conflicting marks similar, the
opposing trademark should be declared null.
The Argentine Trademark Law establishes
that any interested party may require the
lapsing of a registration that has not been
used within the period of five years
preceeding the claim. In other words, the owner of a registration should prevent a term of 5
years without use of its mark in order to avoid the risk of a lapsing action.
To prevent the cancellation, various local pharmaceutical companies followed an objectionable
practice, which is filing a few days prior to the 5 year term, a fresh application for the same
trademark with a small graphic variation, without having ever used the mark. This practice
allowed them to secure an unassailable registration, despite the fact that the earlier registration
could be attacked.
The first Instance Judge found that the conflicting marks were not confusingly similar and did
not analyze the nullity of defendant’s registration. However, The Court of Appeals reversed that
decision and deemed the conflicting marks confusingly similar. Consequently, the court referred
to the nullity petition and stated that defendant’s conduct "directly infringes the purposes of the
Trademark Law and its spirit, and interferes with the public interest: that unexploited
registrations are available for those with a legitimate interest in using the mark that has returned
–by it’s lapsing- to the general domain". It further stated that the nullity of the registration "is not
impeded by the fact that the plaintiff did not oppose the application...". This decision confirms a
correct criteria, that should end a practice contrary to the Trademark Law.
1.2. Changes In Mediation Procedure in Argentina (Alejandro M. Breuer - Moreno) published on
the Marca Sur International 2011.
For almost 30 years, the official notification of the opposition opened a “one year term” for the
applicant to obtain the amicable withdrawal of the opposition or, in lack of settlement, contest
the opposition at Court. The introduction of the mediation process did not affect this procedure:
the mediation had to be completed within the mentioned one year term. Otherwise, the
abandonment
of
the
application
could
not
be
prevented
by
litigation.
Law 26.589 issued on April 15, 2010, amended the procedure, though the law has not yet been
implemented by the administration. At present, initiating the mediation proceeding (i.e.: a formal
citation forwarded by the mediator to the opponent) suspends the referred “one year term”,
which
is
resumed
20
days
after
the
mediation
process
is
concluded.
In order to address the matter, the Trademark Office (I.N.P.I) issued Disposition 2038/10 on
November 30, 2010, which requires that the applicant informs -when filing any withdrawal of
opposition or complaint after the referred “one year term”- the exact date on which the period
was suspended as well as the duration of the suspension, so that the Examiner can confirm
whether
the
application
should
be
declared
abandoned
or
not.
As a consequence, the “one year term” is now extensible, so that:
a) applicants can provide last minute instructions to initiate the mediation thus preventing the
abandonment of opposed applications;
b) opponents and third parties will have to await longer to determine if a given application has
been abandoned or not.
In order to provide certainty to the parties involved, the Argentine Association of Trademark
Agents, recommends -whenever possible- not to resort to the extension of the one year term.
Twelve months should prove sufficient to negotiate an amicable settlement or comply with the
mediation and initiate the Court action.
1.3. Importations Constitute Patent Working (Martín Bensadon and Ignacio Sanchez Echagüe,
Marval, O'farrell & Mairal, Buenos Aires) published on World Intellectual Property Report 2011.
The importation of a patented product constitutes patent working in Argentina. This was the
decision of Division 11 of the Federal Court of Appeals on Civil and Commercial Matters in the
cases Ipesa SA v. Ishihara Sangyo Kaisha Ltd (Docket No. 6630/98) and Ishihara Sangyo
Kaisha Ltd v. Ipesa SA (Docket No. 885/2000).
The case at stake put to rest a thirty year old debate regarding the characteristics a patent
working should fulfill in order to avoid its lapsing due to lack of working. Under the previous
patent law (Law No. 111, abrogated in 1995), the lack of working for more than 2 years would
result in the lapsing of the patent. The entry into force of the Paris Convention did not change
the situation since the precedent case law considered that Article 5.A.3 was not self-executing
in Argentina as mandatory Iicenses were not regulated.
The present case involved Ipesa SA, an Argentine company which sold a herbicide, and
Ishihara Sangyo Kaisha Ltd, a Japanese company owner of several Argentine patents related to
pyridine sulfonamide compounds and herbicidal compositions. These two companies filed
c1aimsand counterclaims where Ipesa essentially submitted that Ishihara's patents were null
and void due to lack of working, and as such, Ipesa did not infringe the abovementioned
patents. In opposition, Ishihara stated that its patents were valid and enforceable, and thus
Ipesa was infringing them.
The decisions of courts in the first and second instances both ruled in favor of Ishihara – thus
concluding an old patent debate in Argentina. The second instance court's decision, rendered
December 3, 2009, stated that: " ... there is patent working when someone sets up a factory for
the manufacturing of patented products as well as when someone negotiates the patented
products, either directly or through Iicenses for third parties to carry out the manufacturing
process and for the patent holder to take care of the negotiation and selling stage, either
through importations acts or not, by putting the products on the market for its own benefit and
for the community to buy and use the patented products."
Moreover, the Federal Court of Appeals held that there will be patent working when the
patented product is genuinely put on the market, allowing the right holder to obtain a benefit,
and without taking into account whether the product is manufactured in Argentina or imported.
Ishihara imported considerable amounts of the patented product between 1988 and 2000, for its
own benefit and to supply the market, which excluded the suggestion of nominal supplies to the
market merely with the aim of complying with the working requirement.
Finally, the court considered irrelevant the fact of whether the importation had been performed
by the right holder or a third party. In this case, the importations had not been made by Ishihara
but one of its subsidiaries and a third party.
2- BOLIVIA (Enrique MacLean Soruco – Orpan1)
2.1. SENAPI´S biggest worry in regard to the low number of domestic applicants
Not long ago, Bolivian media published the ever so small amount of local applicants; ninety
percent of the applications filed at SENAPI are foreign.
Such a fact does not undoubtedly lie on the financial reality of SENAPI, which, in fact benefits
from the great majority of applicants being foreign, who pay twice as much as Bolivian
applicants.
We must then assume that this is a political statement since the current government has clearly
shown a decisive interest to encourage Bolivian small business men and women under a “Plural
Economy” (Public, Private, Community and Cooperative)
The response to these circumstances from SENAPI has been to organize several different
events so that local entrepreneurs may have access to information regarding Intellectual
Property and to rely on this institution for such purpose. Many of such events take place at fair
venues which are attended mainly by handcrafts people and small and medium size business
men and women.
Although it is quite clear that Bolivian businesses people are not very familiar with the benefits
of Intellectual Property, it would not be right to claim that this is the main basis for such a
dispropotiante number of foreign and local applicants. The fact is that during these past two
years there has indeed been an increase of applications filed by small and medium Bolivian
nationals, mainly within small and medium size business people. Such fact promoted a series of
nationwide trade fairs to enlighten people on Intellectual Property issues. The result of this
campaign has been a good number of small and medium sized entrepreneurs filing applications
at SENAPI the Bolivian Intellectual Property Agency .
The main grounds for such a disproportionate number of applications is undoubtedly the size
and relevance of Bolivian economy via a vis those countries that export goods and services into
Bolivia. Basically, Bolivia exports raw materials, and the local market has not created the
necessary demand of goods and services (Therefore Trademarks and patent) to interact with
other countries which have surpassed the industrialized goals and export added valued services
and manufactured products into Bolivia.
Another issue, which is closely linked to the first one, would be a lack of domestic investment in
research and innovation. Such factors are clearly shown in the applications filed for patents at
the Intellectual Property Agency in Bolivia. Insofar as entrepreneurship, the investment of new
products and services is reflected on those good and services for local consumption and export.
Bolivia has not yet developed the necessary encouragement towards research and business,
basically little entrepreneurship incentives (High bureaucracy, corruption, political uncertainty in
regards to the private sector, etc.)
In general, it is a fact that 90% of the applications filed in Bolivia are foreign; however this does
not actually show a clear understanding of the Intellectual Property systems abroad. If
compared, the applications made in Bolivia vis a vis those filed by Bolivia’s business partners,
mainly neighboring Andean countries, Bolivia shows a disproportionate low number of
applications. Authorities should analyze and reflect on such numbers, since it would be futile to
isolate the problem as such, but should be regarded as an issue of trust and reliance of the
Intellectual Property system established in this country.
It is obvious that a foreign investor or businessman (Whether domestic or foreign) would be
prompted to file Intellectual property protection in a country that does not only hold a basic data
base of Intellectual Property rights, but which grants the applicant the security and protection of
its rights. We may, then infer that the Bolivian Agency cannot and should not limit its scope as
1
This article was published originaly in Marcasur International:
http://www.marcasurmi.com/en/articles/bolivia/SENAPIS_biggest_worry_in_regard_to_the_low_number_of_domestic_a
pplicants_
an institution to gather small businesses and handcrafts entrepreneurs, but grant them, and the
rest of such applicants, effective tools and means to fight counterfeiting, knock offs and
plagiarism, as well as many other issues that have a direct effect on Intellectual Property rights.
2.2. Bolivian Folk Dances and Intellectual Property2
The protection of folklore as a cultural patrimony has always been an issue that has generated
throughout history, great susceptibility among Bolivian nationals who have made traditional folk
dances a part of their national identity. Such dances are manifested through various times of the
year and celebrations such as the Oruro Carnival, the festivity of “Gran Poder”, the University
“Entrada”, the Festivity of Urkupiña, and even on an international level, in urban venues with a
high number of Bolivian residents such as Buenos Aires, Santiago in Chile and even
Washington DC and New York.
The great diversity of dances and costumes, is undoubtedly one of the greatest and most
important distinctive traits of Bolivia, which in the case of the Oruro Carnival, has been named
by UNESCO as an Oral an Intangible Cultural Patrimony of Humanity.
The Bolivian government has recently proclaimed a law declaring five folk dances as Intangible
Cultural Patrimony. This has caused great satisfaction in the people directly involved since they
had for very long waited for some kind of legal protection against “plagiarism” of these dances
by neighboring countries. Thus, this new law has granted an Intellectual Property protection
thereof.
Nevertheless, this new law does not materially contribute since there is already a Law dating
back to 1992, Law 1322 in relation to copyrights. This proclamation does not fill the legal void,
but is more of a palliative in benefit of a big number of people that resent such plagiarism
outside Bolivian boundaries.
There have been several controversies among Bolivia, Chile, and Peru in regards to the
national origin of folk dances, mainly the “Diablada”. The Bolivian promoters of folk music and
dances have constantly claimed that Peruvian and Chilean folk musicians have wrongly stated
that this dance is not of Bolivian origin, but their own. The result has been a campaign to
pressure the government to acknowledge the true Bolivia origin thereof.
It is within this context that a heated debate has risen insofar as the legal framework to be used
to remedy this situation. It is evident that a Bolivian law, does not have any legal effects on
other nations or countries, and thus the situation can hardly be opposable to those that claim
that such dances are not of Bolivian origin.
Some Bolivian folk groups have requested that this situation be settled within the Intellectual
Property protection regime and the intervention of the WIPO. Save the difference in legislation
with all countries involved, it would be reasonable to assume that to seek protection of folk
dances through the Intellectual Property framework will undoubtedly create a series of
controversies.
It is evident that the controversy and obstacles are closely linked to the impossibility of
individualizing the object of protection per se. Although a folk dance is an entity that comprises
of movements, costumes and music, it is very complex to individualize it as such and thus see it
as an object of protection, which makes it very difficult to apply Intellectual property protection
principles. To protect a Dance and not the choreography would imply a protection of a series of
elements hard to objectify.
2
This article was published originaly in Marcasur International:
http://www.marcasurmi.com/en/articles/bolivia/Bolivian_Folk_Dances_and_Intellectual_Property.html
Another problem would be the copyrights of the work. On a political level, many have stated and
represented that these folk dances are of Bolivian origin, and that the lack of mention thereof or
if the case be, the claim of a different origin does constitute plagiarism. Ironically, the rights of
foreign groups to use such dances have not been contested as long as there is an
acknowledgement of the origin. It is within this light that the Bolivian government would have the
property of these dances and thus be able to claim property and file actions against imitation
and plagiarism by other States. In order to make this rationalization of state property over such
works coherent, Intellectual property rights would have to be regulated by International Public
Law; in other words, by international treaties or covenants. It is absolutely senseless to create
domestic protection laws, without an international counterpart that acknowledges such norms.
We believe that the legal situation of these folk dances has hardly gone beyond the media
frenzy. The nationalization of cultural manifestations create unnecessary controversies that
actually undermine and jeopardize their preservation as patrimony; to debate on the Peruvian or
Chilean origins of the Diablada would be tantamount to debate on the Argentinean or
Uruguayan origins of Tango. It is unproductive to seek a solution of such controversies within
the Intellectual Property framework, which is a regime strictly established in benefit of private
persons. Even if an association between the cultural patrimony protections with that of
Intellectual Property protection is achieved, general, common limits have been placed on such
property, for example the time passed between the demise of an author and the exclusive rights
thereon. Pursuant to such criteria, all folk dances would be of public domain.
Even if we acknowledge “State Perpetual Property Rights”, an international instrument is
needed to compel a State to restrict its inhabitants to a particular manner of cultural expression
unless there is a waiver from the other State or a license or authorization has been granted by
the titleholder of such expression. This would open the threshold towards the nationalization of
cultural expressions pursuant to a “Preservation” criterion, limiting the free and collective
expressions thereof.
3 - BRAZIL:
3.1. The Brazilian legal framework on Ambush Marketing (Gustavo Piva de Andrade Dannemann Siemsen Bigler & Ipanema Moreira) published on the Marca Sur International
2011..
As Brazil will host the World Cup in 2014 and
the Olympic Games in 2016, the country has
naturally become one of the world´s main
arenas for ambush marketing disputes. The
purpose of this article, thus, is providing an
overview of the Brazilian legal framework on
ambush marketing, as well as examining
how Brazilian courts tend to deal with the
issue.
Available legal tools against ambush
marketing
Trademark Law - Trademark law stands as a key element to tackle ambush marketing since it is
not uncommon to see non-sponsoring companies using similar logos or symbols to create an
association with the event. Brazilian law prohibits the registration of names and symbols of
official and officially recognized sports events, as well as confusingly similar imitations, except
when authorized by the entity organizing the event.
With regard to use, the statute provides that infringement is committed by any person who
“reproduces a registered mark without the authorization of the trademark owner, or imitates it in
a manner that may lead to confusion”. This can be used in cases where the alleged infringer
either reproduces the organizing entities’ trademarks or imitate them in a manner to create an
association with the event. There is a nominative fair use defense, which might be asserted
when the use is referential and non-commercial and is not likely to prejudice the mark’s
distinctiveness.
Copyright Law – This body of law embraces original works of authorship and can be particularly
useful to protect mascots, logos, posters, and the configuration of trophies. The copyright
provisions are also important to protect the images of the games, once they are fixed in a
tangible medium.
Unfair Competition Law – Unfair competition is a key element in cases where, despite not
directly infringing trademarks or copyrights, the non-sponsoring company creates a fraudulent
connection with the event. According to Brazilian law, “an act of unfair competition is committed
by any person who uses fraudulent means to divert someone else’s clients”. There are some
precedents whereby Brazilian courts have prohibited ambush marketing based on unfair
competition provisions, especially where the advertiser is a competitor of an official sponsor of
the event.
Sports-Related Issues Act – This statute creates a sui generis right and grants to sports
administration entities exclusive rights to use and commercially explore their symbols and
names, regardless the existence of a formal registration.
Olympic Act – This act was passed by Brazilian Congress in 2009. It has provisions designed to
protect the Olympic symbols and prevent ambush marketing in relation to the 2016 Games. The
act broadly defines the symbols and provides that, unless authorized by the IOC, the use of any
symbol related to the Games is forbidden. The Act also enlarges the prohibition to cover the use
of terms which, despite not included in the official list, are "sufficiently similar to them to the
extent that they are able to invoke an undue association with the event."
FIFA World Cup Bill – Similar legislation concerning the FIFA World Cup is under consideration
at Brazilian Congress. If approved, the act will grant FIFA exclusive rights over the expression
“COPA”, “COPA 2014”, “COPA DO MUNDO”, amongst many others.
Brazilian case law on ambush marketing
Brazilian case law already has important precedents on ambush marketing. In CBF v. CEF,
2010, the Federal Court of Appeals for the 2nd Circuit faced a situation involving the Brazilian
Football Confederation and a bank. The court granted a preliminary injunction against a
campaign where some characters appeared in a football field using t-shirts which resembled the
t-shirt of the Brazilian national team. In the decision, the court pointed out that this use “leads to
an association of the Defendant with the national football team and symbols belonging to CBF”
and suspended the campaign stressing that “it is necessary to prevent the free riding on the
goodwill of these symbols in order to protect the rights of the sponsors of the event”.
In another case, CBF v. Petropólis, 2010, the Court of Appeals of the State of Rio de Janeiro
upheld a preliminary injunction against a brewery which was conducting a marketing campaign
during the World Cup using symbols similar to the national team’s crest. The court suspended
the campaign emphasizing that “the use of signs almost identical to the Plaintiff’s shows a
blatant intention of the Defendant to associate its beers to the national team” and that this
association was illegal, “especially considering the fact that CBF is sponsored by the
Defendant’s competitor”.
In COB v. Guanabara, 2009, the same Court of Appeals adopted a different view and
maintained a campaign conducted by a supermarket chain which made association with the
Olympic Games. The Court held that the symbols used by the Defendant were not similar to the
Olympic symbols and concluded that the campaign was protected by principles of free
competition and free expression. In this latter point, the court claimed “not objecting to the rights
granted by national law to symbols used by the entity organizing the event”. However, it refused
“to interpret the law as granting property rights over any new original artistic creation because
such conduct would violate the freedom of speech.”
The above case law shows that Brazilian courts are sensitive to the rights and interests of the
official sponsors, but are also attentive to other counter rights which might be involved.
Conclusion
Brazilian law has many legal provisions which can be asserted in ambush marketing cases.
Given the unlimited opportunities created by the major sports events, the number of disputes of
this nature will probably explode in Brazil. On one side, are the organizing entities and the
official sponsors, who, relying on traditional IP rights and specific legislation, will not hesitate to
fight the practice and for whom the mere association with the event is illegal. On the other, are
other giant corporations who do not wish to stay out of the party and interpret the law as more
flexible. Checking where courts will draw the line is an exciting issue to be followed closely in
the forthcoming years.
3.2. The Name of a Condo does not Function as a Trademark (Rodrigo Borges Carneiro Dannemann Siemsen Bigler & Ipanema Moreira) published on the Marca Sur International
2011..
The Third panel of the Superior Court of Justice rejected a trademark infringement claim
brought by the company Baer Empreendimentos S/C LTDA against Compax Buildings based
on the similarity of the trademark “AQUAMARINE” registered for “administration, rental and
auxiliary services for the real estate business” by the Plaintiff with the name of a condo of
apartments named ACQUAMARINA in the city of Rio de Janeiro incorporated by the defendant
(Special Appeal 867.067 – RJ).
The Reporter Judge, the honorable minister Della Giustina Vasco, decided that the name of a
condo of apartments does not infringe the intellectual property rights inherent in a trademark.
For the Reporter Judge, the names of buildings or condominiums are not marks or acts of
commercial life, but acts of civil life, and cannot be classified as services or products:
"The fact that a company builds a condominium and to particularize the venture gives it a name
does not render the act commercial" he explained. "The protection of a trademark registration is
restricted to commercial activities such as the rendering of services or commercialization of
products and not reflecting on the naming of things,"
Will this decision give a free pass for companies to name condos using trademarks in Brazil?
In “regular” cases of similarity with trademarks I feel that this is exactly what will happen.
However, the incorporation of condos with very famous marks such as ROLEX, FERRARI may
still be challenged under other grounds such as unjust enrichment.
3.3. Biological Material (Pedro Paulo Rebelo Moreira - Dannemann Siemsen Bigler & Ipanema
Moreira) published on the Marca Sur International 2011..
In the case of biological material essential for the practical execution of the subject matter of the
patent application, which cannot be described and which has not been accessible to the public,
the patent application should be supplemented by a deposit of a sample of the biological
material in an institution authorized by the Brazilian Patent and Trademark Office or indicated in
an international agreement.
The international treaty that addresses the deposit of biological materials for the purposes of
patent procedure is the Budapest Treaty, which was created on April 28, 1977 and currently has
73 member countries. One of the treaty’s objectives is to eliminate or reduce multiple deposits
of biological materials by means of a single deposit recognized by the local Patent and
Trademark Office’s of the signatory countries. This is beneficial in terms of lower costs and
greater security. The depositary centers recognized by the treaty are known as “IDA’s” or
International Depositary Authorities. Today, the treaty encompasses 39 IDA’s, located in the
North America, Europe, India, Asia and Australia.
The IDA’s are impartial, objective institutions that receive the deposit of the biological material
for patent and other purposes and supply samples of the deposited material for research
purposes after the secrecy period of the patent application. Examples of internationally
recognized IDA’s include The American Type Culture Collection - ATCC (USA) and the
Deutsche Sammlung von Mikroorganismen und Zellkulturen GmbH - DSMZ (Germany). After
receiving the material, the depositary centers test same for purity and viability, and then store
same for a minimum of 30 years. According to the German DSMZ, on 2009, 3,094 samples of
biological materials were deposited only in Asia, North America and Europe, particularly
samples of algae, bacteria, fungi, human, plant and animal cells, plant viruses, DNA and
protozoa.
Even though Brazil has not yet signed the Budapest Treaty - in fact, the only Latin American
member is Peru - the Brazilian PTO recognizes IDA’s deposits made for the purposes of patent
procedure as if it was a signatory country. In Brazil and the Latin America, there is no official
depositary center recognized by the Brazilian PTO for the deposit of biological materials for
patent purposes.
Nowadays, Brazilian researchers, research institutions and companies currently have to send
their biological materials overseas before filing their patent applications, in order to comply with
the requirements of the Brazilian PTO, and the requirements of foreign PTO’s in the event they
apply for patents abroad. The national and international health and customs legislations and the
associated logistics drive costs up dramatically and generate considerable red tape,
discouraging and hindering the patenting of biotechnological inventions.
Within this context, and also given that biotechnology has become a priority in Brazil’s industrial
policy, the Brazilian PTO and the Brazilian federal government are currently considering signing
the Budapest Treaty.
On April 2008, in the 1st International Symposium on Biotechnology Innovation and Intellectual
Property, the Brazilian PTO launched the project for building and putting into operation the
Brazilian Center for Biological Materials (CBMB), a strategic move by the MCT and MDIC
ministries, the Brazilian PTO and the INMETRO (the Brazilian institute of metrology).
On December 03, 2010, construction of the CBMB began on the campus of the INMETRO in
Xerém (Duque de Caxias/Rio de Janeiro). The groundbreaking was attended by the Presidents
of the Brazilian PTO and INMETRO, as well as the Minister of Health. The Brazilian PTO says
that construction should be completed in 2011 and the center is scheduled to open in 2012. The
CBMB will have researchers from the Brazilian PTO and INMETRO, and will receive biological
materials including bacteria, fungi, cell cultures and plasmids having biosafety levels 1 and 2
(BSL I and II).
The CBMB aims to receive deposits of biological materials for the purposes of patent procedure
and make them available after the end of the secrecy period of the patent application, to
develop a national system of biotechnology metrology, to build collections of Brazilian cultures,
and to maintain backup copies of lineages considered strategic for the country.
3.4. Federal Court of Appeals issues groundbreaking decision related to “violent” videogames
(Attilio Gorini - Dannemann Siemsen Bigler & Ipanema Moreira) published on
http://entertainmentlawbrazil.com.br
In the wake of the U.S. Supreme Court decision which struck down a California Law banning
violent videogames to minors, the Brazilian Federal Court of Appeals for the 1 st Region
overturned a first instance decision which fully banned two famous videogames from the
country because of their alleged violent content. The decision was issued earlier today in a
Judgment Session.
One of the games involved the simulation of war and the other dealt with a fantasy world. The
Trial Judge from the Federal Court of Minas Gerais laid down a decision in 2008 banning the
commercialization of the games because, in this view, they would “incite violence” and “subvert
the social order”. A subsidiary argument used by the Plaintiff and by the Judge asserted that the
videogames also induced epileptic episodes, though not a shred of evidence was attached to
the dockets in this regard. The court action was filed by the Federal Public Ministry, an entity
created by the Federal Constitution which has the function of overseeing the correct
enforcement of the laws, against the Federal Government only and aimed at fully prohibiting the
commercialization of the games in the Brazilian territory because of content. Even though the
Ministry of Justice has the obligation to issue the age classification for videogames (and movies
too) and the two games received the highest rating (18+), the Public Ministry insisted that
children would still have access to them via their parents, among other arguments.
The distributor of one of the games entered in the court action on appeal, after it became aware
of the first instance decision. In its decision, the Federal Court of Appeals of Brasília (the
nation’s capital) considered it illegal to prohibit videogames because of their content. The
Reporter Judge concluded that the mandatory classification was enough to guide the parents
and that a full ban was unconstitutional.
The final written decision has not yet been made available but, once it is, I will post more
comments. This decision is still subject to appeals.
3.5. Access to Genetic Resources and Associated Traditional Knowledge (Bernardo Marinho
Fontes Alexandre - Dannemann Siemsen Bigler & Ipanema Moreira) published on World
Intellectual Property Report 2011
In Brazil, the rules for access to genetic resources, the protection of and access to associated
traditional knowledge of indigenous and local communities, sharing of benefits and access and
the transfer of technology for its conservation and sustainable use of biological diversity are
defined in Provisional Measure (MP) No. 2186-16 of August 23, 2001 which has the force of
law.
Access to Brazilian genetic resources or associated traditional knowledge depends on the
authorization of the Federal Government. Its use, commercialization and employment, for any
purpose, shall be subjected to inspection, restrictions and the sharing of the benefits. In
addition, the MPcreated the Council for the Management of Genetic Heritage (CGEN), the
national authority responsible for coordinating the implementation of genetic heritage
management policies.
For the grant of a patent related to an invention, where its development involves an access to
genetic resources or associated traditional knowledge, the applicant must inform the patent
office in Brazil (INPI) of the origin of the genetic material and/or the associated traditional
knowledge. In order to define the form of proof for whether there was access, CGENissued
Resolution No. 34, and INPI subsequently Resolution No. 207.
Thus, during the prosecution of a patent application, it must be notified, through a specific form,
the origin of the genetic heritage or associated traditional knowledge, as well as the
corresponding access authorization number, or the fact that the subject of the patent application
has not been obtained as a result of an access.
Between February and June of 2011, INPI issued an extremely high number of office actions
(almost 8,000) asking whether the object of the patent application was or was not a result of an
access to genetic heritage or associated traditional knowledge.
Access to genetic resources and to associated traditional knowledge are defined in the MPas
follows:
• Access to genetic heritage. Obtaining a sample of the component of genetic heritage for the
purposes of scientific research, technological development or bioprospecting aiming at its
industrial application or other nature .
• Access to associated traditional knowledge. Obtaining information on individual or
collective knowledge or practices associated to genetic heritage from an indigenous or local
community for the purposes of scientific research, technological development or bio-prospecting
aiming at its industrial application or other nature.
CGEN, through its Technical Guideline No. 1, understood that "obtaining a sample of genetic
heritage component" would be the activity carried out on the genetic resource in order to isolate,
identify or use information of genetic origin or molecules and substances from the metabolism of
Iiving beings and the extracts obtained from these organisms. This understanding would
extrapolate the provisions of the MP, which is improper.
The MPdoes not have c1eardefinitions and does not determine procedures for requesting an
authorization to access genetic resources or associated traditional knowledge. Such
weaknesses may lead to undue delay, uncertainty in the process, barriers and/or impediments
to research and technological development as well as a reduction in investments in the
sustainable use of biological diversity.
In the same way, the MPstates that any action or omission that violates its rules will be
punished by, among other sanctions, warning, fine and confiscation of products derived from
samples of the genetic heritage or associated traditional knowledge.
Based on this provision, a Brazilian environmental agency (IBAMA) at the end of 2010 executed
a wide-reaching operation called "Novos Rumos" (New Directions). As a result, many research
institutions and companies from various sectors such as pharmaceuticals, agriculture and
cosmetics have been notified and/or fined by IBAMA.
The MP provides for the possibility of regulating activities related to access to genetic resources
and/or associated traditional knowledge and their economic use carried out in contravention of
its provisions and further relevant regulations. In this context, CGENissued Resolution No. 35
that defines the guidelines and criteria for analyzing processes for the regulating of such
activities.
However, in case of access to genetic resources and/or associated traditional knowledge for the
purposes of scientific research, bio-prospecting or technological development carried without
legal permission, the regularization will be performed without prejudice to the assessment of
civil, criminal and administrative responsibilities by the competent authorities.
Finally, it should be pointed out that, regardless the filing of a patent application, an access
without the proper authorization is subject to administrative, civil and criminal sanctions
according to the pertinent legislation.
3.6. Attorney-General's Office(AGU) and the Judiciary Confirm Brazilian Health Agency
(ANVISA) Limited Role in the Granting of Pharmaceutical Patents (Dannemann Siemsen Bigler
& Ipanema Moreira)
Since the enactment of Provisional Measure 2006/1999, which introduced Article 229-C in the
Industrial Property Law-IPL (Law 9.279/96) determining the prior consent of ANVISA for the
granting of pharmaceutical patents, pharmaceutical research based industry has faced several
setbacks in exercising its constitutional right to obtain the privilege of exclusivity on its
inventions.
Indeed, under the guise of complying with such rule, ANVISA started to invade the exclusive
jurisdiction of the PTO performing a second examination of patentability requirements of these
inventions and what is worse, driven often by highly subjective criteria, despite the objectivity of
legal commands that prescribe the requirements for patentability, which has always guided the
activities of the single branch, technically and legally, enabled for such an examination.
Due to this improper invasion of PTO’s powers by ANVISA, many pharmaceutical patent
applications that had already met conditions for approval, since they were approved in the
technical analysis conducted by the PTO ended up suffering ANVISA’s objections, which
repeatedly refused its consent to the granting of pharmaceutical patents, for alleged lack of
patentability requirements, although the presence of those requirements had already been
established by the competent branch.
Due to this overlapping of powers, a source of embarrassment not only to rights holders but
also to the branch that has originally been empowered by law with the function of assessing the
patentability requirements, two fronts were opened and eventually proved to be successful.
On one side, in the administrative front, aiming at resolving the conflict arising between both
federal branches involved in an unwanted power struggle, PTO and ANVISA, an administrative
proceeding was opened before the Attorney General's Office (AGU) driven by the PTO and
Opinion No. 210/PGF/AE/2009 was issued and approved by the Attorney General, declaring
that ANVISA, in the exercise of its statutory duty to assess pharmaceutical patents applications
for prior consent ends, should be limited to examine the issues closely related to its institutional
Purposes, i.e., issues related to public health.
Unhappy with such opinion, ANVISA filed a request for reconsideration with the AGU, with
support from the Ministry of Health and some segments of society notoriously against the
current patent system in Brazil.
Fortunately, the AGU refused to be intimidated by political pressure and confirmed its earlier
opinion, by issuing the Opinion No. 337/PGF/EA/2010, approved by Attorney General on
01.07.2011, which reaffirms the conclusions recorded in Opinion No. 210/2009, ratifying the
determination that ANVISA shall limit its examination of patent applications to the perspective of
public health, for purposes of prior consent.
On the other hand, in parallel, holders of patent rights over inventions in the pharmaceutical
area, who were curtailed in their rights to obtain patents by ANVISA’s improper conduct, resort
to the Judiciary Power to curb the health authority’s abuses.
On the judicial front, the outcome of the struggle has been equally favorable to pharmaceutical
research based industry, multiplying the number of decisions since 2004, both in first and
second instance, in Rio de Janeiro and Brasilia, courts with jurisdiction to resolve these
conflicts, which share the understanding consolidated by the Attorney General's Office, in the
sense that ANVISA can not examine the patentability requirements, which is the exclusive
function of PTO.
At this point, it is worth noting the recent decision of Hon. Judge of the 8th Federal Court in
Brasilia, which, besides recognizing the excesses of ANVISA in the alleged exercise of its
statutory duty in connection with the procedure for granting patents, also declared incidentally
the very unconstitutionality of Article 229-C of the IPL, thus determining, directly to the PTO the
conclusion of the administrative process relating to a patent application filed by AstraZeneca,
although ANVISA had denied its prior consent.
Despite the indications that the law will ultimately prevail, making the route less stormy to
inventors of pharmaceutical products, we still need to watch carefully how ANVISA will react to
the decisions mentioned herein, to confirm if in fact it will cooperate to improve the patent and
health systems in Brazil.
4- CHILE
Chile (Rafael Pastor - Baker & McKenzie)
4.1. Supplementary Patent Protection in Chile
Chile’s Industrial Property Law was reformed in 2007 in order to comply with several obligations
laid down by the Free Trade Agreement that was signed and ratified with the United States of
America and entered in force in 2004.
One of these important reforms that still does not always catch the eye of patent titleholders in
Chile is the option of filing a supplementary patent protection application before the Industrial
Property Tribunal (the Patent and Trademark Appeals Court).
The owner of a Chilean patent is entitled to file an application for supplementary patent
protection before the Industrial Property Tribunal within a six month deadline that starts running
since the date that the patent obtains a registration number.
This supplementary protection will be granted provided that there was an unjustified
administrative delay. A delay will be considered unjustified if it entails a more than five year
period of time that starts running from the patent filing date or a three year period of time that
starts running from the substantial examination requirement.
In the case of pharmaceutical sanitary registrations that cover goods that are also protected by
a patent, the owner of the sanitary registration can file a request within six months since the
same is granted, to get supplementary patent protection for the part of the patent that bears the
pharmaceutical product, provided that there was an unjustified delay in granting the sanitary
registration. There is a delay when the sanitary registration is granted after a year from the filing
date. The supplementary protection will be extended only for the accredited period of the
unjustified delay caused by the Administrative body in charge of granting said registration.
Delays that are caused by the following events which affect patent or sanitary registration
applications may not be used to base a supplementary patent protection application:
a) An opposition or any remedy or judicial order action filed by a third party.
b) The delay of reports or administrative procedures from national or international organizations
that are required for the registration proceeding of the patent.
c) Actions or omissions by the applicant
4.2. Biogeneric Regulations and Patents
The alleged positive externalities that biogenerics could trigger in the sense of lowering the
prices of some very expensive therapies proves to be a very attractive argument, especially in a
context in which many governments are grappling with large budget deficits.
In spite of the latter, biogenerics should not be regulated in the same manner than traditional
generic pharmaceuticals. For the generic industry is not currently mandatory to file their own
preclinical and clinical data in order to assess and compare the efficacy, safety and
interchangeability of their products with others already registered with the Public Health Institute
(ISP).
This is economically sound because it allows the generic laboratory to exploit the positive
externality generated by the patent system to enter the market with similar or identical products
to those that no longer hold patent protection without the need to file new preclinical and clinical
data, once the drug or molecule becomes part of the public domain.
Conversely, when it comes to biogenerics the requirement to produce preclinical and clinical
data plays a key role in order to ensure the safety and efficacy of these products and, therefore,
is a very important safeguard for public health in general.
Biotech drugs have a number of properties that make the bioequivalence demonstration very
expensive and difficult to emulate. They are complex substances that are very difficult to fully
characterize from a physical-chemical perspective.
Consequently, the interchangeability of biogenerics should be accepted based solely upon the
submission of clinical data that is filed independently by each manufacturer and not exclusively
by the holder of the original sanitary registration or marketing approval.
The current regulatory stance of Chile is inadequate and must be reformed to meet the
standards that have been incorporated by leading public health agencies in the world, such as
the Food and Drug Administration (FDA) or European Medicines Agency (EMA).
4.3. Trademark Case Law: O’Neill Case reinstates a Paris Convention statute of limitation
exemption
As mentioned in our 2010 report, Albeit, O'Neill Europe B.V. filed a cancellation actions against
several trademark registrations for O’Neill in Chile unlawfuly owned by Mr. Jorge Rolando
Halabi N. These actions were not accepted by the Department of Industrial Property - DPI
(today National Institute of Industrial Property – INAPI).
The Chilean Industrial Property Appeals Court last year laid down a new criterion in regards to
the self executing nature of the statute of limitation exemption from article 6 bis (3) of the Paris
Convention. In fact, on January 29, 2009, this Higher Court did not uphold the arguments
claimed in the appeal filed by O'Neill Europe B.V., against the initial judgment issued by the DPI
that did not accept the exemption of the statute of limitation from article 6 bis (3) of the Paris
Convention regarding a cancellation action filed against registration No 410.116 for trademark
O'NEILL, registered in connection to goods from classes 9, 12, 25 and 28, under the name of
Jorge Rolando Halabi N. The Higher Court's ruling disregards the self executing nature of the
statute of limitation exemption from article 6 bis (3) by stating that Chile should constitutionally
follow a dualistic approach between National and International Law that requires the translation
of the latter into the former.
Albeit, O'Neill Europe B.V. filed a last resort challenge against the Chilean Industrial Property
Appeals Court's ruling before the Chilean Supreme Court in a effort to obtain the invalidation or
annulment of the same and a new judgment that accepts the cancellation action and disregards
this new criterion. hoping that Supreme Court will reverse this new manner of interpreting article
6 bis (3) of the Paris Convention for the sake of foreign well-know trademark owners in Chile.
In 2011 the Supreme Court accepted the invalidation request by recognizing the rights of the
true creators of trademark O'Neill and thus applied to this case article 6 bis (3) of the Paris
Convention, that sets no time limit for requesting the cancellation of well-known trademarks
registered in bad faith.
4.4. Flor de Caña versus Full de Cuatro
A criminal court rendered in 2011 an interesting judgment in a trademark (device) infringement
case. The illegal undertakings occurred in early 2010 when the defendants marketed their rum
with a device ("Full de Cuatro") similar very similar to previously registered "Flor de Caña Gold".
The defendants based their defense, arguing that the use the “Full de Cuatro” device did not
trigger any confusion among consumers because the trademark used was "Full of Four" and not
"Flor de Caña". They also argued that liquor consumers are at least 18 years old and are
literate so they are capable of differentiating one product from the other, as well as that the
products are targeted at different consumers bearing different prices and packaging.
The owner of Flor de Caña Gold device argued that the defendants acted maliciously when
designing the Full de Caña label, basing the same on the famous and notorious label of "Flor de
Caña Gold”. They also argued that the defendants mislead consumers in connection to the real
source of these goods.
The judgment punished the defendants with a penalty of USD 45,000, plus the destruction of
seized goods and they were also charged with the trial costs.
4.5. Chile takes first steps to implement the Trademark Law Treaty and to comply with PCT
On August 11, 2011, the Chilean government introduces a Bill (No. 7862-03) to Congress in
order to amend the Industrial Property Law No. 19.039, in an effort to standardize and improve
the patent and trademark application proceedings. The Bill is based on the need to adapt local
legislation to the standard of international treaties signed by Chile in Intellectual Property, such
as the PCT and the Trademark Law Treaty (TLT).
When it comes to PCT the Bill seeks to adopt the following changes to the local law:
a) Incorporate general provisions and definitions from PCT, such as defining the term
Internacional Aplication, or to establish that INAPI is a receptive National Office.
b) The deadlines to enter the national phase and how long patents are valid when using PCT in
Chile.
When it comes to PCT the Bill seeks to adopt the following changes to the local law:
a) Simplify national proceedings for the Registration of trademaks.
b) Establish a regulatory framework concerning trademarl prosecution proceedings like the
standardization of formal requirements.
4.6. The Chilean Patent and Trademark Office (INAPI) called on stakeholders to help review
future amendments to Industrial Property Law No. 19.039
In order to promote entrepreneurship and innovation in all productive sectors, INAPI called on
stakeholders to submit recommendations to improve Industrial Property Law No. 19.039.
INAPI posted a special electronic form on their website www.inapi.cl [3] where interested parties
can submit their proposals. Law No. 19.030 currently governs trademarks, patents, industrial
designs, appellations of origin and geographical indications, in addition to other rights.
Maximiliano Santa Cruz, INAPI’s National Director, stated:
"The process that we have started in an open and participatory manner, will play a key role in
establishing an IP protection system with clearer rules, more efficient trademark and patent
prosecution processes and access to more accurate information, which will also provide a more
stable business environment and facilitate the development of innovation in the long run.”
This call is one of the objectives that the Ministry of Economy is developing in line with the
national policy to encourage R&D, establish incentives to boost the productive sector, as well as
eliminate unnecessary red tape.
For a more orderly submission process, INAPI identified three major areas in which
stakeholders may submit proposals:
1. Substantive matters, such as the possibility of adding new IP categories.
[3]http://www.inapi.cl/index.php?option=com_wrapper&view=wrapper&Itemid=175&lang=es
2. Procedural matters, which refers to improvements in procedures or proceedings for
administrating these rights, and
3. Enforcement, which refers to potential improvements to the existing enforcement
mechanisms for IP standards.
The
results
or
this
call
can
be
viewed
at
this
link:
http://www.inapi.cl/index.php?option=com_content&view=article&id=346&Itemid=176&lang=es
4.7. “LIMON PICA” geographical indication4.
With a resolution dated April 22, 2010, the National Institute of Industrial Property (Instituto
Nacional de Propiedad Industrial, INAPI) recognized a geographical indication for the first time
since the current Intellectual Property Law came into force, accepting its registration and
approving the respective regulations on its use; all of it upon accepting an application filed in
January 2007 by Cooperativa Agrícola Pica Ltda., and after conducting all pertinent studies and
tests. It concerns the geographical indication for the fruit known as "Limón de Pica"
corresponding to a special kind of citrus fruit produced for a long time at the Oasis de Pica,
located within the desertic zone of the Pampa del Tamarugal, Atacama Region, in the extreme
North of the Republic of Chile.
5 - COLOMBIA (Baker & McKenzie)
5. Patents – Rodolfo Chivatá – Ximena Guavita
5.1. Guidelines for the examination of Colombian patent applications.
Up to the present for the formal and substantive examinations of the Colombian patent
applications no specific guidelines have been used by the Colombian examiners. As an initiative
of the Colombian Patent Office, it was decided to draft a guideline for the examiners to carry out
the formal and substantive examinations of the patent applications.
It is a worthy contribution for managing the prosecution of the patent applications because up to
now with no specific guidelines, it was the examiners own interpretation of Decision 486
(Colombian Patent Law) to decide if an invention fulfills or not with the patentability
requirements. With specific guidelines applicants will have clear rules to understand the Patent
law and patent practice in Colombia.
In addition, the opinion of the patent attorneys has been consulted to improve the draft of the
guidelines.
Although no specific date for becoming effective this guideline has been announced, it is
possible that in the next few months Colombia has in force this document.
Within the main changes, we note that the guideline provides the possibility to protect selection
inventions and inventions related to polymorphs whenever they comply with some specific
conditions. Therefore this fact opens the possibility for this type of inventions to have more
chances to obtain protection.
5.2. PCT News
Although Colombia began member of the PCT treaty since 2001, only until this year, August 2 nd,
2011, the Superintendence of Industry and Commerce (Colombian Patent Office) started to
operate as a Receiving Office. This will allow applicants and residents of Colombia to file the
PCT applications through the CPO. The Colombian Patent Office offers 25% of discount on
transmittal fee if certain conditions apply.
5.3. International Treaties – Yuliana Salamanca
4
This article was published in Marca Sur International. For a complete version of the article please review the following
link: http://www.marcasurmi.com/en/articles/chile/LIMON_PICA_geographical_indication.html
Colombia Approved the Madrid Protocol by means of Law 1455 of 2011
The Protocol for the Madrid Agreement related to the International Registration of Trademarks
of June 27, 1989, modified in October 3, 2006 and November 12, 2007, was approved by Law
1455 of 2011 in Colombia. In accordance with article 14, numeral 4, letter b) of the same
Protocol, it will enter into force 3 months after the date the ratification, approval or adhesion is
served by the General Director to the corresponding State.
The Protocol is an international and open treaty, without a term of duration, which is ruled by
International law, and has been adhered by 82 States and one intergovernmental organization
(May 31, 2010). It is an independent and autonomous treaty, derived from the Madrid
Agreement related to the International Registration of Trademarks (called the Madrid System).
The Protocol has three main objectives: (i) facilitate the filing of applications for the signatory
countries, appointed by the applicant, in the way we will further explain, (ii) a centralize system
for renewal of registrations, (iii) and centralizing the recordal of amendments for registrations.
Essentially, the Protocol contemplates a system by means of which its beneficiaries, titleholders
of an application or registration in any member country, would be entitled to file a single
application to obtain an international registration for the trademark in which the application is
based (in the designated member countries), prior complying certain requirements and
procedures established by the Protocol.
During the first phase, the effects of the International registrations would be the same as those
granted by local regulations to national applications. In a second phase, national regulations
would grant the same effects as those granted to national registrations.
The Protocol establishes a procedural system. The substantial aspect of the trademark regime
will remain the same as the one established by local regulations in which the application is filed.
5.4. Developments and proposed changes in copyright law - Cristina Matiz
Law 1450, 2011
This law modifies 2 sections of the Colombian Copyright Law 23 of 1982. It is now presumed
that the economic copyright of the work created by an employee or a contractor in the
performance of the normal activities of a written labor agreement or independent service
agreement, belong to the employer or contractor if the following requirements are met: (i) the
contractor assumes all risks on the creation of the work (ii) there is a written labor or
independent service agreement (iii) the contractor pays for the work. Formerly this provision
only applied to independent service agreements.
The law also rules that in cases of transfer of the economic copyrights or of exclusive licenses
granted over a work, the agreements must be registered before the National Register of
Copyright in order for it to be enforceable against third parties.
As well it clarifies the extent of contracts involving copyrights. The lack of indication of a term
and territory for a transfer of copyrights in an agreement, will limit such transfer to a term of 5
years and to the territory of the country where the transfer was made.
Notarization is no longer required to formalize the assignment of copyrights over a work.
Bill of law 241, 2011 Limitations in liability of ISPs
Under specific circumstances, on-line service providers (ISP) will be exempt from copyright
infringement liability. The bill defines 4 categories of services provided (Section 1): transmission
services (meaning that the provider merely transmits, routes or provides connections for
material that comes through its system); cache services (meaning the temporary storage of
such material); hosting services (hosting sites, running mailing lists, news groups, chat and the
like); and Hiperlinking, referencing and browsing services.
The above online service providers will not be held liable for hosting infringing copyrighted
content as long as they (a) do not modify nor select the uploaded content to make it available;
(b) do not begin its transmission; (c) do not select the recipients of the information; (d) do not
have actual knowledge of the alleged illicit nature of the data; (e) do not receive an economic
benefit straightforwardly derived from the infringing activity, in case the ISP had the right and
the capacity to control such activity; (f) promptly remove or block the access to the stored
material in accordance with the provisions of the Bill; (g) appoint a representative and an
effective mean to receive requests for withdrawal of any apparently infringing material; (h) adopt
and reasonably implement a policy, defining the circumstances under which the ISP may
terminate the agreements with a user who has repeatedly infringed copyrights or neighboring
rights; (i) have not interfered with the technological measures of protection and management of
rights of protected works (Section 7).
The Bill includes a notice take-down proceeding. The titleholder of the apparently infringing
material requests in written to the ISP and with the fulfillment of several conditions, to block the
content. The ISP has 3 days upon receipt of a claim to notify the content provider of the claim
and may decide “within an expedited period of time” whether or not to attend the request of a
claimant. If the ISP decides not to block or to remove the content, the claimant may go to
courts. If the content provider requests the reinstatement of his rights the ISP has 14 days to
upload and make available the content again. The provider of the apparently infringing material
may also go to court claiming for the content to be reinstated or the payment of damages. Legal
actions may also be brought against the ISP by any of the parties if the blocking of content.
Precautionary measures may be addressed to obtain the blocking of the content from the ISP.
The Bill was approved by the Chamber of Representatives and will now follow its path before
the Senate.
Bill of law presented by the opposition party
In furtherance to the presentation of Bill of Law 241, commonly referred to as ‘Ley Lleras’, the
opposition party has also presented before the Senate a Bill that reproduces parts of Bill 241,
but adds an extensive section of definitions, includes several dispositions addressed to reduce
the exposure to liability of the users and content providers and proposes the creation of special
judges to acknowledge matters regarding IT, copyrights and rights of users in the Internet. As
well it brings additional legal exceptions for the use of works that will not require authorization
form the copyright titleholders (e.g. incidental uses of works, reverse engineering for software
interoperability, uses for disabled persons, non profit uses for public libraries, and some cases
of non profit bona fides uses).
Bill of Constitutional Amendment No. 5, 2011
This Bill is currently under review by the Senate. It seeks to modify Section 20 of the Colombian
Political Constitution in the sense of bringing to the level of human right, the right to access the
Internet. The fundamental right to freely express included in Section 20, and currently states:
“Everyone shall have the right to freely express and to give his thoughts and opinions, to inform
and receive true and impartial information and to establish mass media outlets. These are free
rights with a social responsibility. The right to rectification is guaranteed under equitable
conditions. There will be no censorship.”
6 – ECUADOR
6.1. Opposition deadline extensions will no longer be granted by the Trademark Office (Bermeo
& Bermeo)
On July 1st, 2011, the Trademark Office issued a new Resolution concerning the elimination of
the possibility of obtaining an extension to the deadline to file oppositions against new
trademark applications. The new resolution is highly ambiguous and leaves many open
questions. Risks shouldn’t be taken, so it is recommendable to file oppositions in due term until
the scope of this regulation is clarified by the Trademark Office.
The regulation is justified by erroneously asserting that the local Law contradicts the Andean
Law so the Andean Law should have direct application, thus eliminating the possibility of filing
such extensions.
For more than 10 years the IP Office has granted extensions of time to file an opposition as
permitted by Article 208 of Ecuador’s IP Law: “Whoever presumes to have a legitimate interest
to file an opposition may request an extension of 30 business days to file an opposition.”
Meaning any interested party could add 30 business days to the regular 30 business day
deadline after the publication of the IP Gazette.
Decision No. 486 of the Andean Law regulates IP in the Andean Community and article 146
states that “Within thirty days of the publication date, whoever has legitimate interest may file,
for one time, an opposition against the registration of the applied trademark.”
RESOLUTION No. 006-2011 P-IEPI: The President of the IP Office affirms that the local law
contradicts the Andean Law, because it adds the possibility of awarding extra time to file an
opposition. And therefore reached the unclear conclusion that “from the
month of July of this year, every procedure filed in this Institution, referring to trademark
application matters, will follow the strict procedure from the Community law, that is
extensions to file oppositions will no longer be accepted.”
SPECIAL REMARKS TO CHALLENGE THE RESOLUTION:
- By means of a resolution, the President of the IP Office cannot reform or amend a Law passed
by the Congress; such resolution is illegal.
- There is no contradiction among the Andean Law and the Ecuadorian Law; the latter is merely
complementing the Andean Law by granting additional benefits within Ecuador’s territory.
- The resolution is said to have legal validity from July 1st, 2011, regardless of the publication in
the Official Gazette. Moreover, it was only notified by a communication on July 28th, 2011,
making it an ex post facto regulation.
- The ambiguous wording of the resolution’s conclusion makes it impossible to determine its
reach. As highlighted, it is not clear if it applies to extension requests (a) filed after July, (b) filed
against marks published after July or (c) filed against applications filed after July 1st, 2011.
- REACH OF RESOLUTION: It does not include any mention to the elimination of the possibility
to file an extension to the term to oppose a patent application, or any other IP right. Thus, this
regulation, if at all applicable, shall only apply against trademark applications.
CONCLUSION
In practice, this new regulation eliminates all possibility of filing an extension to filing an
opposition against any trademark application until July 2011.
The legality of this regulation can and will be challenged, and it should eventually be clarified by
Ecuador’s Patent & Trademark Office. Unfortunately this regulation gives faith to the unstable
political environment in the Country by challenging well established laws and principles.
6.2. COLE HAAN secures notoriety recognition by Ecuadorean Trademark Office while resisting
cancellation action for lack of use (Luis Marin-Tobar Subia - Perez Bustamante & Ponce)5
5
This article was published in Marca Sur International:
http://www.marcasurmi.com/en/articles/ecuador/COLE_HAAN_secures_notoriety_recognition_by_Ecuadorean_Tradem
ark_Office_while_resisting_cancellation_
The Intellectual Property Committee - which is the highest authority in the Ecuadorean
Trademark Office - ruled in favor of COLE HAAN in the prosecution of a cancellation action for
lack of use filed by Gladys Lozada Santana et al, by performing a thorough analysis of Andean
case law and unlawful competition principles, and denied the cancellation action and declared
that COLE HAAN is a notorious trademark in Ecuador.
In its August 1, 2011, resolution, the trademark office has performed an unprecedented analysis
of the legal concept of cancellation actions for lack of use against well-known or notorious
trademarks, stating that they should be treated differently and directing the competent authority
to perform a different analysis to avoid unlawful competition which would derive in illegitimate
benefit from the marks’ reputation by the party obtaining cancellation. This analysis is coherent
with Andean Case Law 46-IP-2006 (mark “PUM COLOMBINA”) where the tribunal sustained a
similar thesis. This tendency has recently been evolving in Andean doctrine where several
authors have debated the viability of cancellation actions for lack of use in cases where
notorious or well-known trademarks may not be in use in the market, yet their notoriety is
undeniable and their recognition does not require evidence in the local market.
This landmark resolution by the Ecuadorean Trademark Office is a magnificent precedent to
avoid unscrupulous cancellation actions which are being filed without any consideration to use
or even to notoriety. Our firm is actively involved in the defense of several trademarks that hold
the status of notorious or well-known marks and whose use may be impossible to demonstrate
for certain classes where marks may be registered as defensive marks, while their protection
based on notoriety extends their protection to all international classes of goods and services.
7 - PARAGUAY:
7.1. Paraguayan Company Will Triple Its Production To Franchise (Silvia Benítez) published on
Marca Sur International 2011.
The franchise system in Paraguay is booming and growing positively. An important Paraguayan
company with years of experience in the local market dedicated to the commercialization of
yarns/threads, cotton fabrics and clothing will triple its production to franchise.
In a few months this company will have its first franchise in Guatemala, a country which is
already working with the products of the firm. For this purpose, it will produce 3% more in order
to deliver/ship their products to that country. Furthermore, they are planning additional
franchises in six other countries, reason why their production will be tripled.
The manufacturing company produces 20 million m2 of fabric per year and aspires for the future
producing up to 60 million m2 per year to Central America. They currently export 50% of their
production to Argentina, Bolivia, Brazil, Chile, Peru and Uruguay.
The person responsible of the company mentioned that one of the major goals and commercial
challenges will be implemented through the franchise system which aims to reach more
countries and internationalize their trademark. In that way, they will be recognized not only in
Paraguay, but worldwide. Therefore, the company is investing in equipment and human
resources to provide better a service to its customers.
7.2. Counterfeit Medicines: the business, consequences and solutions (Mirta Miyaski) published
on Marca Sur International 2011.
Counterfeiting in Paraguay is once again a primary concern to the Paraguayan American
Chamber of Commerce (AMCHAM).
After a successful essay contest in the year 2010 with almost 40 participants, the AMCHAM will
challenge graduate and post graduate students to participate in a new essay contest called:
“Counterfeit Medicines: the business, consequences and solutions”.
Unfortunately, Paraguay is one of the mayor hub destinations of counterfeit products for South
America. Some of them illegally imported, others “home made” in clandestine factories, but all of
them constituting a frightening danger to consumer’s health.
In this context, participants may analyze the situation from their point of view and criteria
(economical, public health, communicational, juridical, among others), but the winning essay will
be the one which best defines the problem, explains the consequences and provides the best
solutions to the situation.
The event is supported by the US Embassy in Paraguay and the Paraguayan Supreme Court of
Justice, and constitutes a key action taken by the AMCHAM in the fight against piracy.
We believe the education is the first step in the fight against counterfeit medicine, Berkemeyer
is a member of the IP Sub Committee at the Amcham, and will continue to support the
AMCHAM in this initiative.
7.3. Foreign advertisement does not pay any fees in Paraguay (Paola Spaienza) published on
Marca Sur International 2011.
Foreign advertisement and publicity are not affected by taxes neither fees in our country. For
that reason, Senator Ramón Gómez Verlangieri recently proposed a new bill which aims to
regularize tax payment on foreign trade.
It also helps support the development and promotion of national audiovisual advertisement.
Senator Verlangieri states that this law will adjust the tax payment for all foreign companies,
which is currently issued arbitrarily without them paying any fee at all. If this bill is enacted, it will
turn out being completely fair due to the fact that national and domestic production pays all
corresponding taxes for advertising cases.
The law also seeks to update and validate situations lacking of legal framework in order to
enable national companies to continue growing, developing and, in that way, being able to
compete in the regional market or even worldwide. The Senator also explains that this project
has been a result from the demand of audiovisual companies and consumers for many years.
The proper functioning of this law should allow to support, promote and encourage national
advertising companies to create and produce their own audiovisual work as well as their
dissemination and preservation.
It will also be of great benefit to people who are related to the Paraguayan audiovisual
production and will also have an important social impact with significant advantages for all
creative writers, cameramen, lighting technicians, sound engineers, producers, editors, post
producers, directors, photographers and all personnel involved with the media.
Nevertheless, the chambers of Announcers of Paraguay (Cámaras de Anunciantes del
Paraguay) (CAP) and Television of Paraguay (Televisión del Paraguay) (Catelpar) have
expressed their opposition to this Project basically because it requires the payment of a 100%
fee besides the costs involved in the commercial production of foreigners.
7.4. The granting of sound marks in Paraguay (Jenny Avalos) published on Marca Sur
International 2011.
The Trademark Office employs a careful and slow process of granting sound marks in
Paraguay.
The problem arises when performing the respective tests of novelty in the Trademark Office,
since there is no specialist or examiner with sufficient knowledge in this area. For this purpose,
the Trademark Office is usually requesting a technical opinion of the Symphonic Orchestra of
the City of Asunción (OSCA). Additionally it is also important to note that the Office does not
have a database for searching sounds.
Despite the mentioned drawbacks, to date there are only four Sound Marks registered in the
following classes: 9, 41 and 42.
Recently, the Trademark Office has given its approval to record a sound mark in Class 5. The
brand to be granted is a sound made by a medical product. In this particular case it was
necessary to prove the specialty of the product and the sound effect produced by its use.
Through long and arduous investigation procedures of 3 years, this brand is finally going to be
granted for registration in the coming months.
8 – Peru (María del Carmen Alvarado – Estudio Rodrigo Elias & Medrano)
8.1. New Act of vegetal varieties
Legislative Decree No. 035-2011-PCM (April 14, 2011) states the regulations for the protection
of plant breeder’s rights in order to comply with the standards of the Convention for the
Protection of New Varieties of Plants (UPOV) which entered in force in Peru on August 8, 2011.
8.2. Appellations of origin
This year the Trademark Office has declared the protection of two new appellations of origin:
Junin-Pasco for Maca and Machu Picchu-Huadquiña for coffee. Up to this date seven are the
Peruvian appellations of origin recognized by the Trademark Office.
8.3. Intellectual Property Case Law in Peru
After several years the Intellectual Property Chamber of Indecopi’s Tribunal (last administrative
instance) has changed its criteria regarding trademark coexistence agreements and has started
to accept them even for identical trademarks and for identical or related products.
Thus the Chamber has accepted the coexistence of the trademark TETRA to identify “apparatus
for lightning, namely, electric lighting fixtures (included in class 11) consisting of light emitting
diodes, light emitting diode modules and replacement parts therefore (included in class 11)” with
the trademarks TETRA LAVAL, TETRA, TETRA PAK and TETRA LACTENSO which identify
“apparatus for lightning, heating, cooking, refrigerating, drying, ventilating, water supply and
sanitary purposes, apparatus for the thermal treatment of dairy products; heat exchangers;
pasteurizers; sterilizers; evaporators; coolers and all products included in class 11”.
Even though the signs identify the same or related products and include the word TETRA, the
Intellectual Property Chamber stated that it is possible their coexistence in the market without
any risk to confuse or mislead the consumers since:
-
The signs are going to identify specific products which purchase demands certain
specialized or technical knowledge from the consumers who will carefully analyze the
products before acquiring them.
-
In the coexistence agreement the parties have stipulated the necessary steps to be
taken in order to procure that each sign could be fully differentiate avoiding any
possibility of confusion.
10 - URUGUAY:
10.1. The value of a coexistence agreement published on Marca Sur International 2011.
The Judges of the High Administrative Court overturned a resolution of the Uruguayan Patent
and Trademark Office which had rejected the application of trademark ELGOURMET.COM. The
Court stressed that while certain similarities between the marks in conflict (ELGOURMET.COM
and GOURMET) can be observed, it is also true that there are obvious differences between the
two.
The trademark ELGOURMET.COM owned by PRAMER S.C.A. (PRAMER) had been requested
to cover all goods in international class 16. For its part, the Uruguayan Patent and Trademark
Office raised an ex-officio objection against PRAMER’s application based on the prior existence
in the register of GOURMET (word mark), a mark registered by ADVANCE MAGAZINE
PUBLISHERS, INC. (hereinafter referred to as “AMPI”) to distinguish only “magazines” in Class
16. Even though PRAMER and Advance had reached before the administrative resolution to a
coexistence agreement by which the owners of the registered trademark consented the use and
registry of ELGOURMET.COM.
PRAMER filed a claim with the High Administrative Court—the highest body in Uruguay with
jurisdiction over administrative decisions issued by governmental bodies—seeking the
annulment of the Patent and Trademark Office’s resolution that rejected its application for
ELGOURMET.COM. PRAMER’s action was based mainly on the coexistence agreement
executed abroad by and between PRAMER and Advance Magazine Publishers, INC.
The Judges of the High Administrative Court unanimously ruled to annul the administrative
resolution of the Trademark and Patent Office stressing that while certain similarities between
the marks in conflict can be observed, it is also true that there are obvious differences between
the two. Moreover, the agreement executed by the owners of the two marks is the greatest
guarantee possible that these marks are not liable to be confused. That assurance of
unlikelihood of confusion stems from the fact that it is the owners of famous marks—as is the
case here—themselves who are most interested in preventing that their marks be confused with
the marks of others.
This decision of the High Administrative Court is of utmost importance as the Court took into
account a private agreement executed by the owners of the marks in question to the extent that
such agreement was the main argument stressed by the ruling body to base its annulling
judgment. This is especially significant in view of the fact that private agreements are
traditionally not taken into account by the P.T.O. and the Board of Appeals when deciding a
case. This is also highly uncommon in the High Administrative Court, which in previous
occasions has even expressly rejected such consideration in cases brought before it.
11. VENEZUELA (Dianne Phoebus – Baker McKenzie)
Venezuela
As reported last year, Venezuela continues applying the 1955 Industrial Property Law for
trademark and patent matters, which is not TRIPS compliant. The Director of the Autonomous
Intellectual Property Services has recently stressed the need for an updated industrial property
law and indicated that the new law should be compliant with treaties such as The Paris
Convention and TRIPS. He has indicated the need for all sectors to participate in the drafting of
the new law. Although this is not the first time that draft IP laws have been proposed, discussed
and even edited up to a final draft, the mere mention of the need for a new law by government
authorities gives room for optimism.
11.1. Industrial Property Registry
Over the past four months, the Industrial Property Registry has attacked the tremendous
backlog on trademark and patent applications by publishing Industrial Property Bulletins.
Traditionally, the Industrial Property Bulletin was published irregularly and had up to eight
volumes. The last three bulletins issued over the past two months have had 18, 12 and 12
volumes, respectively. The Bulletins contain a wide variety of resolutions on both patents and
trademarks, including matters which have been pending for over ten years.
11.2. Trademarks
Over the past year the Registry added two filing requirements for trademarks: Official search
reports and power of attorney. Without these two requirements, the Industrial Property Registry
refuses to accept the applications. These new requirements result in delays for immediate
filings, but they have also helped to speed up the registration process considerably since
applications are no longer returned for failure to file these documents. Trademark applications
which do not encounter impediments such as oppositions or denials, are now normally granted
within less than a year from the filing date, which is an improvement. Insofar as decisions are
concerned, the Registry continues to deny three-dimensional trademarks, but many of the
denials have been appealed in the hopes of changing this criteria which is not consistent with
the definition and function of a trademark pursuant to the 1955 Law.
11.3. Patents
The Registry is still not granting patent applications. In recent Bulletins, however, they have,
published many resolutions denying patent applications (pending since 1999). Many of the
denials are based on the fact that the application in question covers a pharmaceutical product
and the patenting of pharmaceutical products is expressly prohibited under the l955 Law. Other
decisions are based on the argument that the application covers more than one invention. This
presents an interesting dilemma since the 1955 Law does not provide for divisionals, but TRIPS
does. This collision is untested to date.
11.4. Border Measures
Several months ago, the customs authorities reached out to the IP community and indicated
that they are committed to attacking IP violations through border measures and related
enforcement activities. They circulated a form to be used for custom recordals. Unfortunately,
actually actions have been slow to date.