FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE-Nº65-APRIL JUNE 2017
LET’S READ IP STATISTICS OF LATIN AMERICA
BRANDS & COMICS IN ACTION
staff Editor and Director: Juan Pittaluga firstname.lastname@example.org
Editorial coordinator: Fabiana Culshaw
Population of Latin America
Writers: Juan Francisco Pittaluga
Statistics Trademarks and Patents
Brands & Comics
Interview to Joe Ferretti, INTA President
South America welcomes INTA
Fight against counterfeit. Yesterday and today. By Virginia Cervieri
Seminar of the Inter-American Association of Intellectual Property (ASIPI) in Puerto Rico
The impact of technologies remain low. Interview to Hernan GalperĂn
Event of the Mexican Association for the Protection of Intellectual Property (AMPPI) in Mexico City
XII Meeting of the Regional Association of the Brazilian Association of Industrial Property Agents (ABAPISUL) in Florianopolis
From Plaza CataluĂąa to the Port of Barcelona.
Contributor to this issue: Virginia Cervieri Javier Isern Commercial Department: Mei-lin Che email@example.com Social media manager: Cintia Ferreiro firstname.lastname@example.org Communications: Claudia Azambulla email@example.com Natalia Domingo firstname.lastname@example.org Graphic design: LP / arte visual MARCASUR Digital Magazine Number 65 March-June 2017 Cont. Echevarriarza 3535 A, 1501 CP 11300 Montevideo, Uruguay Ph: (598) 2628 4604 Fax: (598) 2623 2957 email@example.com
FIRST LATIN AMERICA MAGAZINE IN INTELLECTUAL PROPERTY
ANA CAROLINA GONZรLEZ
MGA CELEBRATES ITS 5TH ANNIVERSARY Moreau Gonzalez & Associates (MGA) founded by Jacqueline Moreau Aymard and Ana Carolina Gonzรกlez, reaches its fifth anniversary on the 23rd of January 2017 and wishes to celebrate it with all of its clients, allies and Intellectual Property friends through Marcasur.
These awards ratify the passion, commitment, motivation and enthusiasm that the whole MGA team feels for work and for its country.
Venezuelan law firm MGA has been consolidating its position in the national and international market, achieving and maintaining its position in the most prestigious international legal publications such as Chambers Latin America, The Legal 500, The Best Lawyers, World Trademark Review and Leading Lawyers IP.
Moreau, Gonzalez & Associates specializes in Intellectual Property practice, Administrative Law- Economic Regulatory and Corporate Law.
MGA appreciates the trust and support received from its clients and allies during these first five years.
IT REALLY MATTERS WHICH IP FIRM YOU CHOOSE
MARCASUR DIGITAL 2 0 1 7
De Sola Pate & Brown is a law firm based in Caracas,Venezuela originally established in 1944. Our practice is broad-ranging, from all aspects of patent, trademark, and copyright law and litigation, to advice on domain names, security interests in intellectual property, licensing, franchising and related aspects of commercial law.
Our comprehensive knowledge of the Venezuelan intellectual property laws, our moderate size that facilitates personalized service and close attorney-client relationships, and our dedication to client service has kept us as VenezuelaĂ•s leading intellectual property law firm. Our firm has contributed over a dozen scholarly articles on all topics of Venezuelan Intellectual Property to the leading International IP Journals. Our attorneys are being recognized by various publications that rank intellectual property practices, such as Chambers and Managing Intellectual Property. Partners: Irene De Sola Lander and Richard N. Brown E-mail contact: firstname.lastname@example.org and/or email@example.com Website: www.desolapate.com Torre Domus, 16th Floor Av. Abraham Lincoln, Sabana Grande Caracas, Venezuela 1050-A
Telephone: +58-212-793-9898 Fax: +58-212-793-9043 U.S. Mailing Address: M-22, c/o Jet International P.O. Box 020010 Miami, FL 33102-0010
MARCASUR DIGITAL 2 0 1 7
Population by country
Dominican Republic 9.980.000 Honduras 8.950.000
Guatemala 16.176.000 El Salvador 6.460.000
Nicaragua 6.514.000 Costa Rica 4.851.000 Panama 3.764.000
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19
Brazil Mexico Colombia Argentina Peru Venezuela Chile Ecuador Guatemala Cuba Bolivia Dominican Republic Honduras Paraguay El Salvador Nicaragua Costa Rica Panama Uruguay
204.567.022 121.005.815 48.238.799 43.131.966 31.153.000 30.620.404 18.006.407 16.294.474 16.176.000 11.252.000 10.825.000 9.980.000 8.950.000 7.003.000 6,460,271 6.514.000 4.851.000 3.764.000 3.467.054
602.260.212 Is the total population in Latin America 8
Paraguay 7.003.000 Chile 18.006.407 Argentina 43.131.966 Uruguay 3.467.054
Latin America www.marcasur.com
INTELLECTUAL PROPERTY LAW OFFICE ECUADOR
PIONEERS AND INNOVATORS SINCE 1919 Julio C. Guerrero B. Are Masters In Intellectual Property And Trademarks. We Have More Than 98 Years Of Experience In The Ecuadorian And International Market. We Work With The Most Demanding Ethical And Professional Standards For The Protection Of Intellectual Rights In Ecuador And The World.
w w w . j u l i o c g u e r r e r o b . c o m email: firstname.lastname@example.org - PBX: (593 2) 323 8008 DIGITAL 2 0 1 7 9 Address: Mariano Aguilera E7-262 and Ave. Diego de Almagro, Edificio Doctorados FLACSO MARCASUR 2nd floor - Quito, Ecuador www.marcasur.com
Our Intellectual Property and Technology and Privacy and Cybersecurity team has over 75 years of experience advising local and international clients on all aspects of IP and Privacy law, including patents, trademarks, copyrights and data and privacy protection matters. We also advise on patent and trademark prosecution, litigation and related transactions (including seizures and counterfeiting matters), consumer protection and regulatory matters.
“Dentons Cardenas & Cardenas has a longstanding presence in the IP market, and is noted for its ‘high-quality and appropriate’ advice.” The Legal 500 Latin America 2016
Dentons. Now the world’s largest global elite law firm.*
dentons.com © 2017 Dentons. Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. Attorney Advertising. Please see dentons.com for Legal Notices.
*Acritas Global Elite Law Firm Brand Index 2013-2016.
MARCASUR DIGITAL 2 0 1 7
Legal Advice for “Multilatinas”? Press the Mixer Button for a Custom Recipe! By Felipe Claro Claro & Cia Chile
The term “Multilatina” is used to refer to a big company with a strong international presence, and Latin-America origins and capital. It is confusing to speak about “Multi” Latin companies. Even if they are multinational, do we speak of “Multieuropean” or “Multiasian” companies? Perhaps, after Brexit, the limits on the TPP and the construction of “The Wall” we may start speaking this way! The prefix “multi” denotes a much deeper concern, namely, the lack of unity in politics, culture, interests and common purpose of the Continent. This has affected the business environment and has stopped the region from advancing economically. The Latin-American forces need to be aligned and pointing to the same direction to produce a positive result. We must all move in a common direction, instead of erasing and rewinding every step we make, as it is usually the case. The region has Latin as a common root. Latin was superseded by the Romanic languages (in this case: Spanish, Portuguese, French and Italian). Unfortunately, many things have happened over the centuries that have torn us 12
sufficiently apart from each other to be perfect strangers or, at least, not wanting to go on together or build our dreams together due to suspicious minds. When we gather our regional leaders, grand visions do not emerge as they mainly look to protect their national interests. They hardly agree on the basics and don’t see the multi-Latin American Region as one single body where every country is an important member with a specific role. An apparent harmonized, friendly and easy to operate region has become a nightmare to many companies that dare to cross the borders to expand their businesses. The phenomenon of fast growing LatinAmerican companies expanding beyond their national borders, started in Chile (with companies like Cencosud, Latam, Falabella) and in Mexico (Mexichem, Cemex). The approach that many of these companies have taken, and the economic influence they have had, has helped to harmonize and stabilize a region that urgently needs multi-national pragmatic integration. Companies like Mercadolibre have gone a step further and no longer emphasize their nationality. These companies are also entering into other markets beyond the Americas and they are looking not only at their Romanic European roots but have become true “Mundi”-Latinas acting all over the world. The success of these Mundilatinas has been supported by taking a big picture approach to their legal issues. In this region solid legal advice is crucial to support the
businessperson - to translate Spanish into Spanish or to show what is floating in the air but not seen by the naked eye. When you need to protect your investment in countries where patents are granted after expiration; 3D trademarks are partially recognized; a mirror copyright deposit is needed; data privacy issues are databreaches or free-speeches AND license agreements must comply with special drafting requirements, THEN you are best to use a multi-faceted firm aware of regional differences. Latin-America, as a single body depicted below as the “Talking Duckling of the Americas”, is waking up and has important things and innovations to offer global consumers and business world. We must work to overcome the complicated obstacles that are in the way. The process may be slow, but the goal is nearer when the journey to conquer different jurisdictions is paved by qualified local advisors. Stay tuned! Felipe Claro is the Head of the IP Section of the top tier full service law firm Claro & Cia. His team, together with their colleagues in the firm’s other departments provide full legal support for even the most complex matters. He was President of AIPPI and is recognized as a leading lawyer by international publications. He acts as an adviser to many domestic and multinational companies marketing their brands and inventions in Chile, with a particular interest in new technologies. email@example.com www.marcasur.com
Excelência em Propriedade Intelectual [Excellence in IP]
Desafios são superados com estratégia, IN BRAZIL determinação e inteligência. Somente um qualificado time de especialistas e um escritório premiado são capazes deovercomed encontrar soluções Challenges are with diferenciadas para os seus clientes. strategy, determination and intelligence. Only a qualified team of professionals
Visite o nosso site e conheça mais sobre nossas and an award-winning firm are able to áreas de find atuação e referências em the best solutions for your business. www.montaury.com.br. [See more in www.montaury.com.br]
Rio de Janeiro
São Paulo (branch)
MARCASUR DIGITAL 2 0 1 7
Aniversario A niversario
TRADEMARKS AND PATENTS APPLICATIONS FOR REGISTRATION IN TWO DECADES
IN AN UNPRECEDENTED FACT, A STUDY CARRIED OUT BY LATINESTADISTICAS REVEALS HOW APPLICATIONS FOR TRADEMARK AND PATENT REGISTRATIONS IN LATIN AMERICA AND THE WORLD HAVE BEHAVED IN THE YEARS 1995, 2005 AND 2015
2 www.marcasur.com 016 33
MARCASUR DIGITAL 2 0 1 7
Fuente: OMPI e INTRACEN www.marcasur.com
MARCASUR DIGITAL 2 0 1 7
MARCASUR DIGITAL 2 0 1 7
MARCASUR DIGITAL 2 0 1 7
MARCASUR informa MGA CELEBRATED ITS FIFTH ANNIVERSARY Moreau González & Asociados (MGA) celebrated in January its 5th anniversary and its achievement of an increasing positioning in the national and international market. Partners Jacqueline Moreau Aymard and Ana Carolina González translate these first five years of the firm into gratitude, passion, commitment, perseverance, enthusiasm, attitude and, above all, teamwork. They say: “In moments of country crisis we have learnt to capitalize on opportunities, apprenticeship and growth, when it becomes necessary to have and keep up with the enthusiasm and lots of love for what we
do and for our country”. The MGA family appreciates the confidence and support received during these 5 years from their partners, clients and friends, and confirms its commitment to continue providing high-quality professional service.
Isabel Manrique, Jacqueline Moreau and Ana Carolina González www.moreaugonzalez.com.ve Venezuela Twitter:@moreaugonzalez Facebook: /moreaugonzalez
PANAMÁ ALLIANCE TO IMPROVE In our continuing effort to provide better and more specialized services to clients and friends, the boutique firm IPS Legal and the international group Owens & Owens Law sealed a strategic alliance to constitute Owens IPS. This firm deals exclusively with matters related to intellectual property, which guarantees its clients the efficient and diligent service of a specialized group of professionals with more than fifteen years of experience in this field. Through a network of global correspondents, Owens IPS offers the establishment, maintenance and protection of intellectual property rights. From patents to trademarks and copyrights, it provides advice on the most cost-effective methods to establish and develop intellectual property assets, recognizing that the brand is the most important asset of any company. 22
Karlina Juliao y Raquel Araúz.
Likewise, it has skilled personnel for filing and obtaining sanitary registrations: foods, cosmetics and medicines. Owens IPS offers its clients real-time solutions through the use of technology: research, availability, surveillance reports and deadlines to renew registrations and avoid cancellations.
Maricarmen Calenkeris y Ramsés Owens.
MARCASUR informa CENTROAMÉRICA ARIAS CELEBRATES 75 YEARS AND REINFORCES REGIONAL STRATEGY WITH A NEW IMAGE
As part of its 75th anniversary, Arias, the Central American firm, recently launched a new image and announced important changes to strengthen its leadership position in the region. Arias has offices in Guatemala, El Salvador, Honduras, Nicaragua, Panama and Costa Rica; and it is precisely in Costa Rica where an event took place to launch its new image. Vicente Lines, Managing Partner of Arias Costa Rica, opened the night recalling the words of the founder, Mr. Armando Arias: “That little seed sowed in 1942 has become a leafy tree with branches that have extended throughout the Central American terri-
tory”. Lines mentioned that the strength of this great tree lies in its local roots: “To be global, it is vital to have the best local contact, the best roots”, and emphasized that the organization’s mission is to serve its growing community of clients. Arias continues strengthening and cultivating its relationships with the most prestigious global firms, innovating, offering integral services and solutions across five continents. With its 75 years of operation, seven offices and more than 120 lawyers in the Central American region and Panama, Arias further strengthens its legal offer in more than 30 practice areas and with a strong regional team specialized in intellectual property in each of its offices, led by regional partner, Morena Zavaleta.
MARCASUR DIGITAL 2 0 1 7
MÉXICO SPECIFIC IP, AL WORLD TRADE CENTER
Specific IP tiene el honor de anunciar la apertura de sus nuevas oficinas ubicadas en el World Trade Center de la Ciudad de México. Esta firma de abogados especializada en propiedad intelectual ofrece experiencia y adecuación a las necesidades específicas de sus clientes, tanto nacionales como a nivel global. Combina el servicio personal con una respuesta rápida, lo que la posiciona
como una firma boutique con la solidez de los grandes despachos. Specific IP cuenta con un equipo de especialistas y litigantes altamente capacitados, que convierten el mundo complejo de la propiedad intelectual en algo sencillo de entender. Las áreas de trabajo de Specific IP comprenden: • Marcas registradas • Oposición para el registro de marcas • Protección de marcas • Lanzamientos de nuevas marcas, nacionales y extranjeras • Derechos de autor • Diseños industriales • Patentes • Acuerdos tecnológicos y licencias • Franquicias
MARCASUR DIGITAL 2 0 1 7
MARCASUR DIGITAL 2 0 1 7
E-sports: legal aspects to consider By Alexander E. García López Cambra La Duke & Co. Panama
competition, the event includes narration, commentary, images, replays, interviews, image rights of the competitors, team trademarks), mainly in favour of the issuer, who will be considered the producer of the audio-visual recording, along with its corresponding rights.
We can start with a business aspect, such as the fact that Riot (authors of the largest online game in the world, League of Legends), requested and achieved that, in the US, professional video players be classified as elite athletes when requesting work visas. With respect to the subject at hand, Intellectual Property plays a preponderant role. The company that develops videogames and their copyrights; and companies that broadcast and/ or rebroadcast competitions, must all ensure the audio-visual broadcasting and/ or recording rights are upheld. Hence, collective management entities will also be mindful of the protecting of their catalogues. We could make a long list of legal aspects closely related to intellectual property, but let us at least mention the most important ones: Videogames, the fundamental center of the competition, have technical and artistic elements that must be protected, based firstly and obviously on the fact that we are dealing with an 28
original work supported by media. Recently, public figures such as Diego Maradona, controversy included, are part of the variety of creative elements comprising videogames. We also must mention that when organizing the event, the rights of the game’s “Publisher” will be exploited, since it involves public communication and, why not? Also, public execution, on part of the players. We are thus faced with the need to provide a legal response to obtainment of licenses from the owner of the videogame, as well as payments to corresponding authors and interpreters, through the management entities. Most fans will follow the competition by means of a broadcast (television or online), where another company will be involved in the filming, live broadcasting and recording of the competitions. Whoever broadcasts the event must consider at least two scenarios: the negotiation of broadcasting rights over the videogame in question; and the audio-visual rights of the event. We will have public communication, as well as the provision and conversion of the broadcast. The Publisher shall also contemplate the issuance of licenses with respect to the audio-visual recording, resulting from the event (in addition to the game and
Undoubtedly, one of the main aspects for the development of E-Sports the entry of new competitors into the game, namely, sponsors. For them, it will be vitally important that the rules of the game (legally speaking) are appropriate. Scholars agree that the main issues to be considered are: athletes and players’ associations’ rights; bets; match fixing; use of internal and privileged information; salary caps; distribution of income between teams and players due to broadcast rights; doping; and the contractual framework of the employment relationship between players and their teams. Alexander E. García López, Attorney at Law, Panama, 1973. Bachelor of Law and Political Science, USMA. Postgraduate in Computer Law, UBA. Member of: Panama´s National Bar Association, INTA, ASIPI (Sports Law Committee), ALADDE (Latin American Sports Law Assoc.). firstname.lastname@example.org
Trade dress, industrial design and trademark protection for the get-up of products, services and packages in Brazil By Rodrigo Borges Carneiro Dannemann Siemsen Brazil
An original and distinctive get-up of a product or its packaging is an important differential used by companies to capture the attention of consumers. The combination of colors and its distribution on the packaging, the elements of the décor of an establishment or a particular shape of the product or its packaging can contribute to the commercial success of a new product or service. Just like the marketing team can use several tools to create the best get-up for a product the legal department has many alternatives in Brazil to protect the resulting product configuration. The first line of defense is comprised by the rules against unfair competition found in international agreements, mainly the Paris Convention, as well in our Industrial Property law which have already being recognized by courts in Brazil to be applicable to cases where a distinctive overall presentation of a product has been copied by a competitor. Cases involving the distinctive trade dress of a chain of shoe stores, similar color combination and designs of labels of food products such as snacks and bottles of spirits have obtained positive decisions in courts recognizing that in view of i. the distinctive impression www.marcasur.com
resulting from the combination of different elements and ii. the similarities involved among the competing products there was a likelihood of undue association and misappropriation of the reputation of the original product or service. These cases always involve an analysis of the distinctive nature of the elements and a survey of the competition to address whether the elements in relation to which protection is sought are diluted on the market. A second tool used to strengthen the protection is to obtain a trademark registration for the get-up of the product or its packaging. Courts pay close attention to the existence of a certificate of trademark registration which by law grants exclusive rights to its owner. However, in going through this path, the legal department has to pay close attention to the guidelines of trademark examination of the Brazilian Trademark Office which contains several rules which should be considered. For example, the Brazilian Trademark Office accepts the filing of labels with distinctive elements such as combination of colors and distinctive word elements or designs but does not accept applications which may contain the same label within the confines of the design of a common packaging, say a common bottle even if the design of the bottle is disclaimed by the use of shadow or dotted lines. In relation to three- dimensional trademarks which represent a package or a container the Brazilian Trademark Office will limit the analysis of distinctiveness to the three- dimensional shape of the package and will not consider the designs and word elements which may
be included in the application. However, elements in relief on the surface such as drawings, patterns or textures, are subject to a a case-by-case analysis of their impact on the distinctiveness of the mark as they may have a significant effect and convey a distinctive character to the shape in question. The third option in the arsenal available to the legal department is to consider the possibility of filing an industrial design application for the product or packaging in question. An industrial design is considered to be any ornamental plastic form of an object (three- dimensional creations) or any ornamental arrangement of lines and colors that may be applied to a product (two- dimensional creations), that provides a new and original visual result in its external configuration, and that may serve as a type for industrial manufacture. The above options can be combined and should be used strategically to afford the best protection available to creative get-up of products and services in Brazil. Rodrigo Borges Carneiro: is a lawyer, industrial property agent and partner of the Dannemann Siemsen firm. Having graduated in Law from the Pontifical Catholic University in Rio de Janeiro and has a Master’s degree in Intellectual Property from the John Marshall Law School in Chicago in the United States. He also has a post-graduate degree in International Copyright Law from King’s College, London University, and in Company Law from the Pontifical Catholic University in Rio de Janeiro. email@example.com
MARCASUR DIGITAL 2 0 1 7
BRANDS & cOMICS Batman, Superman, Star Wars, XMen, Arrow ... all incredible sagas that welcome companies from all areas to accompany them in their adventures. With sponsorships, auspices, product-placement and online interactive games with superheroes, consumers join excitement. Without a doubt, that is what the industry wants.
“Always be yourself…unless you can be Batman!!!”. The child’s eyes lit up at that phrase. He did not understand it, but he certainly felt powerful. Then, with a giant popcorn cone almost slipping from his little hands, he entered the movie theatre with his father. He shared the excitement, as much or more than the child. Batman appeared on the screen. His image was made up of Lego bricks, running determined, in 3D, with his typical mask on his face, cape billowing in the wind and climbing on his bat mobile, seemed to go over the audience. They all leaned back in their seats, dodging, staring at the superhero’s actions against the super villains. The truth is that three years after saving Lego Universe, Bruce Wayne-Batman had a great fight with the Joker and his allies, who activated a bomb to destroy Gothic City. Now, between blows and jumps from skyscrapers (and an inter30
generational audience with their heart in their mouths), Batman deactivates it and once again, saves the city! Wonderful! 1 How to forget that day with dad and a Batman in third dimension, made of Lego pieces? How not to want to buy the video game of the heroic acts performed by the superhero? How not to share that experience immediately with siblings and friends, through Facebook, YouTube or some other social network? With the seekers of justice “Brands join superheroes to foster more excitement to their consumers, be in the move, achieve greater positioning and be remembered. On this occasion, the Lego Company went even further because it created Batman Lego not only in its classic games of bricklaying, but making a movie that premiered this year, by far very successful. “And it’s not the first one they make”, said Fabián Bonelli from Argentina, the Creative Vice President of Publicis for the Caribbean, winner of over two hundred awards at international advertising festivals (such as Cannes, NYF, Clio and El Ojo de Iberoamérica). Superheroes and other comic book characters have always been callers for brands: from the Disney company, with characters created by themselves, to McDonald’s with its promotions associated with legendary dolls, Coca-Cola, for example, with its campaign Heroes, famous in 2012 for appealing to Flash, Superman, Aquaman, Wonder Woman and other world saviors of DC Comics.2 “In his first film, Tony Stark (Iron Man) uses a totally futuristic cell phone: the LG VX9400. And Neo, in Matrix, to get away from the super agents receives constant instructions through a Nokia 8110.3. From the Matrix trilogy, a series of video games, animated shorts films and comics were created», said Manuel Caro, partner of MDE Consulting Group of Colombia, an expert in multimedia business development and digital marketing, with clients in several Latin American countries. The strategies of the brands focused on the masked seekers of justice are as prolific as the imagination, even more with the new technologies: commercials of drinks with Captain America, sponsored 1 See Trailer Warnes Bros Pictures/The Logo Batman Movie in: https://www.youtube.com/ watch?v=rGQUKzSDhrg. 2 See Coca-Cola «Heroes» comercial in: https://www.youtube.com/watch?v=Hh9xXaQD7M4. 3 The Matrix Escaping from Work Scene HD: https://www.youtube.com/watch?v=Lweuy1X9Tcg. www.marcasur.com
Fabian Bonellis has fun with trademark initiatives
Spiderman collectibles, food promotions with Flash or Star Wars drinking cups, events and telecommunication company parties inspired by The Avengers, product-placement of new models of watches, cars, airplanes in films based on DC Comics or Marvel, as well as presence in video games, social networks, applications and more,” mentioned Caro. Today there is a new rebirth (there have been several) of the superheroes with flesh and blood actors; a table perfectly set for the brands. As an example, some cases are: Marvel is releasing cinematographic projects of this sort every few weeks until 2019; Justice League, based on the comic strip by DC Comics, will be released on the big screen very soon; Arrow (from Warner Channel, series inspired by Green Arrow, by DC Comics) is in full renovation before its sixth season expected in October; and Lucasfilm promises Episode VIII of Star Wars (The Last Jedi) in the movie theaters later this year. Of course Netflix hasn’t stayed behind: its contract with Marvel added to its grid: Iron Fist, SuperGirl, Daredevil, Jessica Jones. And not to mention the world of e-comics, which is growing and has captivated the market... After all, superheroes do not rest ... Storytellers Most people do not want to watch a 30 second commercial on television anymore, but they are willing to follow stories that seduce, in interesting plots. “And that is where brands must be: tell-
ing stories themselves, or accompanying those that exist,” said Caro. The expert observes that the basic characteristics of comics are highly related to the tools of content marketing, that is to say, the one that creates and distributes relevant content for consumers, with the aim of attracting them to their brands. They are not promotional productions, but useful or with added value for consumers. “Comics are narratives, they are also powerful brands, they have specific codes, signs or symbols, they express themselves through multiple platforms, they include original elements, everyone can access them, and people find different entry points to the stories and contribute with these by giving an opinion or uploading add-ons on Instagram or other networks. This is also what content marketing is all about, “explained Caro. “The Disney Company represents an emblematic case of a complete narrative universe in different formats: it has the amusement park in California, a great number of movies on cinema and television, all kinds of proposals on internet ... it embraces people with their stories This is how all the products of the brand, from the biggest one to the accessories, are successful in advance,” he says. The truth is that brands associated with good stories generate greater involvement, fidelity and commitment. They also awake fanaticism; people eagerly wait for the next saga or the launching of a new product, they belong to fan clubs, they participate in social networks with photos and ideas, many of which become viral. MARCASUR DIGITAL 2 0 1 7
Consumers develop different degrees of involvement, simple hobbies (collecting), passion or, as if that were not enough, some reach a cult-like devotion. “Many companies right now are wondering how to turn a 30-second message into a relevant half-hour story?” says Caro. “Unfortunately, in Latin America we still have a lot of companies that just want to make ads that offer caps and key chains with comic characters,” he said. However, everything indicates that, eventually, the new trends will prevail. Superhero weaknesses Guaranteed success does not exist. Many brands that associated with superheroes did not achieve the expected results. Why is Hulk’s strength or Aquaman’s speed not enough? Are they not powerful enough? “They are, but their attributes are not necessarily transferable to brands,” Bonelli replied. The publicist warns that it is common for brands to get caught up in new innovations, but it is important to distinguish when it is really an opportunity for them, where they can capitalize, or when it is best to let them just pass by. “Every brand has to follow its course and its own conversation. It does not always have its echo in every show, “said Bonelli. In his opinion, the more affinity there is between a brand and the character, the more successful will the commercial association be. If there is similarity, people will identify the brand with the superhero. Otherwise, the character will continue to receive all the kindness while the brand will be set aside. “Companies must evaluate why and in what they invest, as well as the amounts they will allocate and know how to measure return on investment. There are different types of commercial agreements: strategic alliances between companies, purchase of licenses to produce a film, as Lego did, acquire only those rights that allow the use of the images of the characters for promoting their products for a limited time, or for the use of certain words or phrases ... it is important to know how to choose based on a clear and well-designed strategy, “said Bonelli.
A trip to the future Superheroes will continue to exist, fall and rise, reinvent themselves in the light of new times. That is why they have their special abilities; to endure beyond the detractors of the genre and super villains. New characters are expected to emerge simply because the world needs them. And as saviors, they will continue to give a hand to brands, with the virtue of bringing together the virtual and the real world, the fantasy and the tangible, the magic and the mundane.
Manuel Caro searching from new marketing scenarios
About rights and lawsuits • The story of the comic world is marked by several mega purchase-sales of publishers, conflicts between brands and claims of copyrights. Here are just some of the many curious facts: • With the emergence of Captain Marvel, DC Comics sued the publisher for Superman plagiarism in 1941, due to the similarity between the characters. DC Comics won the process in 1952. But that was only the beginning of other conflicts regarding Captain Marvel who, at a certain point, due to legal reasons, had to be called Shazam. • Superman creators Jerry Siegel and Joe Shuster sued DC Comics on the rights derived from of Superman and Superboy in 1948 and 1975. • They lost the trial. It was in 1975, after a public protest campaign, when Warner Communications (to which DC belongs) decided to pay an annual salary of $ 35,000 to each of the creators, during their lives. Something is better than nothing… • In 1992, several Marvel ex designers left the company to create Image Comics. Unlike Marvel or DC, in Image Comics authors own their creations. • The film version of The Fantastic Four (2005), produced by Roger Corman, was very simple and made for the sole purpose of ensuring that Neue Constantin Films wouldn’t lose the rights of the characters. In 2009, the multinational Walt Disney bought Marvel Enter-tainment for USD 4,000 million.
Marcas al ataque Procter & Gamble purchased 10,000 copies of the 1933 Fannies on Parade compilation, the first volume of stories that reprinted strips that had already been published in the press. These copies were distributed in stores as a gift with detergent packs. Force Food Company (toasted cereal) was the first and only sponsor of the Superman radio series in the United States, from 1942 to 1951. Ray-Ban and Arnette lost against Blinde Company, who signed a product-placement contract with Warner in the film The Matrix in 1999. Richard Walker, the owner, was chosen to design and assemble the glasses that the super agents wore in the saga. In 2016, the German division of McCann organized the Snapchat Recruiting Week, in which it used Star Wars characters, and achieved a record: several hundred talented young people were interested, via snaps, in working at the agency. Lego Group announced this year that it intends to be a digitized company. Each year it produces 70 billion bricks.
The first 30 years… 1934 – Famous Funnies is born, the first comic book. 1936 – Lee Falk creates The Phantom, precursor of the comic
1937 – Detective Comics appears, the oldest comic book. 1938 – Superman is born, by Jerry Siegel and Joe Shuster, con
sidered the true pioneer of the genre (DC Comics)
1939 – Batman appears, by Bob Kane and Bill Finger, property of
1940 – First appearance of Captain Marvel (Fawcett). 1941 – Captain America (Timely) and Wonder Woman are born
1958 – First appearance of Supergirl, created by Otto Binder and
Al Pastino, in DC Comics.
1960 – First appearance of Justice League, of DC Comics: Su
perman, Batman, Wonder Woman, Flash, Green Lantern
1961 – Creation of the Fantastic Four, of Marvel, by Stan Lee and
1962 – Spiderman appears, by Stan Lee and Steve Ditko; and
Hulk, also by Stan Lee, this time with Jack Kirby (Marvel)
1963 – Creation of the X-Men, of Marvel, by Stan Lee and Jack
Experts agree that, in the future, brand communications, business and e-commerce will be strongly linked to the entertainment industry, to the virtual games, to short films in third and fourth dimensions, to the contents of modified and enriched videos by the consumers themselves. And if companies do not work as well as expected, they may need to consult that child who went to the movies with his father to see Lego Batman The Movie and who knows all the superheroes secret. Surely, he will respond: “Put on Arrow’s new green suit, created by Star Laboratories. It is 25% lighter and can carry 15% more equipment. You will be ultra-protected so, yes, you can then launch aerodynamic arrows, equipped with nanotechnology. They will hit the target! You will have all the success you’ve been waiting for!”. Fabiana Culshaw
And that was only the beginning…
Manuel Caro buscando nuevos escenarios de marketing
MARCASUR DIGITAL 2 0 1 7
Wine protection in Argentina
Evolution of the system of geographical indications and appellations of origin of wine in Argentina
By Ricardo M. Gordó Llobell Gordó Llobell & Associates Argentina
Wine is that drink that has always been a part of the Argentines. Thanks to marketing, it has made possible that when friends gather they do not only talk about football but also about wine varieties, strains, origins, aromas, qualities, winemakers and, why not, about the different prices of wines. The history of wine and the evolution of the system of geographical indications and appellations of origin in Argentina is curious and interesting, in an upward curve that prestiges the positioning of such a noble Argentine product. It starts with the arrival of the Spaniards to the region and, along with it, the cultivation of the vitis (vitis vinifera, common grape vine). Until then, only wild vitis (non-vinifera) existed in this region of America. In Argentina, the greatest advance in wine production began in 1853 with the introduction of French strains (Cabernet Sauvignon, Malbec and Pinot Noir) and the hiring of French expert agronomist Michel Aime Pouget. All at the behest of Domingo Faustino Sarmiento, the renowned Argentine national hero, who among other achievements was the first governor of the province of San Juan (1862) and then president of the nation (1868). In this context, Pouget estab34
lished in the province of Mendoza a plant nursery known as the Normal Farm of Agriculture, and organized a model vineyard with French varieties and a scientific method for its cultivation. He imported machinery and agricultural implements, and disseminated rational pruning and grafting. The incorporation of these French strains and the teachings from the French school, added to the immigration phenomenon of Italians and Spaniards at the end of the XIX century and the arrival of the railroad in 1885, produced a substantial change in the industry that resulted in the production of quality wines and the birth of a new agroindustrial model sustained in the vitiviniculture, mainly in the Cuyo region (Mendoza and San Juan), which came to complement the livestock farming model of the provinces of Córdoba and Santa Fe. Then, in the 1940s and 1950s, there was a growth in consumption that led to the development of massive planting of
common varieties and the installation of fractionation plants. This new situation formed a model of massive winemaking, divided between winemakers and fractionators, that lasts until our days. Later, in 1959, the Wine Law (Nº14.878, in force to date) was passed, replacing the old law (Nº4.363 of 1904). The new law established severe penalties for adulterations and created the National Institute of Vitiviniculture (INV, for its Spanish acronym), responsible for the inspection, promotion, development and technical control of production, industry and wine trade throughout the country. In 1980, the Law on Trademarks (Nº22.362) was passed, amending Law Nº3.975, which in article 3, among other prohibitions, specifically prohibited those related to appellations of origin, which indicates that a product comes from a certain place and, for that reason, possesses special characteristics that other products of equal kind but of different origin do not possess. In order to avoid detriment to the consumers, the prohibition of its trademark registration was foreseen. In 1983, the Commercial Loyalty Law (Nº22.802) established guidelines for the identification of merchandise, including wine. Article 7 prohibited the use of national or foreign appellations of origin to identify fruits or products, if these do www.marcasur.com
OPINION not come from a certain place, and article 8 considered appellations of origin of general use, and consequently of free disposal, those that by their previous use have become the name or type of product. Finally, in 1999 Law Nº25.163 (currently in force and also known as the Law on Appellations of Origin in Vitiviniculture), established the general rules for the designation and presentation of wines and spirits of vinous origin, geographical and provenance indication, and controlled appellation of origin, which was regulated in 2004 through Decree Nº57/2004. According to the information provided by the National Institute of Vitiviniculture, the Argentine wine map is formed by the following regions: Northwest region: La Rioja, Catamarca and Salta, between 22 and 29 degrees south. Central-western region, also known as the Cuyo region: Mendoza and San Juan, between 29.5 and 36 degrees south. Southern region, also known as the Patagonian region: Río Negro, Neu-
quén and La Pampa, between 38 and 41 degrees south. Other regions: San Luis, Córdoba, Tucumán, Santiago del Estero and Buenos Aires. Source: National Institute of Vitiviniculture. Although the territorial extension is vast and there is a significant number of recognized geographical indications and other places with very good characteristics and aptitude for such recognition, it is surprising that there are only two controlled appellations of origin of wines1 in Argentina, since the regulation was created with the goal of promoting the development of this industry. For this reason, we are committed to helping grow this valuable legal instrument for the protection of products, especially in a country like Argentina, so rich in food and fruits of the earth.
Ricardo M. Gordó Llobell: Lawyer. IP Agent. PhD in IP, University of Buenos Aires. Managing Partner at Gordó Llobell & Associates, Buenos Aires. Member of the AAAPI (local associations, VP 2010 - 2013), ASIPI (currently National Delegate), AIPPI (Standing Committee of Geographical Indications since 2014), of LES and INTA. Graduate and post graduate university professor. Member of the Research Team of the Institute of Investigation of Comparative Argentine – French Law of the University del Salvador – School of Law – Buenos Aires – Argentina. Co-author for the publication “Geographical Indications of Wines and Spirits in Argentine Law”. “Intellectual Rights”, ASIPI, vol. 18, 2013. firstname.lastname@example.org
LUJAN DE CUYO. Res C 15/2005 del INV y SAN RAFAEL. Res C 31/2007
Original curvas aviso 18 x 13,3 Gordó LLobell magazine digital internacional copy.pdf 1 31/03/2017 05:14:59 p.m.
MARCASUR DIGITAL 2 0 1 7
The Raise of “multilatinas” From Ferretti´s point of view, the ‘multilatinas’ are growing in the region and that means a great opportunity for investors and brands. What are your main goals as President of INTA? The ones that I would like to highlight are certainly getting into the new Strategic Plan 2018 to 2021, which has to be passed and implemented. In addition, last year under Ronald Van Tuijl’s leadership, they had in-house practitioners and the Presidential Task Force that did a tremendous work. I think it is important to assimilate all the learning from that report this year, and implement the positive things that they found out there. For example?
Joe Ferretti, the new President of the International Trademark Association (INTA), in an interview from New York with MARCASUR, offered his view about the situation of Intellectual Property (IP) in Latin America and the plans of the organization. 36
One of the things that the Presidential Task Force is interested in this year regards brand restrictions. Another important goal is the opening of INTA’s new representative office in Santiago de Chile; an example of the importance of this region for our organization. That office is going to focus in a very close interaction with all the members in Latin America and the Caribbean, more enhanced policy engagement to develop stronger relationships with the local and regional Trademark Offices and other associations in the region, and to make sure there are more educational programs in the region. I think it is necessary to reach out and touch members in that way. www.marcasur.com
“Multilatinas corporations are expanding and competing in markets dominated by multinationals from Asia, Europe y EE.UU.”
His background Joe Ferretti is Vice-President & Chief Counsel, Global Trademarks for PepsiCo, Inc. He leads a team of professionals who are responsible for all trademarks, copyright and domain name work for the company, globally. Ferretti joined PepsiCo after spending 13 years at the Oklahoma law firm of Crowe & Dunlevy, where he was a partner and chair of the firm’s IP group. He holds an LL.M. in Intellectual Property from the University of New Hampshire, Franklin Pierce Center for Intellectual Property. In his role as President of INTA, he is Chair of the Board of Directors and Executive Committee.
Which are the main trends or landscape for the Latin American legal market in the upcoming years? How do you deal with the counterfeit problem? I think recognizing the significant increase of counterfeit merchandise in the region is relevant, as well as the need to intensify our support for intellectual property rights enforcement on a regional basis. It is important to encourage support of IP enforcement and IP related agencies throughout the governments in the region. In particular, online counterfeiting poses additional risks. Another topic we see in Latin America is the opening of Cuba. This country poses significant opportunities for various industries such as agribusiness, mining, pharmaceuticals and, of course, the tourism sector. Since they removed a number of tourism restrictions, Cuba’s GDP is growing at around 4%, so many
businesses are looking to expand their brands there, particularly resulting from the growth in the tourism field. Ensuring proper enforcement of IP rights by Cuban officials is going to be crucial to facilitate an open economy. Which are the main challenges for Latin America? Let me be clear. I don’t think counterfeiting is a bigger problem in Latin America than in other regions at all. Nevertheless, addressing counterfeiting is important to understand the impact that it has on economies. In that regard, in Hong Kong INTA just issued a report on the effects of counterfeiting. I would think that the report, although not focused in Latin America, certainly is of interest for the Latin American IP community. Just to give you some facts, the global economic value of counterfeited and pirated products in 2013 is between 0.9 and 1.1 trillion US$. Our report, which is online in INTA’s website, projects that it will be between 1.9 to 2.3 trillion US$ by 2022. There is a significant impact on employment. There is an estimated two to 2.6 million jobs lose globally in 2013, and projects 4.2 million to 5.4 million by 2022. Do you think that there are real opportunities to grow and develop in this region? I certainly think so. One example is the rise of the ‘multilatinas’. In recent decades, Latin America has seen a huge growth in regional companies that have developed into multinationals. These companies, known as ´multilatinas´, are expanding into the global economy competing and challenging market domination of multinationals from Asia, Europe, and the US. That certainly indicates growth. Also, there is growing innovation in Latin America. Disruptive innovation is becoming a growing trend, which transforms all market scenes including
this region that is likely to be a driver of innovation with a young population, middle class in expansion and the growth in technology. Those are all promises of change. Which are the main conclusions of the Trademarks Latin America Study regarding the impact on the economy, published by ASIPI-INTA this year? (1) There have been similar studies in the European Union and the United States, to demonstrate the economic potential of intellectual property, and how efficient systems registering or strengthening trademarks contribute to economic activity, employment and commerce. The ASIPI-INTI Study underscores the huge potential for economic growth that can be unlocked by promoting trademarks within the business community in this region. By further developing national trademark systems and trademark intensive industries, we are looking to use the study to raise awareness of the value of trademarks to a country’s economy and to its people, and use that to help support lawmakers in developing related legislation. You said that the new Presidential Task Force will be focused on brand restrictions in packaging. What are you going to do in that regard? I’m glad you asked. Over the years, we have seen a number of laws that were introduced that result in brand restrictions and have taken various shapes and forms. Whether it is plain and standardized packaging, whether it is preventing use of logos, what do we have? These laws are all of different types but they’ll go to the same common element that is restrictions on brands. I think that is one of the biggest threats that exist today to trademarks, because it takes rights from intellectual property owners, and it hurts groups of people. It hurts companies because they are not able to communicate effectively their brand to
“INTA projects that the value of global counterfeit and pirated products by 2022 will be between 1.9 to 2.3 trillion US$” www.marcasur.com
MARCASUR DIGITAL 2 0 1 7
their consumers. Moreover, it hurts consumers because it makes it much harder for them to differentiate between the products that they are really looking for, so it harms both groups at the same time. Who integrates the Task Force? The Task Force is made up of trademark ‘superstars’; it’s being led by Katherine Bergpark, who’s a former INTA president, as well Bernhardt Doodle, who is extremely versed on brand restrictions. It is a group of the brightest from all regions of the world and their mission will be to examine what is happening with these laws and determine what response INTA can make here. INTA is looking how it can be more proactive in this regard. We want others to join us to ensure that these laws restricting brands do not negatively impact trademark owners and consumers in the way that we are starting to see.
Sobre tecnología… ‘We are becoming more prosperous. More than a billion people have been lifted out of poverty in the last 20 years. Technological change is happening in tandem with social change and of course legislative change. And the new forms of communication are helping the organization of the masses around specific issues, such as environmental protection’. ‘Technology is enabling an increasingly interactive relationship between brands and consumers; I see that not only continuing but rising. In that regard, trademarks and brand professionals need to show a willingness to keep adapting to this external force and to ensure trademarks continue to play their important role in the daily life of consumers and in the marketplace, as well as the global economy’.
A message for young leaders ‘My advice for emerging leaders in the legal profession in Latin America is the same to those in other parts of the world. I think that trademarks practitioners need to think holistically about the brands’. ‘The concept of brand is expanding a lot to include all sort of motional and social attributes. This is a fundamental shift for the trademark industry and we need to adapt to it. When we work with trademarks today, it is important to consider all of the associations that go along with the brand. I mean, there are things like consumer loyalty, concerns for our environment, or our communities. At the end of the day, this brand attributes impact in our drive and purchasing decisions. As lawyers, we have to protect both, trademarks and brands”.
“Cuba’s GDP is growing at around 4 %, and many businesses are looking to expand their brands into this country” We look forward to the final report of the Task Force in September at the Board Meeting. And just to mention, Latin America is represented by Francisco Carey in Chile. INTA’s next annual meeting will take place in Barcelona, in May. Which are the main topics to Latin American lawyers? It will be an outstanding meeting with more than 300 educational offerings and many table topics. But relating to the Latin American lawyers particularly, there are a couple of things that I would highlight. One is the ‘International Course on Trademark Law and Practice’, that will be on Saturday. It’s a full day course that has been designed to provide comparative analysis on trademark law and practice in countries around the world. The other one is the regional update on Monday, which is going to be ‘The Impact of Absence of Local Use in Trademark Protection’ in Latin America. That will be a very important topic to learn about acceptable use in the different markets of this region, and how trademark owners can make sure to gather and secure evidence of admissible use. They’ll find out about regulations that exist, and the speakers will certainly explain how the case laws develop in this area.
There will be another topic about trademark litigation in emerging markets… Yes, emerging markets present clear opportunities for brands, low cost production, high yield investments, and attractive populous territory for expanding sales. Beyond the traditional difficulties in international trademark enforcement, emerging markets will present these unique procedural challenges to trademarks rights holders, and the session will address these challenges. I would like to add two subjects. One is Contracts with Vertical Restraints. In that, we will have IP experts to discuss how trademarks owners protect their distribution networks, enforcement rights, the value of trademarks rights once the products are already in the markets, and then defending the distribution strategies in the face of various anti-competition issues. INTA’s Brands and Fashion took place in NYC in March. Why was this event so attractive? The topic is particularly relevant for Latin America. Over the last ten years, the fashion industry in that region is on the rise and according to the projections it is expected to double in the next decade. Latin America fashion designers are arguably ready to finally get their well-deserved time in the spotlight of the global fashion
“The new Presidential Task Force will be focused on brand restrictions in packaging” 38
TOP TEN GLOBAL ‘MULTILATINAS’ % SALES OVERSEAS
% EMPLOYEES OVERSEAS
Colombia/ El Salvador AIRLINES
SOURCE: AméricaEconomía Intelligence 2015-2016
industry. International brands are launching and growing in these evolving economies and local brands are expanding into foreign markets. INTA’s Brands and Fashion event intended to engage brand owners in the fashion industry about all these opportunities. Not just the opportunities but also the challenges that face both major fashion houses and the young entrepreneur designers who are just starting in the business.
able consumers to make quick, confident and safe purchasing decisions. I think it will also continue to promote freedom of choice. That’s where I see brands and trademarks in five or ten years. Fabiana Culshaw
How do you see the field of trademarks in five or ten years? Trademarks are going to continue to play the extremely relevant role that they play today in society. They help protect consumers in promoting global economic growth. As we talked earlier about laws that restrict brands, brands and trademarks enAnúncio_rodapé_Marcasur_cor_EN_2016_alta.pdf
Solid experience in Intellectual Property.
David do Nascimento Advogados Associados Av. Paulista, 1294 • 16th ﬂoor • 01310 915 • São Paulo • SP • Brazil Phone: +55 11 3372 3766 • Fax.: + 55 11 3372 3767 / 68 / 69 email@example.com • www.dnlegal.com.br
MARCASUR DIGITAL 2 0 1 7
Fashion retail stores in Latin América By Maricruz Villanea Ideas Trademarks and Patents Costa Rica
Latin America covers almost 7.5 million square miles (similar to the combined size of the United States and Canada). It groups more than 20 countries, in a market of 650 million people, with an estimated GDP (Gross Domestic Product) for 2017 of US$5,4 billion, estimated by the World Bank to grow up to US$ 6,2 billion by2020. Purchasing power in Latin America has been steadily growing, with the middle class going from 20% to 30% over the last decade and it’s expected to reach 50% by 2030(source: World Bank). Almost 10,000 individuals are considered “UHNW” (ultra high net-worth individuals). This means that the region has more people with assets over US$30 million that in the Middle East and Russia combined. In the coming years, apparel strategy in Latin America has become very important for the new aspirational middle class, and this is creating big opportunities for fast fashion brands positioned at premium prices. How well leading players engage with the taste and demand of Latin America, will determine who comes out on top. With a shopping mall boom in all the region, fast fashion culture gathering pace with investments of stores like Gap, Forever 21, H&M and Top Shop are 40
giving some competition to Inditex, who has been a leader in the market for the past decade. Among Latin American countries, Panamá plays a strategic role as an entry point. It sits roughly halfway along the region and with its Panama Canal, which handles 330 million tons of cargo every year, it controls most of the traffic in the region. Also, the Colon Duty Free Zone hosts thousands of distribution centers and hubs. Panama has a domestic market population of only 4 million, but it attracts customers from all Latin America. Panamas has a competitive advantage over cities like Miami, because it doesn’t require visa for Latin American citizens and there is an important offer of cheap flights between countries. Regarding the biggest markets, recent political changes in Brazil and Argentina may enhance the opportunities for business growth, as new governments that promote foreign investment and open market economies have replaced.previous socialist ones. There are many ways to enter the market, such as franchising, licensing, joint ventures or company direct investments. The most common form is through a franchise. These kind of agreements are atypical in regulation; meaning that these are not regulated by most of the local legislations. This option may present interesting opportunities for companies with international expansion aspirations. The most common advantages of a franchise would be low-cost distribution
system, enhancing profitability and no need for major expansion in overhead and complexity of the organization. Typically, the investment will be made by the franchisee. The company will receive an initial fee and periodical royalties (fixed amount or percentage of sales). These royalties are subject to holding taxes. The percentage of these will vary according to each country legislation, from 12% and up to 35%. To create and enforce a franchise agreement three elements are required: register a trade name, “know how transfer” and monetary agreement. The franchisor must register their intellectual property rights in the franchise jurisdiction. Most of these countries have very protective laws to protect the “weaker party”. These protective laws include measures like big compensations, buying the remaining stock, and liabilities for compensation of the employees. Companies must be very careful with the contracts they must include all the details of the relationship to try to avoid local protective laws. Maricruz Villanea: Business Partner of Ideas Trademarks and Patents founded in 2009. More than 20 years of experience in Intellectual Property matters in Costa Rica, as well as management of trademarks portfolios through the entire Central American and Caribbean Region. She has specialized in the defense of Intellectual Property rights, offering advisory and management services in the area of distinctive signs, patents, copyrights, names of domains. She focuses on assisting fashion companies and retail companies in navigating Latin American. Based in Costa Rica, Maricruz has assisted many companies on issues of market entry, franchising, licensing, grey market goods, import and exports. firstname.lastname@example.org www.marcasur.com
INTA and its relation with Latin America By Jorge Omar Casco Zelaya Casco & Casco Honduras
The International Trademark Association (INTA) is a global organization of trademark owners and professionals dedicated to supporting the protection of trademarks and intellectual property in order to “protect the consumer and promote fair and effective global commerce”. Now that a new 2018-2021 Strategic Plan is being considered, I suggest an important step forward in the sense that INTA promote common efforts with the Latin American region to develop some pending tasks that establish realistic and concrete programs of intellectual property protection. The Inter-American System begins with the First International Pan American Conference (CIDIP) of 1889-1890 in Washington, having as historical background the Panama Congress of 1826 convened by Simón Bolívar; On April 30, 1948, at the Ninth Conference in Bogota, was adopted the Carta of the Organization of American States; The first CIDIP established the International Union of American Republics, created a Permanent Secretariat and the Commercial Office of the American Republics. Although Colombia’s initiative was to boost trade between Latin America and the United States of America and Canada, other important fields have www.marcasur.com
been developed, such as the integrated development of legislation in public and private international law; system of protection of human rights, border delimitation, justice, democracy and security. INTA can include in its Strategic Plan a series of programs to support development processes in the area of punctual strengthening of capacities, establishment of regulations and projects such as: a) The creation of seminars and workshops jointly with the state universities of Latin American countries and the respective Chambers of Commerce for the training and updating of officers of the Intellectual Property Institutes and lawyers in exercise for the harmonization of criteria in the protection of patents, trademarks, designs and other signs: b) The provision of short courses for the promotion and knowledge of industrial property arbitration; c) Training courses for Lawyers from the Free Legal Clinics supported by Universities to acquire knowledge, abilities and skills in the drafting of patents and support people with inventive capacity but no resources to hire specialists and register their proposals; d) support in the development of technical regulations that are lacking in some Institutes of IP; e) Seminars for staff training for searches departments in order to improve their knowledge of the criteria on confusion; f) Creation of software for a database shared by all Property Institutes for the classification of administrative and
contentious-administrative resolutions to establish jurisprudence or a system of precedents; These programs and others considered to be priorities, could be developed through a cooperation agreement with the InterAmerican Association of Intellectual Property (ASIPI); I have witnessed the extraordinary transformation of this regional organization in the last 20 years; Went from a club to smoke cigars and play guitar to a center of academic and scientific debates on transcendent issues in the world of intellectual property. ASIPI is the ideal mechanism that could operate some programs directly with the member countries that most need this hemispheric support. Jorge Omar Casco Zelaya, Honduran; Emeritus Professor; Doctor Honoris Causa of the Honduran National University; Former Professor of International Law, Diplomatic, Commercial Law, Former Director of the Institute of Legal Research, Former Academic Director of University Extension, Former Director of Law Review, Former Rector of the National University of Honduras; Former President of the Commission of Selection of Magistrates of the Supreme Court of Justice; Certified Arbitrator; Attorney and notary; Founding partner of Casco & Casco, S.A. Honduras. email@example.com
MARCASUR DIGITAL 2 0 1 7
Error in the Ecuadorian criminal code in relation to trademark infringement By Gonzalo Luzuriaga Luzuriga & Castro Ecuador
In their debate, Ecuadorian legislators confused legal concepts of intellectual property, which translated into a criminal regulation with no coherence in relation to the punishable conduct that was intended to sanction. Within the legislative debate to approve the IP crime, the principles of proportionality and minimal intervention prevailed, that led to a reduction in penalties and sanctions for this illegal conduct, which, according to the governing philosophy, should not even be considered a crime. The crime against intellectual property rights is then included in the ninth section of the Ecuadorian Criminal Code, related to property rights, through a reform published on September 30, 2015. The reform has a critical error as it confuses “counterfeit” with “non-authorized use”. According to official documents, the Ecuadorian legislator sought to criminalize “the commercialization or manufacture of falsified merchandise, or its packaging, that bears a valid registered mark for such goods, or a mark that cannot be distinguished in its essential aspects.” 42
Unfortunately, the reform did not include “falsification” of mark as an illegal act within the IP crime of (incorporated) article 208A of the Ecuadorian Criminal Code. The misfortunate redaction of the current IP crime by Ecuadorian legislator, open the door for “unauthorized use” of mark to be punishable as a crime. Therefore, commercialization of originals goods with no previous authorization from the IP owner, could be consider an IP crime based on current Ecuadorian legislation. The title of the criminal norm contained in article 208A of the Ecuadorian Criminal Code reads: “Counterfeiting of trademarks and harmful piracy against copyright”; however, the rule that follows the title is a poor adaptation of the definition of “counterfeit goods” contained in the Explanatory Note to Article 51 of the TRIPS, definition related to border actions, not to criminal conducts. The definition contained in this explanatory note is not, by its structure, a basis for the composition of a criminal law. The falsification of trademark contains, in itself, several illegitimate acts. One is the unauthorized use of the trademark; and, the simulation (as a consequence of the first) - in this case understood as the act of unauthorized reproduction of the goods. The former IP crime contained in articles 319 and 323 of the Ecuadorian Intellectual Property Law (derogated by the Ecuadorian Criminal Code in force since
August 2014), included those two aspects, and restricted IP owners to exercise criminal actions only when their marks rights were infringed by falsification of their trademarks, that is, the unauthorized use and the act of simulation together in one illegal action. The legislative technique used by the Ecuadorian legislator at the time of the elaboration of the current IP crime contained in article 208A of the Ecuadorian Criminal Code, erroneously uses the explanatory note, and determines that in Ecuador the IP crime regulated the following illegal conduct: “commercialization or manufacture of merchandise, or its packaging, that bears without authorization a valid registered mark for such goods, or a mark that cannot be distinguished in its essential aspects.” The legislative error becomes more evident when analyzing the second paragraph of the IP crime under study, because when criminalizing pirated goods, the Ecuadorian legislator clearly and precisely establishes Piracy as an illegal behavior, and then proceed to define what are considered pirated goods. Gonzalo Luzuriaga: Graduated from the Pontifical Catholic University of Ecuador, PhD from the International University SEK, and Specialist in Intellectual Property from the University of Castilla-La Mancha, Spain. Specialist in Protection of Industrial Property Rights. firstname.lastname@example.org
MARCASUR DIGITAL 2 0 1 7
Etienne de Acedo, CEO of INTA
Two years ago, the International Trademark Association undertook an internal restructuring and created new committees. The objective was to take a new push. Besides, today more than forty Latin American lawyers hold high positions in the organization. “In 2015, the association underwent a restructure and independent committees were established (such as Design, Copyright and Unfair Competition), in order to cover more legal issues related to trademarks. Previously, those issues were centralized, “said Etienne de Acedo, CEO of INTA, from New York. New committees were also created, such as the Impact Study (which carries out studies on trademark impact), the Unreal Campaign (which expands activity against counterfeit products in matters of training) and Public Relations (whose challenge is to establish more contacts beyond the field of intellectual property). Which committees are most active at this time? “They are all doing a great job. The Anti-counterfeiting and Internet committees have traditionally been very present. And within the new committees, 44
Elisabeth Kasznar, member of the INTA’s Board of Directors
Impact Studies are giving up-to-date data on domain names, and the Unreal Campaign is also doing an excellent job, “he said. It is important to mention that INTA has a Board of Directors, an Executive Committees & Councils and three committees: Advocacy Group (devoted to defending the professional practice and legal educational issues), Communications Group (public relations) and Resources Group (covering the management of academic topics, leadership, pro-bono and others). Each one is subdivided into a large number of subcommittees; all honorary work. To date, more than 40 Latin American professionals work in high positions (Chairs or Vice-Chairs) in the committees; number that has been increasing in recent years. Applicants to these positions are
volunteers and usually rotate every one or two years, depending on the case. Elisabeth Kasznar, member of the INTA’s Board of Directors, tells us from her office in Brazil that the priorities of the association this year are: Anti-counterfeit, Internet and Restrictions to Trademarks; the latter being responsibility of the Presidential Task Force. Another committee that stands out recently, according to various consulted sources, is Emerging Issues, which analyzes market trends. A lawyer from Latin America holds the position of ViceChair: Ariela Agosín, from Chile. This fact is another example of how INTA has been integrating more professionals from Latin America into strategic positions within its ranks. Fabiana Culshaw www.marcasur.com
MARCASUR DIGITAL 2 0 1 7
MARCASUR interviewed some Latin American Chairs or Vice-Chairs of the Committees of the International Trademark Association, to give an update about their activities and goals.
Latin INTA DATA PROTECTION COMMITTEE The Data Protection Committee is one of the new entities created by INTA for privacy issues. It consists of three units: Good practices, Enforcement and Training. In 1995, less than 1% of the world’s population had Internet connection. Today, more than 3.5 billion people are online and that numbers increases every second. “Most companies base their marketing strategies on the information they obtain from consumers: their personal data, consumer habits, geographic locations. This has made INTA consider this issue a priority, in order to ensure that the use of this data is always within the current legislation, which avoids reputational damages in case of computer incidents or hacking, “explained Gustavo Giay, Chair of the Data Protection Committee from Buenos Aires (who is also Co-Chair of the Global Advisory Council for Latin America, and is part of the Nominating Committee of INTA).
UNREAL CAMPAIGN This is another of the new committees created two years ago. It currently has more than 60 members, distributed in subcommittees for Europe, United States and Canada, Asia, Africa and Latin America. It focuses on educating young people between ages 12 and 18 in institutions and schools, with the aim of developing a greater awareness of the damages that buying counterfeit goods produce in economies and societies. “We talk about the importance of trademarks and why we are fighting against counterfeit. In 2016, we had contact with over 6,000 students in 16 countries, “said Venezuelan Daniela Rojas, Vice-Chair of the Committee, based in the USA. Besides face-to-face meetings, this committee has accounts on Facebook, Instagram and Snapchat, to reach out to more young people. “We turn to influencers who help spread our messages. We also formed an alliance with the campaign “Lo falso te queda mal”, and with ASIPI-Educa, with whom we have organized joint events, “she added. “Hace poco di una charla en un colegio en el Bronx, donde generalmente no les importa comprar productos falsos, pero se les explicó que posiblemente sus padres dejan de tener trabajo por este flagelo, y que pueden estar usando medicamentos ilegales que no tienen ningún efecto en la salud. Usamos ejemplos que les llegan a los jóvenes, que tienen que ver con sus vidas”, comentó Rojas. “I recently gave a talk at a college in the Bronx, where they generally do not mind buying fake products, and we explained that their parents could possible lose their jobs because of this scourge, and that they may be using illegal drugs that have no effect on health. We use examples that reach young people, that have to do with their lives, “said Rojas. www.marcasur.com
ANTI-COUNTERFEIT WAR (*) The Anti-counterfeiting Committee seeks to identify problems and establish dialogues with the governments to fight this phenomenon, with information and seminars. “We are now organizing a roundtable in El Salvador and the Dominican Republic and we want to reach out to the Caribbean Islands where counterfeiting rates are high and difficult to combat,” mentioned Francisco Carey, Chair of the Anti-counterfeiting Committee, Latin American and Caribbean Subcommittee; also a member of the Presidential Task Force. Among several issues, the lawyer highlights INTA’s intention to support Peru’s public and private sectors, since Peru has become a complicated market regarding counterfeit in the last five years, even beyond commercialization, as these types of products are also manufactured there. “Many companies in the fashion industry are being affected by the Peruvian manufacturing of fake products of considerable quality, making it difficult for consumers to choose,” he said. (*) For more about counterfeit, refer to the article ‘Fight against Counterfeit. Yesterday & Today’ of this edition, by Virginia Cervieri, Vice-Chair of the Anti-Counterfeiting Committee of INTA. MARCASUR DIGITAL 2 0 1 7
MORE ENTERTAINMENT, MORE IMAGE
Unlike the others, this is a committee in which only in-house lawyers of the companies can be members. It is the only committee of INTA with this particularity.
“Our role is to gather relevant information about image right, which allows us to open a frequent conversation on the subject with the authorities and interested parties,” explained Ricardo Alberto Antequera, Vice-Chair of the Image Right Committee. Antequera told us from Caracas that the subject of image rights has evolved a lot in recent years, especially as the entertainment world grows. The Constitutions of the countries, within the personality rights, have the image rights, the reputation, the honor and the integrity contemplated. With the widespread growth of communications and the globalization of the entertainment world, this right has been closely associated to celebrities. In many developed countries, new theories, positions and doctrines about the “the right to be left in peace” have been developing, especially against paparazzi that disturb privacy. This type of phenomenon has been marking the legislative evolution of this right, “he said.
Jacobo Cohen, su Vice-Chair, señaló desde Buenos Aires: “Actualmente buscamos que la INTA sea más atractiva para los abogados de las empresas, con temas de interés para ellos, ya que la mayoría de sus miembros pertenecen a firmas de profesionales”. Jacobo Cohen, Vice-Chair, said from Buenos Aires: “We are currently looking for INTA to be more attractive for in-house lawyers, with topics that interest them, since most of its members belong to law firms. More than sixty in-house lawyers are part of this committee; among them: MercadoLibre (precisely with Jacobo Cohen), National Geographic, Amazon, ESPN, J&J, Hitachi, Blackberry, Turner, Chevron, Diageo, Pfizer, HP, Philip Morris. Its subcommittees are: Luncheon/Workshop (organizes events involving speakers), Idea Exchange (develops webinars and teleconferences on benchmarking to share visions, businesses and practices), Online Education (short videos on hot topics for corporate lawyers), Resources & Benchmarking (trademark surveys) and Nonprofit Organizations Projects (encourages pro bono work of the members).
“The most advanced jurisdictions in this subject in Latin America are those where the entertainment activity is also greater, namely Spain, Argentina and Mexico. It is not that the legislations in those countries are better, but there is a greater activity, which exposes the personalities or stars in their image right before a greater population and a large number of businesses, “he added. www.marcasur.com
RELATIONS AND MEDIA The Public Relations and Media Committee is another of the new committees created by INTA in 2015. Its objective is to disseminate information beyond the field of specialists and try to reach the general public - including government officials and consumers - on the importance of trademark in their daily lives and the economies of the countries. Sergio Barragán, its Vice-Chair, said from Mexico: “We are identifying influencers in social networks to spread the contents with greater reach.” For example, he added that they have recently published an article on “China’s Single Day” - the world’s best-selling internet platform-and another on “The presence of trademarks in the US presidential elections”, particularly around the figure of President Donald Trump. Soon they will publish “The impact of the Brexit on trademarks“.
Fabiana Culshaw www.marcasur.com
MARCASUR DIGITAL 2 0 1 7
But, this is my trademark
On returning trademarks to their true owners in Costa Rica
By Marianella Arias Chacón Divimark Abogados Costa Rica One of the most difficult circumstances in our professional practice is having to explain to a Client that their trademark cannot be registered in our country because it is already registered with full identity in all its aspects (graphic, phonetic and ideological) in the name of a third party. After the first reaction of surprise and indignation, the uncomfortable questions arise: How is this possible if the trademark is of our creation? How can it even protect the same products or services? How is this possible ... BUT, THIS IS MY TRADEMARK!!! We will not analyze malicious intent and possible malice of the owner who registers a trademark knowing that it does not belong to him; instead we will analyze the possible actions that are available to the legitimate owner to recover his trademark in Costa Rica. The Costa Rican Trademark Law provides solutions for these situations by means of nullity or cancellation proceedings of the spurious registration, depending on the specific case. However, for these actions to be successful we must overcome the most difficult aspect of satisfying the 50
requirements of our authorities: we must prove the legitimacy of ownership of the trademark claimed in Costa Rica with abundant and suitable evidence. The evidence that is provided in defense of the trademark must be “convincing and conclusive” in both quality and quantity. The Client must undergo the task of collecting clear and sufficient information about the age of its trademark and its history. We must demonstrate the extension of brand awareness at an international level and in their country of origin, positioning in the world market through their sales (a sensitive subject for many companies), advertising and brand promotion, among others. Any evidence that may be provided as the basis for your legitimate ownership claim must comply with all formalities such as apostille or legalization, and must be translated into Spanish. Perhaps the more difficult aspect to solve is that evidence must prove use in Costa Rica. If the client has not yet ventured into the local market. In an effort to make it easier for our Clients to recover their brand and overcome the stumbling block of the territorial test of use in our country, we have identified a solution that has given us positive results in concrete cases solved in favor of our Clients: the use of trademark on the Internet is accepted as evidence.
This is admitted if two circumstances are fulfilled: (i) that the company’s webpage and the trademark in question and its information are available in Spanish (official language of Costa Rica); and (ii) that there is a true purchase possibility via the Internet by the average and common Costa Rican citizen, who can make his purchase in full knowledge of the product or service he is acquiring and its cost in Costa Rican currency. The evidence we obtain from the Internet must be duly certified by a Costa Rican Notary Public and in this manner it becomes suitable evidence to demonstrate use in our country. This evidence, together with the aforementioned types of evidence prepared in the indicated conditions, can restore a trademark to its true owner. Although these proceedings can take up to 18 months to be solved, the proper preparation of the evidence, duly adjusted to the requirements of our laws, has allowed us to return trademarks to their legitimate owners in our country. In doing this, we are not only addressing null or tainted proceedings that granted illegitimate and spurious registrations, but we are also directing the country to the recognition of the rights legitimately acquired by the true trademark owners. Marianella Arias Chacón, Partner of Divimark Abogados, currently provides assistance and counseling in all fields of Intellectual Property, such as trademarks, commercial names, patents, copyrights and related rights, domain names, enforcement of IP rights and infringement and counterfeit goods. She has a noticeably successful track record in litigation. Founder and current President of the local association of professionals in Intellectual Property, APPICR 2016-2018. Current Senior National Delegate before the Administrative Council of ASIPI 2015-2018. email@example.com
MARCASUR DIGITAL 2 0 1 7
SOUTH AMERICA WELCOMES INTA INTA’S first Latin American office will open at the beginning of May this year. Etienne de Acedo (CEO) and Joe Ferretti (President) will be in charge of the opening remarks. As of the closing date of this issue, the name of the person responsible of the new office had not been disclosed, but it is known that there was a call for candidates within the association and that it was not required to be of Chilean nationality, although from Latin America. Gustavo Giay, Co-Chair in Latin America of the Global Advisory Council, was one of the advisers who recommended Chile as headquarters to INTA’S Board of Directors. “More than one country could have been chosen headquarters in Latin America, but Chile was decided on because the association found very good echo from
the government and great collaboration and interest from the National Trademark and Patent Office. In addition, another positive factor is that Chile is economically stable, oblivious to the political ups and downs of other countries, “Giay explained. We interviewed several lawyers that represent INTA in their different committees (see article “Latin INTA” of this issue), who agree that the association was born in the USA, but with a strong global interest. It is important to remember that it also opened offices in Europe and Asia lately. According to them, the opening in Chile is a demonstration of the importance that Latin America has achieved for INTA, as well as recognition of the progress of this region. The office will perform functions of representation, coordination and support for local entities and their members.
“Chile was decided on because the association found very good echo from the government and great collaboration and interest from the National Trademark and Patent Office”.
MARCASUR DIGITAL 2 0 1 7
MARCASUR DIGITAL 2 0 1 7
MARCASUR DIGITAL 2 0 1 7
EVENTs / ASIPI PUERTO RICO
From March 19 to 21, the Hotel El Conquistador de Fajardo, Puerto Rico, hosted one of the most anticipated events of 2017: the Seminar of the Inter-American Association of Intellectual Property (ASIPI). In a world increasingly aware of new technologies, and historically attracted by the entertainment, the law cannot be oblivious. That is why the event was titled “Showbiz and more ... Intellectual property in the entertainment industry”. As always, the first day of the seminar was dedicated to the meetings of the Executive Committee, the Administrative Council and the Working Committees, which agreed to strengthen relations with sister associations and to position ASIPI in the international sphere. The attendees then had two days to update on new trends and challenges of the vertiginous world of entertainment.
Samuel Pamias (Hoglund & Pamias. Puerto Rico) and Bruno Pell (Martínez & Asociados, Brazil)
The entertainment industry was the focus of ASIPI’s seminar in Puerto Rico: licensing, streaming, live presentations, video games, reality shows, cinema and collective management were part of the event, in a Caribbean atmosphere.
Morena Zavaleta (Arias Law, El Salvador), Ninoshka Urrutia (Consortium Guatemala, Guatemala), Virginia Servent (Fox International Channels, Guatemala), Eleonora Carrillo (Jacobacci and Partners, Spain) and Johana Aguirre Guerrero (Julio C. Guerrero B, Ecuador)
Castor Gonzรกlez-Escobar (GR Lex, Venezuela), Alfredo Corral (Romero Corral Abogados, Ecuador) checking their corporate messages.
Entertained. Santiago and Bernardo Henriquez, sons of Luis Henriquez (Marquez, Henriquez, Ortin, Valedรณn, Venezuela)
Mary Fernรกndez (Headrick Rizik Alvarez & Fernรกndez. Dominican Republic), Maria del Pilar Troncoso (President ASIPI. Dominican Republic), Ruth Alexandra Lockward (Director of National Office of Industrial Property of Dominican Republic) www.marcasur.com
MARCASUR DIGITAL 2 0 1 7
“The commandments of licensing in the world of entertainment” was the opening conference of the seminar, with the participation of Aleena Maher, Business & Legal Affairs in Viacom Media Networks, the gigantic US media conglomerate. “The economic model of the big soccer clubs and the weight of the television in the same” and “The live presentations and the contracts required” were the conferences that closed the day. While one analyzed the Spanish club, Real Madrid as a case study, the other one had the particularity that one of the speakers, Paulo Parente (Di Blasi, Parente & Associates, Brazil), took advantage of his musician facet and played the guitar to explain his presentation. On the second day, we discussed the video game industry, the business and legal work involved in developing a reality show, the cinematographic industry and the foundations of collective management. Members of America Mobile, Fox, Warner Bros. and the Motion Picture Association of America offered different points of view that reinforced the idea of protecting content to generate value. The excellent level of the academic side was accompanied by the good Puerto Rican climate, the warmth of the hosts and unforgettable settings for the social events: Palomino Island hosted the traditional Local Law Firms Reception, while the Closing Cocktail was held in the Coqui Water Park of Hotel El Conquistador. The XX Work Sessions and Administrative Council of ASIPI in Panama City will take place from November 26 to 29.
Juan G. Moure (OlarteMoure. Colombia), Roberto Ríos (Hoglund & Pamias. Puerto Rico), Jacqueline Moreau (Moreau González & Asoc. Venezuela), Enrique Díaz (Goodrich, Riquelme y Asociados. Mexico), Carlos R. Olarte (OlarteMoure. Colombia)
Rafael Ernesto Ortin (Márquez, Henriquez, Ortin & Valedon, Venezuela), David Ehrlich (David M. Ehrlich & Associate, USA), Aldo Fabrizio Modica (Bareiro Modica Abogados, Paraguay), Octavio Saldaña (América Móvil S.A.B. DE C.V., Mexico)
Martha Landívar (Landivar & Landviar, Bolivia) at Ferraiuoli LLC booth. 60
MARCASUR DIGITAL 2 0 1 7
The University of Southern California carries out research and intervention works in Latin America
â€œThe impact of
technologies remain lowâ€? HernĂĄn Galperin, Ph.D. of Stanford University and a leading expert in telecommunications policy, explains the research projects he is leading in the region on how internet adoption impacts the economies of the countries and its people. He works at the University of Southern California in Los Angeles, with the support of various foundations, including the IDB and the International Development Research Center (IDRC) of the Canadian government. The interview was held in occasion of an event organized by Posadas, Posadas & Vecino in Montevideo, at the end of 2016. 62
How do you see Latin America in the technology field?
What should be done to overcome these obstacles?
We have an interesting development, but with many gaps and challenges. The latest statistics tell us that 50% of the population is connected, meaning that it uses the internet regularly. But, of course, almost the other half is missing. Many of these people have very limited use of social networking applications. This improves their interaction and quality of life, but the economic and social transformation impact is low.
Increase connectivity levels, improve network infrastructure, improve the quality of services and lower internet prices. But, in addition, make Internet appropriation more effective. This means inserting internet within the business chains, within the productive chains, within the educational system, within politics. It is also necessary to transform politics through the internet, with applications that allow the citizens to connect more with their leaders, to complain, to organize themselves. www.marcasur.com
in each country, especially in large and complex countries like Brazil, Mexico, Argentina and Peru.
We understand that you are also working on the issue of gender gaps in Latin America...
Are concrete steps being taken to resolve this situation?
Yes, we have several projects on the digital gaps in Latin America, including gender, which is between 5% and 10%, depending on the country. This indicator is relatively small compared to Asia or Africa, but it does not mean that it is less important. Some of my colleagues are also working on the generational gaps in Latin America and the inclusion of older adults in the digital world, from which they can benefit, for example, from disease diagnosis systems and remote medical care. Another study issue we have is about the migration from traditional work to online work platforms, as well as opportunities for young people entering the labor market. These platforms work globally; we are focusing on their impact in Latin America and Spain.
We have to keep in mind that the obstacles are multifaceted. More investment is needed and I believe that progress is being made in that direction. Although there are incentives for investment, they are segmented. In other words, some areas are attractive for operators and others are not. The public-private partnership model makes it possible to overcome these barriers by generating incentives for operators to act in areas where they traditionally do not. Can you give an example of a publicprivate partnership? At this time, Mexico has an interesting program to develop a shared wireless network. The government generates incentives for this network to exist that will connect the entire country, on which private operators provide their services with their different business models. What are you currently working on with the University of Southern California in Los Angeles, precisely in Mexico?
Which countries in the region are most advanced in this area? In technological infrastructure and connectivity, Uruguay and Chile are the most advanced. Argentina and Brazil are nearby. Uruguay has high levels of connectivity and other advantages for being a small country, where there are no important geographic features. For several reasons, connectivity has developed here before than in other countries. And it is a little bit more homogenous than other places... Yes, for example, in Argentina and Brazil we have a high level of connectivity in certain cities and very low in others in the suburbs of the country. The same thing happens in Mexico. In Monterrey and in the Federal District the levels of connectivity are comparable to those of developed countries, but in other areas, they are very low. There are great disparities between countries, but above all we have to look at those that exist www.marcasur.com
I am working on a program through which the government will migrate the traditional payment system to the poorest families, to digital payments. Today, they are given cash and the goal is to make the payments digitally through the mobile phone. The advantage is huge because most of these families live in remote areas where there is no banking infrastructure, and they have to travel all day to receive a small subsidy. On this digital model, other financial services will be set up, such as savings, credit and insurance services. It is a way of trying to bridge the gap between rural and urban populations. It is also favorable for the state because the distribution of cash is very expensive. In what stage is the program at the moment? It is a pilot program covering about 10 thousand families. We will then install it in a total of 7 million; the majority are women. The financial education and training in managing the application of the payment system for these women, who are unbanked and who do not know how a savings account, an insurance or a microcredit works, is fundamental.
What do you think of the laws on technology issues that exist in the region? All the countries are facing a challenge regarding these laws. Internet moves very fast, it is difficult to understand that change and it is inevitable that laws fall behind. I understand that Uruguay is now in a process of modernization of the legislation, particularly on transport platforms such as Uber. There has been an important debate there. It is important that this debate takes place, a broad debate. How do you see the society of the future; will globalization continue to be a trend, or will it revert? Although there is a certain fear of globalization by the citizens, I think it is unstoppable, maybe it will slow down a bit, but it will continue. I think that those changes must not be stopped or discouraged, but accompany them and insert them as best as possible in each country. In the end, they will be beneficial to humankind. Fabiana Culshaw
MARCASUR DIGITAL 2 0 1 7
M A R C A S news Pumahue on Puma
The Chilean Supreme Court rejected an annulment appeal filed by the multinational Puma against the Pumahue network of schools, to prevent it from registering its trademark and logo. Pumahue had already obtained favorable verdicts in the National Institute of Industrial Property, then in the Intellectual Property Tribunal and finally in the Supreme Court.
Warning of TV Peru
The National Institute of Radio and Television of Peru (IRTP), formed by the television channel TV Peru, and the radios Nacional and La Crónica, warned the new online channel Digital TV Peru to refrain from using that trademark or similars in any activity and/or television space, radio or any other means of communication. According to TV Peru, Digital TV Peru cannot use its trademark since it is too similar to theirs and would lead consumers to confusion, since they cover the same services.
Nike has CR7
In a first instance, the Superintendence of Industry and Commerce (SIC) of Colombia denied Nike the registration of the CR7 trademark, which covers denominates products associated with the Portuguese soccer player Cristiano Ronaldo. The SIC indicated that “consumers could be affected” since trademark CR7 of Carlos Siete was previously registered. When appealing, Nike was successful: the CR7 trademark was granted because CR7 Carlos Siete was not being used within Class 25 of the Nice International Classification (clothing, footwear), class in which Nike filed registration of CR7.
M A R C A S news Change of name of Celia Cruz’s series
Celia is an 80-chapter Colombian series that traces the life of legendary Cuban singer Celia Cruz. Created in 2015, by Fox Telecolombia, it will be broadcasted as from February in Mexico through TV Azteca. However, the television station announced that it would have to rename the series to Celia Cruz, since the producers of the play Celia, the musical (a Mexican production released in 2016 in Mexico City) sued TV Azteca for infringement of registered trademark.
Sarkany vs Sankarny
Ricky Sarkany is a renowned Argentine fashion brand specialized in shoes. The company recently sued Sankarny, a butcher shop in the province of Córdoba, for trademark infringement, arguing that the name confuses consumers and that it is taking advantage of Ricky Sarkany’s reputation. Two years ago, the company had sent a cease and desist letter to the owner of the butcher shop, and decided to take legal action when it did not change the name of the place.
La Cumparsita, country brand
In memory of the hundred years of the creation of the tango La Cumparsita, the country brand Uruguay Natural was granted to the Museum of Tango, located in Montevideo, also called La Cumparsita, because it was there where the legendary tango was played for the first time. “The country brand generates a lot of prestige and will help positioning the tango’s centenary,” said Minister of Tourism, Liliam Kechichian at the ceremony.
MARCASUR DIGITAL 2 0 1 7
Event / AMPPI IN MEXICO CITY
the millennial world
Chatting before the start of the event
Listening to the presentations
The 6th International Event of the Mexican Association for the Protection of Intellectual Property (AMPPI) was held in Mexico City, from March 1 to 3. More than 150 participants had the opportunity to learn about how new technologies have changed the area of intellectual property. The conference began with a presentation by Mark Whitaker, president of the American Intellectual Property Law Association (AIPLA), which covered issues of general interest such as NAFTA and its possible renegotiation, the exit of the United States from the TPP and the possible consequences of this on intellectual property issues. Panel Internet Intermediaries. Juan Carlos Amaro (Becerril, Coca & Becerril, Mexico), Matthew Winterroth (World Wrestling Entertainment, Inc. (WWE), USA), Julien Dudouit (eBay, Inc., USA), Zach Toczynski (Levi’s, USA) and María Victoria Albanesi (MercadoLibre, Mexico).
Mark L. Whitaker (President of American Intellectual Property Law Association – AIPLA, E.U.A) together with Fernando Becerril (President of Mexican Association for the Protection of Intellectual Property – AMPPI, Mexico)
During the cocktail, the participants exchange opinions
James Pooley, worldwide expert in trade secret law and management issues followed with his presentation. Among the panelists were: Julien Dudouit (eBay, Inc.), Zach Toczynski (Levi’s), Matthew Winterroth (WWE), María Victoria Albanesi (MercadoLibre), Arturo Campos (Sisoft Mexico), Amhed Becerra Martín www.marcasur.com
Pereyra (Axkati Legal), Juan Armando Becerra Gutiérrez (INAI), Daniela Juárez (Novartis), Lina Ornelas (Google) and Manuel Rivas (Cisco Systems), who addressed the topics Intermediaries in the Internet and Internet of Things. On the last day, two panels involved personalities from the millennial generation
to discuss branding and monetizing issues with influencers: Diego Alfaro, Romina Sacre, Leonardo Paz, Leticia Sáenz and Carlos Isaac González, as well as attorneys Marco Antonio Morales (Indautor), Efraín Olmedo (Arochi & Lindner) and David Rosales (Tapia Rosales Castillo). El Evento Internacional AMPPI se convirtió en una plataforma para entender las transformaciones en el área de los derechos de propiedad intelectual a la luz de las nuevas tecnologías. Todo ello se acompañó de encuentros sociales, donde fue posible conversar con los panelistas de forma más cercana. Finalmente, fue MARCASUR DIGITAL 2 0 1 7
Listening and taking notes…
presentada la invitación al 7.° Evento Internacional, que se realizará el 28 de febrero, 1 y 2 de marzo de 2018. The AMPPI International Event became a platform to understand the transformations in the area of intellectual property rights in the light of new technologies. All of this was accompanied by social gatherings, where it was possible to speak with the panelists more intimately. Finally, the invitation to the 7th International Event was presented which will be held on February 28, March 1 and 2, 2018. Panel I.P and the Millennials. Rafael Gonzalez (Panamericana de Patentes y Marcas, Mexico), Carlos I. Gonzalez (No Budget Animation, Mexico), Leonardo Paz (Leolab, Mexico), Leticia Saenz (Tea Sommelier, Mexico) and Romina Sacre (Influencer, Mexico).
MARCASUR DIGITAL 2 0 1 7
EVENTOS / ABAPISUL EN BRASIL
The event took place at the Hotel Costão do Santinho, in Florianopolis, Brazil, from March 24 to 26. There were two days of panels and conferences, which dealt with current topics on apostilles and practices of other countries in the field (Michele Copetti, Alexandre Fragoso Machado, Ryan McDonigle, Catherine Escobedo); Legal aspects of industrial designs (Carlos Maurício Piris, Albuquerque Adissone, Saulo Murari Calazans); legal experience in industrial property (Liliane Roriz, Fabiano de Bem da Rocha). Dannemann Siemsen (Rio de Janeiro), Licks Attorneys (Rio de Janeiro), Kasznar Leonardos (Porto Alegre), Tinoco Soares Law Firm (São Paulo), Clarke & Modet (Rio de Janeiro) and the National Institute of Industrial Property of Brazil (INPI) and Barrera & Asociados (Lima, Peru) were represented among more than sixty law firms that were present. The meeting was an occasion to celebrate APABI’s twelve years of existence and, where in addition, tribute was paid to Joao Cassiano Bairros Ovarzábal, former president of ABAPISUL and councilor of ABAPI. The tribute was especially emotional, 70
Cassiano Pinheiro Oyarzábal with his daughter Jessica Pinheiro Oyarzábal (SKO Oyarzábal Marcas y Patentes Ltda.)
Speakers from Brazil, Peru and the United States spoke about trademarks, industrial design and civil process at the XII Meeting of the Regional Association of the Brazilian Association of Industrial Property Agents (ABAPISUL).. www.marcasur.com
Wanderlei Cardoso (Regibras Ltda., Brazil), Bruno Cardoso (Regibras Ltda., Brazil), Antonio Ricci (Ricci & Asociados PI, Brazil), Angela Ricci (Ricci & Asociados PI, Brazil)
Alcion Bubniack (Alcion Bubniack PI, Brazil) and Edgardo Larminy (Pittaluga abogados, Uruguay)
Enjoying an excellent dinner with colleagues
because of his daughter Jesiccaâ€™s presentation, who compared the story of her fatherâ€™s life with the formation and progress of ABAPISUL over the years. She also emphasized that the members of this association are a family formed by the three southern states: Rio Grande del Sur, Santa Catalina and Curitiba. Finally, everyone had the chance to fraternize at a beach volleyball and tennis tournaments sponsored by legal firms, with awards at the end. One more instance to develop networking ... although with a little bit of sand.
MARCASUR DIGITAL 2 0 1 7
From Plaza Cataluña to the Port of Barcelona Restaurants at Plaza Real in the gothic neighborhood, adjacent to La Rambla
Javier Isern, partner of Isern Patents and Trademarks S. L. in Barcelona and a lover of his land, gives recommendations of places to visit in this fantastic city, where the next INTA meeting will take place. With the heart of every good host ... Gaudí, Miró, Picasso, Tàpies ... The 139th Annual Meeting of the International Trademark Association (INTA) will take place in Barcelona from May 20 to 24. A perfect excuse to go beyond the academic and networking issues, and also take advantage of those four days - maybe some more - to escape through the Catalonian streets. MARCASUR talked with Javier Isern, who not did hesitate for a second: “The best way is to start is at Plaza Cataluña, a meeting point between the old town and the Ensanche, where there are usually concerts and exhibitions. Continue through the Avenue Porta de l’Angel, with its famous shops, to the Cathedral, enter it, rejoice in its Gothic and Romanesque style and towards the Plaza Sant Jaume, one of the oldest in the city, taking some of the side streets of the cathedral: Comtes street or Bisbe street, both very beautiful, very narrow”. From there, he continued- it is advisable to cross Jaume I to Via Layetana and take the l’Argentería (you have to stop at one of its good tapas cafes), until you reach the Basilica of Santa Maria del Mar, with www.marcasur.com
its massive and robust exterior and then inside, its striking prismatic pillars and polychromed keystone of the naves, on the roof. And the best way to end this stroll is at Paseo del Borne, an old medieval area with bars and shops. “It is beautiful to reach the port of Barcelona, where there are many restaurants, such as El Merendero de la Mari, with its Catalan-Mediterranean cuisine, seafood and soups, or La Barceloneta and its fresh fish and view of the docks”, he added. When it comes to flavors, Isern’s recommendations are extended to 7 Portes, for their paellas. “And a more sophisticated option, Abac a restaurant with two Michelin stars, serene, neutral, elegant, with a cellar with over a thousand wine references,” he said. What to eat? “You cannot leave without tasting the toasted bread with tomato and Iberian ham or anchovies, paella, black rice, fideuá, or snails and, of course ... for dessert, the Catalan cream!” he replied As for wines, “I recommend Penedès, Priorato and Montsant; above all the GR174, Camins del Priorat, Les Terrasses, Finca Malaveïna ... my favorites” he concluded. And we stopped here because the talk was mouth-watering...
Take note… .It is always nice to have drinks on a terrace, which one do you suggest? «The terrace of the Hotel Duquesa de Cardona, where you can see the port of Barcelona, and the terrace of Hotel de Condes, overlooking La Pedrera. The area of Hotel W is also very nice, where you will find several restaurants, such as El Pez Vela and Gallito, to order good tapas on the terraces. As for museums? “You have to see the Picasso Museum, the National Art Museum of Catalonia and the Maritime Museum of Barcelona.” The best nightclub in Barcelona? «The Opium Mar. It has a spectacular avant-garde design and a space on the beach, located in the Paseo de la Bar-celoneta. The place of fashion in Barcelona”. A souvenir to take back home after the INTA meeting? “As a must: Barca’s t-shirt “ (smiles). “It could also be a typical bottle of olive oil,” he added, although not regretting at all his first option.M
MARCASUR DIGITAL 2 0 1 7
INTA Special Edition