FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nยบ 51 OCTOBER-DECEMBER 2013
FIFA Coach
CONSUME WITH CARE Uruguay and the marijuana RENEWING ASIPI INTERVIEW TO THE NEW PRESIDENT EVENTS IN LATIN AMERICA
THIS EDITION IS SUPPORTED BY:
Editorial
Staff Editor: Juan Pittaluga jpittaluga@marcasur.com
Press: Karina González kgonzalez@marcasur.com
Juan Francisco Pittaluga francisco@marcasur.com
María Victoria Licio mlicio@marcasur.com
Academic Department: Dr. Daniel Lamas dlamas@lamasgrimaldi.com.uy
Collaborators: Teresa Pereira tere@marcasur.com
Cinemag Collaborators in this edition: Latinestadísticas, Marcelo Mazzola, Rafaela Borges, Walter Carneiro and ACHIPI.
The qualifiers for the World Cup in Brazil have concluded and we are a few months away from the start of such an important event. We wanted to bring readers information about the trademark issues surrounding this event. What better way to accomplish that than interviewing the professional who is in charge of the FIFA Unit Brand Protection, who in a very didactic way teaches us about the trademark rights to protect and its major infractions. He also tells us about the damage that these violations can bring the sports world. After reading this story, many readers will surely know when they are dealing with an infringement.
Commercial Department / Subscriptions: Mei-lin Che mche@marcasur.com
Design: LP / arte visual Photography: Mei-lin Che
Communications: Natalia Domingo
In Uruguay, it has been almost passed a bill that allows the consumption and sale of marijuana. It is an alternative that the government decided to take in view of the failure of repressive policies, the growth of the illegal market and its dire consequences. Definitely it is not a trademark issue but it is a Latin American topic of interest for all, and we decided to discuss it on this issue.
ndomingo@marcasur.com
Correction: Alejandro Coto Printer: Gráfica Mosca
Marcasur attended the celebration of the 50th anniversary of ABPI and have tried to convey this important event in the world of intellectual property in Latin America. Congratulations to ABPI, for its achievements from its inception to date. Without a doubt, it will firmly go through another 50 years. In the statistics section we address for the first time a survey of firms that applied for more trademarks in their country in 2012. This work was not easy, it may have errors and we intend to improve it next year. Happy New Year and see you in 2014! M
MARCASUR Year 17 nº 51 October - December 2013 Cont. Echevarriarza 3535 A, 1604 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 Fax: (598) 2623 2957 info@marcasur.com
Quarterly publication edited by Editorial MS S.R.L. ISSN 1688-2121 D.L. 354.155 Paper Commission. Edition protected under Decree 218/96
>Marcasur mail
Send your correspondence to: info@marcasur.com 03
Juan Antonio Pittaluga Editor www.marcasur.com
03 Editorial 04 Table of contents 05 Market research. The firms with the highest number of applications for trademark registration with the national offices in Latin America
07 Have you heard? 08 Marcasur reports 12 Events. 50 years of ABPI. Happy Anniversary in Rio de Janeiro. 17 Interview. With Auke-Jan Bossenbroek. Legal counsel of FIFA. 23 Events. XXVII 27th AAAPI Sessions. Buenos Aires Top. 26 Opinion. By Flavio Arosmena Burbano and Janet HernĂĄndez Cruz from Ecuador. 27 Feature Article. Uruguay: one step from legalizing marijuana. 33 Events. 6th ACHIPI Sessions. Updating days in Santiago de Chile. 37 Interview. With Juan Vanrell. President of ASIPI. 40 Column. By Victoria Pereira, of Pereira Marketing. 41 Article. Parasitic competition in the fashion world. By Marcelo Mazzola and Rafaela Borges Walter Carneiro, of Dannemann Siemsen, Brazil
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Interview With Auke-Jan Bassenbroek. Legal Counsel of FIFA
43 Article. AIPPI twice. With John Bochnovic, President, and the annual event in Helsinki.
45 Attorneys in their free time. With Argentine Marina Buscalia and Puerto Rican Roberto RĂos.
Content
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Feature Article. Uruguay: one step from legalizing marihuana. Consume with care www.marcasur.com
MARKET RESEARCH // TRADEMARKS IN LATIN AMERICA
First in trademarks MARCASUR INVESTIGATED ABOUT THE LAW FIRMS THAT REQUEST MORE TRADEMARK APPLICATIONS AT THE NATIONAL OFFICES OF EACH OF THE COUNTRIES OF THE REGION. WE PRESENT THE RESULTS FOR 2012.
The report informs of the law firms that submitted the highest number of applications for trademark registration in the national offices of the countries of Latin America in the period from January to December 2012. For this, professionals have collaborated with the data for each country. Note that not all countries have the official data of the trademark office of the country, as in many countries, the national industrial property offices do not provide this information because they simply do not keep records in such detail. For this reason, the data reflect three categories: data from the national industrial property office, law firm's own statistics based on publications on applications from publications or newsletters of intellectual property in each country, and lastly, where it was impossible to obtain an accurate data on the intellectual property market. We understand that while the market for trademark registrations is dynamic and depends on factors that change from one moment to another, the purpose of the report was taking a picture of the activity, to obtain an approximation to the reality of that time period in each country. The countries surveyed were Argentina, Bolivia, Brazil, Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Dominican Republic, Uruguay and Venezuela.
Research by consulting firm Latinestadísticas, specialist in legal market research. e-mail: contacto@latinestadisticas.com www.marcasur.com
LAW FIRMS WITH THE MOST APPLICATIONS FOR REGISTRATION OF TRADEMARKS AT THE NATIONAL OFFICES IN LATIN AMERICA. JANUARY-DECEMBER 2012. COUNTRY
LAW FIRM
Argentina
Marval, O´Farell & Mairal
Bolivia
Gabriel Patent and Trademark Office
Brazil
Dannemann Siemsen Advogados
Chile
Sargent & Krahn
Colombia
Brigard & Castro
Cuba
Claim Consultores de marcas y patentes
Ecuador
Corral & Rosales Carmigniani Pérez
Mexico
Uhthoff, Gómez Vega &Uhthoff
Nicaragua
Guy Bendaña & Asociados
Panama
Benedetti &Benedetti
Paraguay
Berkemeyer Attorney & Counselors
Peru
Barreda Moller
Puerto Rico
APG-Pérez Guerrero
Dominican Rep.
Troncoso & Cáceres
Uruguay
Bacot & Bacot
Venezuela
Hoet Pelaez Castillo & Duque
Countries where research data were not accurate were Costa Rica, El Salvador, Honduras and Guatemala. In the case of Costa Rica, there are two firms that have the highest number of trademark applications, alternating year in, year out: Divimark Abogados and Víctor Vargas Valenzuela.
In three countries, the data pointed to two firms in each case, as those with the largest number of trademark applications. In El Salvador: Romero Pineda & Asociados and Ricardo Romero Guzmán. In Guatemala: Viteri & Viteri and Mayora & Mayora. And finally in Honduras: Bufete Mejía and Bufete Casco. M 05
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HAVE YOU HEARD? New data
They come& go In Chile, Silva & Cia has appointed Ricardo Montero as a new member of the firm. Ricardo is a lawyer by the Universidad Fines Terrae and postgraduate in Intellectual and Industrial Property by the Pontificia Universidad Católica de Chile, and has worked for seven years as a partner of the firm in the area of intellectual property. In Peru, Estudio Delion has added to its staff César Kobashikawa, a lawyer specializing in Corporate & Commercial Law, Banking & Company Contracting. César
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Kobashikawa is a new and young talent that Estudio Delion is proud to have on its team of professionals. In Argentina , Marval , O'Farrell & Mairal has promoted two senior associates to partners, Martín Chajchir and Enrique Veramendi. These promotions reinforce two of the major office practices, intellectual proper ty and public/administrative law. The new partners have extensive experience and are highly specialized in their respective practices.
In Panama, AFRA law firm has recently added a new corporate image. With this new image the goal is to represent its progress and convey the importance and commitment to being a team committed to their customers, with their work, and with steady growth and consolidation. The new image can be seen in www.afra.com In Mexico, Calderón y De la Sierra & Cia. has moved offices since August 5th 2013. Their new data are: Av. Santa Fe 481, PH Col. Lomas de Santa Fe 05349 Mexico, D.F. Tel: 5255 5047 7500 Fax: 5255 2623 1132 www.calderoniplaw.com.mx
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MARCASUR reports At the age of 89, in Asunción, died Hugo Berkemeyer Agüero and Marcasur wants to address this great loss. Hugo Berkemeyer was definitely a successful and prominent lawyer. He was also an exemplary husband and father, but he was above all a great gentleman, that is, as defined by our language, a person who behaves nobly and generously. Hugo Berkemeyer was always willing to take kindly to anyone who approached him to talk and had a special gift that made the other person feel always more important than him. A great virtue that only great characters have. He represented his law firm at dozens of international conferences. He was always the first to arrive in the morning; he sat in the front row to listen carefully to the different panellists. And after conferences, he commented them, thankful for being taught something new. He always attended social events where he animatedly conversed with colleagues, sharing stories and experiences.
He was moreover a man of vast culture. The work and ethics in his profession were principles for which he fought vehemently. He was - I must say - the first to open the doors to Marcasur to publicly explain the history and objectives of this medium. We will appreciate that forever. Now a third generation works at his firm that certainly has the privilege to have had a grandfather with the virtues of Hugo Berkemeyer and hear his professional and personal advice. His children Hugo, Marta and Inés, who follow the footsteps of their father and will have to successfully continue the way he intended for his firm, surely will miss his advice, his support, his daily presence, as do those who met this gentleman with capital G. We will unsuccessfully look for him at conferences and it will be hard to admit that he is gone.
Hugo Berkemeyer founded in 1951 what is now the law firm Berkemeyer Attorneys and Counselors. He was a founding member of the Paraguayan Association of Intellectual Property Agents (APAPI) in 1964 and the American Association of Intellectual Property (ASIPI), also in the same year. He was the author of “Legal protection of consumers and users”, published in 1991, and “The evolution of the law of intellectual property in Paraguay”, published in 2009. He contributed to the formation and administration of several non-profit organizations in his country.
Venezuela QUALITY STANDARD
Hoet Peláez Castillo & Duque is an integrated professionals firm with long experience in the protection of intellectual property, which offers competitive services with international quality standards in line with the challenges posed by globalization. Its main objective is to fully and timely meet the needs of its customers. To that end, it has state of the art technology and the participation of a responsible, competent team that is
www.marcasur.com
committed to continuous improvement of quality management system, all consolidated in a safe, harmonious and stable work environment. Today it celebrates the tenth anniversary of its ISO 9001:2008 certification, which has contributed significantly to the improvement of its standards and customer satisfaction. Thus, the firm thanks its customers for the trust put in the protection of their intellectual property rights, and
looks forward to assisting them in the coming years.
www.hpcd.com
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EVENTS // 33rd CONGRESS OF THE BRAZILIAN ASSOCIATION OF INTELLECTUAL PROPERTY
HAPPY ANNIVERSARY
ON NOVEMBER 18TH, 2013, RIO RECEIVED MORE THAN A HUNDRED SPECIALISTS ATTENDING THE ANNUAL CONGRESS OF THE BRAZILIAN ASSOCIATION OF INTELLECTUAL PROPERTY, ABPI. IT WASN'T GOING TO BE ANOTHER CONGRESS AS IT CELEBRATED THE 50TH ANNIVERSARY OF THE FOUNDING OF ABPI. The Association dressed up for the big event, which culminated in the cocktail dinner held at the Copacabana Palace, on Sunday, August 18th, 2013. The Association president, Luiz Henrique O. do Amaral, in a simple but moving ceremony, gave a brief summary of the history of ABPI and paid tribute to the founders who were present. He recalled that August 16th, 1963 when a group of lawyers specializing in 12
intellectual property founded this association in Brazil to deepen the study of this branch of law. It was not created just for professionals, but from start up companies also participated, so that industry and commerce in Brazil joined the development of intellectual property.
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Partying. Marcela Cikato (Cikato Lawyer, Uruguay), Vanesa Suero ( FRTB, Argentina), Raquel Toñánez (Toñánez Ortiz & Asoc., Paraguay) and Cristina Simon (Pittaluga abogados, Uruguay)
Luiz Henrique O. do Amaral stressed that during his presidency was created the business committee to consolidate that work area and attract more companies to the Association, with today's active members being more than a hundred of them. With this business participation ABPI has more expertise to discuss IP issues in politics and business in the country. He also highlighted ABPI's leading role in disputed issues of domain names as well as the Chamber of Arbitration. The president also mentioned the strategic relationship that ABPI has been developing with organizations such as AIPPI , INTA, ASIPI and others, as well as the excellent work done so that Rio was chosen to host the AIPPI Congress in 2015. Arturo Pérez Guerrero (Pérez Guerrero, Puerto Rico) and Marcos Morales (Alessandri Abogdos, Chile)
Eduardo Paranhos (Microsoft, Brazil), Victoria Pereira (Pereira Marketing, Uruguay), Fabrizio Módica (Bareiro Modica abogados, Paraguay) and Joana de Mattos Siqueira (Montaury Pimenta, Machado & Vieira de Mello, Brazil)
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Cinthia Puente (Justpoint Investment, Peru) and Adriana do Valle Garotti (David do Nascimento, Brazil)
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Luiz Henrique Do Amaral (President of ABPI) and Elisabeth Siemsen (Dannemann, Siemsen, Brazil) with her daughter.
Mario Soerensen (Soerensen Garcia Advogados Associados, Brazil), Hugo Mersan (Estudio Mersan, Paraguay) and Pedro Chávez (E-Proint, Costa Rica)
Andrea Possinhas (Gruenbaum, Possinhas & Teixeira, Brazil) and María Fernanda Cea (Fe rrere, Uruguay)
He finished by noting that, as has happened in these 50 years, ABPI will remain the voice of the private sector in the areas of intellectual property in Brazil. The event ended with a music band and everyone danced celebrating such a nice event. On Monday, with the assistance of specialists from around the world, representatives of INTA, its president Toe Su Aung, the secretary of AIPPI and the president of ASIPI, Juan Vanrell, opened the congress for the academic portion. 14
On a meeting. Mauricio Jaramillo (Gómez Pinzón Zuleta, Colombia) and Virginia Cervieri (Cervieri Monsuárez & Asoc, Uruguay) www.marcasur.com
Kone Cesario (UFRJ, Brazil), Elisabeth Kasznar (Kasznar Leonardos, Brazil) and Gabriela Delgado (Montoya, Kociecki & Asociados, Venezuela)
Smiles. Elyssa Michelle LeFevre (Di Blasi, Parente & Associados, Brazil) and Mar铆a del Pilar L贸pez (Zurcher Lawyers, Costa Rica)
There were nearly a thousand attendees. It should be noted that the Brazilian IP specialists in both from the private and public sectors, support such events and always attend, even travelling from distant cities. The conferences and panels were filled with specialists at all times. In one of the panels that Marcasur attended on World Cup and Olympics, ownership issues and ambush marketing, they had to add dozens of chairs as the attendees exceeded expectations. And at lunch on Monday, there was not enough space to accommodate so many attendees.
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AIPPI and Marcasur. Sergio Ellmann, Stephan Freischem, Juan Pittaluga and Felipe Claro
Meetings at the ABAPI booth Juan Pittaluga (editor at Marcasur ) giving a plaque to ABPI president, Luiz Henrique Do Amaral for the 50th anniversary of the Association.
During two days, more than twenty sessions were carried out among plenary and panels; all current topics on trademark issues, patents or copyrights were discussed. They exposed over sixty leading specialists, which undoubtedly shows a great previous work organizing and preparing. ABPI definitely showed that today it is an important voice not only in Brazil, but it is followed closely in other parts of the world. Congratulations! M 16
Ready to take a walk. Jose Vega ( FAVA, Panama), Samuel Pamias (Hoglund & Pamias, Puerto Rico), Estuardo Jauregui (Jauregui, Guatemala) and MartĂn Torres (Brigard & Castro, Colombia) www.marcasur.com
INTERVIEW
WITH AUKE-JAN BOSSENBROEK
FIFA
DT
IN THE FIELD OF SPORTS AND BUSINESS POLICY WE CAN SAY THAT FIFA IS THE TECHNICAL DIRECTOR. THE DUTCH LAWYER, AUKE-JAN BOSSENBROEK, IS RESPONSIBLE TO PROTECT ITS BRANDS IN THE DAY TO DAY. MARCASUR SPOKE WITH HIM AND TOOK A LOOK, FIRST HAND, AT THE MOST INFLUENTIAL FOOTBALL FEDERATION IN THE WORLD.
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He joined FIFA five years ago, after working in the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO). “My intention was to return to the Netherlands to devote to private practice —he says— but when I heard about the opportunity at FIFA, it seemed the perfect position to combine my personal interest in football with my professional interest in intellectual property”. At FIFA, the activities related to intellectual property are divided between the Registration Unit of Intellectual Property and Brand Protection. Bossenbroek spent his first two years in the Intellectual Property Registry unit, which handles new brands permits and filing and execution strategy, as well as third-party applications. And after the FIFA World Cup 2010 ™ he went to the Brand Protection Unit, which is responsible for enforcing intellectual property rights and marketing. After that journey he became today, at just 32, the group responsible for Brand Protection at FIFA. He coordinates the activities of that team, which consists of five people: two Brazilian lawyers, working from the exclusive FIFA office in Rio de Janeiro, Brazil, and the other three are located in Zurich. “Of course, the main focus of our Brazilian colleagues is on on-site activities surrounding the FIFA World Cup in 2014 and dealing with the high number of violations that are discovered in the host nation for that championship”. Zurich handles cases for other territories (it can be literally anywhere in the world), as well as activities of trademark protection related to any additional FIFA events like Women's World Cup and other events of the World Cup at youth level and futsal and beach soccer. The Zurich team also handles registration and customs seizures and surveillance activities on the Internet. Finally, they have also begun preparations for the upcoming FIFA World Cup ™ in Russia and Qatar. How is the legal team formed? The Department of Business Law of FIFA is an internal service unit that is part of the Legal Division. The team consists of four areas, namely: TV (which deals with the transmission contracts and other contracts with the media), Marketing and Competitions (which is responsible for sponsorship contracts, licensing and hospitality, as well as ticket management issues on the one hand, but also of legal services for tenders and hospitality of all FIFA competitions), Intellectual PropertyRegistry and Trademark Protection. The team is composed of www.marcasur.com
«WE BELIEVE THAT THE PROACTIVE AND INTENSE COMMUNICATION IS IMPORTANT TO PREVENT INFRINGEMENTS LIABLE TO OCCUR BECAUSE COMPANIES OFTEN DO NOT KNOWN WHAT THEY CAN DO AND WHAT THEY CANNOT»
twenty professionals from eleven countries. Apart from the Department of Business Law, the Legal Division of the FIFA comprises three departments: Player Statutes and Governance, Corporate Law, and Discipline and Governance. As a new World Cup is a few months away, what is the legal strategy of FIFA and the local organizing committee to combating across the broad Brazilian territory infringements of your intellectual property rights and at the same time protect your partners and sponsors? Our efforts to safeguard the integrity of our commercial agenda in relation to the FIFA World Cup 2014 began long ago, so we believe we are well prepared for the event. In terms of legal strategy, we appreciate the measures taken by the Brazilian government to implement a strong legislative framework to deter potential offenders while FIFA has the tools necessary to combat violations of intellectual property and ambush marketing activities. On the basis of our intellectual property rights and marketing, we developed a trademark protection program that rests on three pillars: communication, monitoring and enforcement. In addition, we will have a representative of the trademark protection team in each of the twelve host cities to coordinate daily operations of the games. Our communications efforts are critical to the success of the broader trademark protection program. We believe that proactive and intense communication is important to prevent violations that may occur because companies are often unaware of what they can do and what they cannot do. In each host city for the World Cup in Brazil we are organizing regular events to inform local communities about what is allowed and what is not, in relation to intellectual property of FIFA, and to highlight business opportunities arising as a result of the tournament. We have also organized seminars for the advertising industry in order to raise awareness of the specific legislation of ambush marketing that has been implemented in Brazil. Moreover, we have sent letters detailing the rights of FIFA and the adverse effect of ambush marketing to those companies that have a history of
prohibited marketing activities. In our website, www.fifa.com/brandprotection, we have published public directories, an information letter about the activities of marketing and other informational material. In this type of event ambush marketing is common, i.e., when non-sponsoring companies manage to be present at the event by advertising. Is it therefore possible to say that this is currently the most common offence against which fights FIFA? It is definitely fair to say that ambush marketing is a major priority in efforts to protect the FIFA trademark, especially because its commercial program is directly at risk, as ambush marketing attempt to obtain a commercial advantage of the event without contributing to its organization, which may contribute to devalue the official sponsorship. We distinguish two types of ambush marketing, namely the intrusion marketing and association marketing.
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«FIFA'S LEGAL TEAM CONSISTS OF TWENTY PROFESSIONALS FROM ELEVEN COUNTRIES» The ambush marketing by intrusion attempts have physical presence around the official sites of the event, for example, distributing branded gifts among fans, such as hats or flags around the stadium or on the way to them when there are games. Attempts to achieve physical presence may also include decorating business establishments around the stadiums or prominent display of the brand in buildings that are visible from these locations. FIFA will monitor the relevant areas in cooperation with local authorities through brand protection monitoring equipment to ensure that all relevant standards are followed. Furthermore, the ambush marketing by association is related to advertising activities, trying to establish a business association with the event, seeking to take unfair advantage of the huge public interest generated by the World Cup. Such trade association occurs when a company gives the false impression of having a direct connection with the event, either through the use of official marks, sponsorship or other affiliation. The common denominator between the two types of ambush marketing is that companies who develop such activities do not appreciate that the FIFA World Cup is the result of significant efforts of this organization to develop and promote not only the tournament, but the sport of football around the world, something that would not be possible without the financial support of the sponsors.
Companies involved in ambush marketing activities seek to take advantage of the good reputation and positive image generated by the World Cup, but without contributing to its organization. Can you cite some examples of ambush marketing against which you have fought in the name of FIFA recently? In recent months, we have seen an increasing number of promotions to consumers whose prizes are tickets to the games in 2014 FIFA World Cup ™ championship. Offering tickets as prizes in promotions aimed at consumers is a marketing right property of FIFA, which is extremely valuable and is granted exclusively to its sponsors. It is difficult for us to assume that we are faced with a number of reputable companies that are cheating their customers by giving the impression that they are authorized to offer game tickets as prizes in their promotions. We understand that the World Cup is a unique event that captivates the world's imagination like no other, but nevertheless we ask the business community to play fair and refrain from ambush marketing activities. After all, in exchange for the exclusive rights granted to them, FIFA sponsors make a significant contribution to finance not only the event itself but also of the many charitable activities and base soccer. Ultimately, without these contributions it would be impossible to accommodate and carry out the World
«IT IS DEFINITELY FAIR TO SAY THAT AMBUSH MARKETING IS ONE OF THE MAIN PRIORITIES IN THE EFFORTS OF TRADEMARK PROTECTION OF FIFA»
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Cup. Third parties seeking to unlawfully associate with the event or with FIFA are not interested in supporting or have a sustainable contribution to the sport, but only their own commercial advantage. Therefore, FIFA must devote significant resources for the prevention of ambush marketing.
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For such cases, what are the measures and precautions taken by the FIFA? In particular as regards the inclusion of game tickets in promotions to consumers, such practices that do not have specific prior written permission by FIFA are prohibited, in accordance with the terms and conditions in the tickets, therefore, the tickets used for this purpose are considered void by the organization and its holders are denied admission. As a result, not only the FIFA suffers the negative consequences of unauthorized promotions with tickets, but also the client, who believes he has won a legitimate ticket. The cancellation of a ticket and the consequent denial of entry cause disappointment among fans. For this reason, FIFA has actively filed suit to enforce the general terms and conditions and to claim damages in many jurisdictions. In Brazil, the event-related legislation explicitly prohibits unauthorized FIFA 2014 World Cup ticket for advertising, sales or promotional use. These rules also characterize as a crime using game tickets for the purpose of gaining economic advantage without consent of FIFA. This should deter companies of misleading consumers by giving the impression that they are authorized to give the tickets to the games as prizes. It is encouraging the recent increase in favourable rulings against ambush marketing activities in Latin America. Lately, judges from Argentina, Colombia and Mexico have spoken in favour of rights holders, as organizers of sporting events and teams, to protect the sponsored property. FIFA itself recently obtained a favourable outcome in Mexico related to the World Cup 2006, in which it was confirmed that an advertising campaign with the theme of the world championship violated the rights of FIFA.
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ÂŤGENERALLY, IN THE WEEKS BEFORE THE WORLD CUP AND DURING, WE TEND TO RELY ON COURT ORDERS TO ENFORCE OUR RIGHTSÂť
Usually, in the weeks prior to the World Cup, and during it, we tend to rely on court orders to enforce our rights. The World Cup involves a very short window of four weeks, during which we must be able to effectively enforce our rights. After all, the financing of the organization in the next four-year cycle depends crucially on the success of the World Cup finals. The lack of quick remedies against infringement situations can jeopardize the future conduct of the event. What other actions constitute common FIFA trademark infringements? Could you give us some examples? Like many rights holders, FIFA is concerned about the marketing of counterfeit products. In view of the FIFA World Cup 2014, we have improved our border protection throughout Latin America. As a result, there was an increase in the number of seizures in countries like Argentina, Paraguay, Chile and Peru, and we expect the number of cases to increase in the coming months.
Trademarks: FIFA World Cup Brazil 2014 FIFA has a wide variety of trademark registrations throughout many jurisdictions, making it impossible to give a comprehensive overview of all the trademarks that we have registered internationally. Of course, we extensively registered our events-related brand assets, such as the logo, the poster and the official mascot. The brand portfolio of FIFA also includes a large selection of designations of events that our business affiliates use to promote their participation in the World Cup. The specifics depend largely on local practices and include identifiers such BRAZIL 2014, WORLD CUP 2014, MUNDIAL 2014, COPA DO MUNDO 2014, and so on.
Who are the sponsors of the FIFA World Cup Brazil 2014 and how are they selected by FIFA? FIFA's sponsorship structure has three levels. The first is the FIFA partners, the second is the sponsors of the FIFA World Cup and the third is the national promoters on each FIFA event. FIFA's six partners have the highest association level with FIFA and with all its events. Also, they play a larger role in promoting the development of soccer around the world, from base soccer to the highest level of the World Cup. This allows
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FIFA and its partners to form true partnerships and add great value to the commitment of both parties. The sponsors of the World Cup have rights in the Confederations Cup and the World Cup internationally. The main rights of a sponsor at this level are the brand association, the use of exclusive marketing assets and media exposure, as well as offers of hospitality and ticketing for events. The level of national sponsors is the last level of the sponsorship structure of FIFA, and allows local companies in the host country to promote partnership in the domestic market. One of the most important benefits of the sponsorship strategy of FIFA is that it allows each brand to stand out from
the competition in its product category. Speaking of figures, approximately how much is the investment for the realization of the World Cup Brazil 2014? The financial liability of the 2014 FIFA World Cup ™ championship is shared between FIFA and the Local Organising Committee (LOC). FIFA directly administers USD 1125 million, which covers areas such as prize money, TV production, teams and games. LOC is primarily responsible for the logistics and operations of the event (e.g., local transportation, operation of stadiums and security). LOC's budget amounts to BRL 892 million and is entirely funded by FIFA .
SPONSORSHIP STRUCTURE OF FIFA FOR THE WORLD CUP FIFA 2014 BRAZIL
THE NUMBERS OF FIFA Other operating income
Financial income
-Trademark Licensing -Quality Concept -Sanctions and remedies / games rates -Other (rental income, sales of movies rights)
-Interest
Events-related income -TV Rights -World-Cup 2010 -Other FIFA events -Marketing rights -World-Cup 2010 -Other FIFA events -Hospitality rights -License fees -Other
I imagine that, as a lawyer, representing the highest international soccer body involves great challenges. What were the biggest challenges you have faced as a professional working there? Our biggest challenge is to effectively prepare for the four-year cycle to implement an effective trademark protection program in an extremely short period of four weeks. For trademark protection team, that means juggling the different responsibilities, such as the immediate vicinity of the stadium, potential infringement cases worldwide and especially necessary today, keeping a watchful eye on what happens in Internet. During the event, the world is watching us, and everyone at FIFA and LOC are committed to offer a FIFA World Cup ™ tournament that meets the high quality requirements expected by the world. At the end of the day, what we try to ensure is that the FIFA World Cup ™ championship is a great feast for all fans of the world. Unfortunately, in our particular area, that also means dealing with companies that knowingly exploit the enthusiasm of fans to their advantage. M
-Effects of foreign exchange -Income from financial assets
100% = USD 4.189 MILLION
Source: Financial Report 2010. Official publication of the Fédération Internationale de Football Association. © FIFA 2010 21
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OCTUBRE / DICIEMBRE 2 0 1 1
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EVENTS // 27th AAAPI INDUSTRIAL PROPERTY SESSIONS
TOP BUENOS
AIRES
Coffee Break. Samuel Pamias (Hoglund & Pamias, Puerto Rico) and Jaqueline Querciola (Berkemeyer Abogados, Paraguay)
Smiling. Gabriel Pittaluga and Juan Pablo Jaume, both from Pittaluga abogados, Uruguay.
LAST 15TH AND 16TH OF AUGUST, THE ICONIC FOUR SEASONS HOTEL IN BUENOS AIRES, HOSTED THE 27TH INDUSTRIAL PROPERTY SESSIONS ORGANISED BY THE ARGENTINE ASSOCIATION OF INDUSTRIAL PROPERTY AGENTS. AGAIN, BUENOS AIRES OPENED ITS DOORS TO MORE THAN 250 PROFESSIONALS OF INTELLECTUAL PROPERTY OF LATIN AMERICA AND THE WORLD.
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The sessions offered a series of presentations of different topics with experts in different fields, who explained and argued, from their point of view, examples and facts about what happens today in intellectual property. Alejandro Breuer Moreno, president of AAAPI, was in charge of the opening speech as well as participation in several presentations. Some of the main issues discussed during the first day were: the protection of innovations in agricultural biotechnology, plant varieties and patents, enforcement of intellectual and industrial property in the digital context, industrial property and sports, legal aspects of trademark labelling: tobacco, drugs, food and drink. Day after day society poses new challenges to intellectual property and this should always be up to date. It was interesting to discuss in this conference contemporary issues such as social networks or the World Cup to be held in 2014 and the changes it entails.
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Eduardo Mazzuchin (R.A Durán & Asociados, Argentina), Dolores Cavoti (Kors Noviks, Argentina) and Gustavo Fischer (Fischer Abogados, Uruguay)
Elegance and charm . Ricardo Gordó (Gordó Lobell, Argentina) and Juan Matsubara (Hausheer Belgrano & Fernández, Argentina) Friendly duo . Iris Quadrio (Marval O’Farrel & Mairal, Argentina) and Virginia Cervieri (Cervieri Monsuárez y Asociados, Uruguay)
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The dynamic of the exhibition was enhanced by the visual support and comfort of the room, careful in every detail for the attendees. On the second day were discusses topics like the Apple vs. Samsung case, industrial designs, trademarks and fashion, the updating of the law, among others. The closing words were spoken by the vice president of the association, Ricardo Gordó Lobell. We look forward for the 28th Sessions in the following year, with a Buenos Aires always captivating, energetic and beautiful, undeniably entertaining of its visitors, with a huge range of activities for all tastes, ages and nationalities. M United Argentines. Carolina Fernández (Hausheer, Belgrano & Fernández), Matías Noetinger (Noetinger & Armando) and Alejandro Breuer (G. Breuer)
Opening. Natalia Montes (Barbat & Cía, Argentina), Carina Cavero ( Monsanto, Argentina), Eliana Maldonado, (Toñánez Ortiz y Asociados, Paraguay) and Daiana Samos (Izquierdo & Vicetto, Argentina)
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Matching. Raquel Flanzbaum and Diego Montangero, both from Mitriani, Caballero, Ojam & Ruiz Moreno, Argentina,with María Nájera (Clarke, Modet & Co., Argentina)
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opinion
Barça in Ecuador By Janet Hernández Cruz and Flavio Arosmena Burbano
In Ecuador, Barça (FC Barcelona of Spain) submitted applications to register its trademark in classes 25, 28 and 41, which apparently would conflict with the most important team in that country, the Barcelona Sporting Club (BSC), which filed oppositions. Not only the names are similar, also the emblems. The question is: can there co-exist two nearly identical known trademarks, to identify the same services in the same area? According to lawyer Flavio Arosemena, of Arosemena Burbano & Asociados Cia. Ltda., lawyers of BSC of Ecuador, the foundation of the action is on the acquired and solid —as well as previous— trademark rights in Ecuador, of the Guayaquil sports club, and on the consolidation of the Barcelona trademark in the mind of Ecuadorians in favour of BSC. All this is due to the 88 year history of the club, which is the most popular in the country and who has won more championships. He further states that the Spanish team has known of the existence of the Ecuadorian team directly and continuously for a long time, as evidenced by the friendly games played between the two clubs over the years, as well as publications in Spain about the Ecuadorian team. Arosemena says that as a result of this, the consolidation of the rights in favour of the BSC has been verified with the tacit agreement of Barcelona of Spain. On the other hand, Janet Hernández, of Abreu & Asociados, representing the Barcelona team, believes that this conflict can not be analyzed following the typical rules for determining confusing similarity of the signs. Additional circumstances must be considered as the peaceful coexistence of the trademarks in the local market during several years, the level of attention and knowledge of the potential consumers of these particular products/services, local recognition and differentiation of the conflicting trademarks. This should lead the authority to conclude that consumers were not confused by these trademarks www.marcasur.com
despite their similarities and, therefore, can coexist while registered. If the possibility to coexist is refused, could the rights of Barcelona Sporting Club in Ecuador be reversed? In the opinion of Hernández, there are legal arguments in favour of F. C. Barcelona. The brand of the Barcelona team has secured global recognition prior to the alleged local notoriety of the Ecuadorian team; it is registered in multiple countries, it is the indisputable emblem creator and incorporates in its name a geographical indication that is false and misleading in regards of the Ecuador team. Arosemena disagrees and argues that the rights of Barcelona Sporting Club existed first in Ecuador and are solid. He further states that the reputation of the name Barcelona in Ecuador existed first and long ago in favour of the Ecuadorian team. The case is pending resolution and we cannot anticipate an outcome. What is certain is that will form a valuable case law in our region, where there coexist six River Plate and three Boca Juniors, plus the original Buenos Aires, where in addition to the British teams exist Arsenal and Racing Club (one Argentine and one from Montevideo) and there are several other similar cases.
Janet Hernández Cruz. Abreu & Asociados. Representing the FC Barcelona in Ecuador. Professor of Intellectual Property at the University of the Americas (UDLA). Flavio Arosemena Burbano LL.M. Master in Law by the Georgetown University. Referee of the World Intellectual Property Organization. Teacher of Postgraduate System at the Catholic University of Guayaquil. 26
CENTRAL ARTICLE
URUGUAY: A STEP FROM LEGALIZING MARIJUANA
CONSUME
WITH CARE THE WORLD IS SEARCHING FOR AN ALTERNATIVE DRUG POLICY AND URUGUAY DARED TO TAKE THE FIRST STEP. THEY CALL IT THE «URUGUAYAN EXPERIMENT» AND IF IT BECOMES LAW, IT WOULD MAKE THE URUGUAYAN STATE IN FIRST IN THE WORLD TOTAKE OVER THE WHOLE PROCESS OF MARIJUANA: PRODUCTION, SALES AND DISTRIBUTION.
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STARTING POINT. In order to minimize the risks and reduce the harms of marijuana use, the chamber of representatives approved last July a bill to legalize the cultivation, distribution and sales, in order to regulate the production and distribution. The project has been approved after a fourteen-hour long session and a close vote of 50 in favour and 46 against. Currently it is under consideration by the Senate. If they approve it, it will become law. The central idea of the Uruguayan legislators is to protect consumers from the risks involved in connection with the illegal trade and drug trafficking, and seek, through state intervention, to address the health, social and economic consequences of problematic use of psychoactive substances and reduce the incidence of drug trafficking and organized crime. The current President of Uruguay, JosĂŠ Mujica, leader of the leftist coalition and former guerrilla tupamaro, believes this bill will allow consumers of cannabis avoiding dealing with illegal sellers offering them heavier drugs, and that the country will reduce the risk of crime and
violence experienced in other countries. The current law dates back to 1974 and allows the use of marijuana and other drugs but prohibits the production and trade.
IN THE HANDS OF THE STATE. The regularization plan of the State contemplates the sale and cultivation of marijuana. It will assume control of the activities of import, export, planting, cultivation, harvesting, production, procurement in any capacity, storage, marketing and distribution of cannabis and its derivatives. To meet this objective it will create a new state agency, which depends on the Ministry of Public Health and the Institute for Regulation and Control of Cannabis (IRCCA). A public law NGO that will be responsible for controlling the production and distribution of psychoactive cannabis for recreational use. The same may be done with prior approval of the Ministry of Livestock, Agriculture and Fisheries, with the nonpsychotropic cannabis (industrial hemp for textile use). The psychoactive condition will depend upon whether the
cannabis contains more than 1% of tetrahydrocannabinol (THC).
WHAT IS THE PROJECT? The bill provides that the IRCCA will create a registration system to regulate the production and consumption of marijuana for recreational use. Consumers will have access to marijuana through three ways: buying it in pharmacies, personal self-cultivation or membership clubs. To buy the product, people must register at IRCCA and they will be issued a license. These records will be part of the Law on Protection of Sensitive Data or Habeas Data. To register, people must be over 18 and be residents of the country. The latter requirement was intended to prevent the so-called marijuana tourism. Pharmacies will be enabled by the IRCCA to sell marijuana to the general public, which may not exceed 40 grams per month per user. The bill also allows for self-cultivation: planting, growing and harvesting marijuana plants domestically. It will be permitted up to six plants and up to 480 grams per year.
CONSUMERS WILL BE ABLE TO ACCESS MARIJUANA IN THREE WAYS: PHARMACIES, SELF-CULTIVATION OR MEMBERSHIP CLUBS
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LEGALIZATION EXPERIENCES > Therapeutic Cannabis: In USA it is permitted the marketing of medicinal use marijuana with prescription in 17 states and the District of Columbia. Last year Colorado and Washington legalized recreational use of the plant and, despite colliding with federal law, the government has already announced it will not affect the decisions of states. > In the Czech Republic was approved earlier this year the marijuana sale in pharmacies for medicinal purposes with prescription, claiming its analgesic and sedative properties. > The coffee shops: in Holland it is allowed to sell marijuana in coffee shops, where it is sold and consumed, but never formally legalized. The cultivation is prohibited, so what is consumed in Dutch coffee shops has been cultivated outside the country. > Self-cultivation: in Argentina was approved the self-cultivation last November. > Decriminalization is not the same as legalization. In Spain and Portugal, the possession of small amounts of marijuana for personal use is decriminalized. Portugal was a pioneer in decriminalizing the personal possession and medicinal use in 2001. But consumers of this drug can still be arrested by the police. In most Latin American countries the consumer is criminalized.
For this, an IRCCA registration is required. The so-called membership clubs, which must be approved by the IRCCA, are consumer associations, designed for the production and distribution of cannabis among its members. The bill provides that these clubs must have a minimum of 15 and maximum of 45 members, and may be planted up to 99 plants. It can also be cultivated for scientific and medical use, which may be obtained by prescription, and the manufacture of non-psychotropic cannabis will be facilitated, known as industrial hemp. The regulations state that the IRCCA will be responsible for implementing the sanctions for violations of licensing standards and any unauthorized planting must be destroyed with the intervention of a judge. The State shall grant licenses to private companies to grow marijuana for commercial purposes, but only the government can legally buy the crop.
Regarding plantations and according to preliminary estimates, an estimated 10 to 20 hectares of cannabis in a greenhouse would be sufficient to meet the demand. According to surveys of JND, there are 120,000 people who use marijuana at least once a year; 75,000 once or twice in the month and 20,000 who consume daily. 20% of Uruguayans aged between 15 and 65 used marijuana at some point in their life and 8.3% consumed in the last year. In this context, and with the possibility of regulating a fully deregulated market until now, commercial alternatives are presented. In fact, pharmacies in Uruguay (with more than a hundred years of history), have a very important experience in this area and are negotiating to market marijuana to the general public. Moreover, membership clubs offer another commercial opportunity. In exchange of a monthly charge to its members, the investor can assume the tasks of planting, cultivating, harvesting and distributing the proceeds among the members of the club. There is also a potential in the market of tools and accessories for both the production phase (lights to accelerate growth, botanical advice, etc.) and the consumption of the product.
The legislation also determines the creation of a Monitoring and Evaluation Unit of the implementation and enforcement of the law as well as the development of drug consuming prevention plans. For the government, the drug consuming prevention plans are paramount in the project, in fact, the spending currently made to combat illegal trade, which is not little, will be spent on education. In this regard, advertising will be absolutely prohibited.
MARKET REGULATION. InSight Crime Reports says that the cost of marijuana varies by region but may reach USD 5 per gram. In Uruguay, as reported by July Calzada, secretary general of the National Drug Board (JND), a fixed price of USD 2.5 per gram is proposed. It is expected that the competitive price will attract users to the non-profit legal market.
20% OF URUGUAYANS AGED BETWEEN 15 AND 65 USED MARIJUANA AT SOME POINT IN THEIR LIFE AND 8.3% CONSUMED IN THE LAST YEAR. 29
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THE LIST OF SUPPORT AND PRAISE RECEIVED BY THE GOVERNMENT IS LONG AND KEEPS ADDING In essence, the success also depends largely on the ability of the government to undermine the black market prices and offer a better product than imported cannabis.
THE MOMENTUM AND ITS BRAKE. The debate around the bill is nothing new: the critics of the bill point to possible consequences of health and wellness, while supporters praise the attempt to pragmatically address the widespread use of marijuana and systematic failures of the global war on drugs. The measure has many detractors in the opposition parties, the Nacional Party and the Colorado Party, which explains the close vote. The discussion is followed expectantly by cannabis consumer associations and supporters of its legalization, who conducted an awareness campaign of support for market regulation of marijuana and the bill under the banner of the NGO Responsible Regulation. A survey released by consulting company Cifra reveals that only 26% of the population supports the bill.
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THE UN WARNED THE URUGUAYAN GOVERNMENT THAT THIS PROJECT FAILS THE INTERNATIONAL TREATIES ON NARCOTICS
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THE BILL STILL NEEDS TO PASS THROUGH SENATE, WHERE APPROVAL IS EXPECTED, AS THE GOVERNMENT PARTY FRENTE AMPLIO HAS PARLIAMENTARY MAJORITY.
The bill still needs to pass the Senate, and is expected to be approved as the governing party, Frente Amplio, has parliamentary majority. However, members of the opposing Colorado Party warned that they plan to promote a public consultation to overturn the law. In fact, in view of the change of government that will take place in 2015, many wonder about the continuity of the project. Time will also tell whether this is the first step in the regulation of other illicit substances, a debate that is also taking place globally and ultimately will depend on the particular facts of each place, according to their idiosyncrasies.
WORLDWIDE EXPECTATION. The intention of the Uruguayan government to legalize marijuana puts the country at the forefront of drug regulation in the world and the curiosity of the whole world looks to Uruguay. The project has received support and praise. Several former presidents of the region, such as Fernando Henrique Cardoso of Brazil and Vicente Fox of Mexico, the current president of Guatemala, Otto Perez Molina, former UN and NATO secretaries, Kofi Annan and Javier Solana, and the Secretary General of the OAS Jose Miguel Insulza, expressed their support for the initiative. Peruvian Mario Vargas Llosa, literature Nobel winner, praised the country for its initiative. At a presidential visit to U.S. in September this year, the Hungarian-American billionaire George Soros, chairman of the Open Society Foundation, who is convinced that the general policy carried
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over drugs does not work, expressed support for the Uruguayan government and its counterpart, David Rockefeller, also supported the president to carry out this plan.
CRITICS ARE IN ORDER TOO. International organizations and neighbouring countries, which have interest in the drug subject, are warily watching the initiative and, in general, gleefully see a possible reverse. The UN warned the Uruguayan government that this project breaches international treaties on narcotic drugs. In fact, if the project worked and the experience was repeated in other countries, some international bodies to battle drug would have no more reason to exist. Neighbouring countries accompany this process closely, as it can impact them. For them it is important that control is effective in Uruguay, as to not supply the international market. If controls were to be absent, countries would take the measures that are taken towards other countries where drugs are produced, with strong border measures. Moreover, as the drug market is global, the question of how unregulated markets will react against the proposal of the Uruguayan State. The hypothesis of specialists is a balloon effect will occur: ÂŤIt is pressed on one side and moves to another.Âť In fact, that was what happened when Colombia regulated on this topic: markets moved south. According to the global report on drugs presented at the Organization of American States (OAS) this year, two-thirds of the final
value of drugs is related to the final stage of distribution and not with the production chain. It is likely that a part will move to other criminal activities, but currently no other activity has the profit margin of this one. They will move to other places.
CONCLUDING. A proposal like the one being carried out raises questions in everyone, even the most ardent supporters. But they are convinced that if they keep doing the same, reality will not change. We will have to see whether other countries will continue this path. For now, the eyes will be set on Uruguay but at this point no one doubts that this is a global paradigm shift in the drug issue. M
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EVENTS // 6th SESSIONS OF THE CHILEAN ASSOCIATION OF INTELLECTUAL PROPERTY
Cristóbal Porzio (Porzio, Ríos & Asociados), Santiago Ortúzar (BBP) and Max Villaseca (Estudio Villaseca)
UPDATING
DAYS
Cristian Mir (Puga Ortiz abogados), Felipe Langlois (Johansson & Langlois), Carolina del Río (Clarke, Modet & Co Chile), Max Villaseca (Estudio Villaseca), Ariela Agosin (Albagli Zaliasnik), Juan Pablo Silva (Silva & Cia), Max Montero (Johansson & Langlois), Santiago Ortúzar (BBP) and Cristóbal Porzio (Porzio, Ríos & Asociados)
On 12th and 13th of August, the 6th Sessions of the Chilean Association of Intellectual Property were held. They received an excellent national and international attendance. At the opening, the president of ACHIPI, Max Villaseca stressed the progress that will bring the new Industrial Property Act, currently being processed at the Parliament. He also warned of the concern among professionals dedicated 33
to intellectual property for the negotiations on the Trans-Pacific Partnership, especially by this secrecy in these and other past experiences in such agreements. Topics covered included the analysis of designations of origin and geographical indications. Andrés Ried (Pro Chile) mentioned the different regulations that coexist in the country and the importance that the government is giving to this matter for www.marcasur.com
Javier Vergara (Ernst & Young), Loreto Bresky (Alessandri & Cia) and Hernan Palacios (Universidad Católica de Chile)
the benefits implicated to their owners. Meanwhile, Federico Mekis (legal advisor at Vinos de Chile) recounted the difficult negotiations that his union had to carry out with the European Community to achieve a good agreement in this area. The second panel addressed the enforcement of intellectual property rights from a digital context. The legal manager of Microsoft Chile, Alex Pessó, showed interesting figures on piracy and licensing of software and then tackled the new regulation on unfair competition and intellectual property in the United States, and the challenges Microsoft will face to protect their Internet assets. Meanwhile, Alejandro Moreira, deputy director of Economic Crimes of the District Attorney Office, discussed various statistics on annual revenues of such crimes; he raised the difficulties faced by the Office in its investigation and finished explaining the case concerning website Cuevana.
Samuel Benavente (ACHAP), Christian Erman (Chile Diseño), Ariela Agosin (Albagli Zaliasnik) and Fernando López (Johansson & Langlois) Andrés Grünewaldt (Silva y Cía), Alex Pesso (Microsoft Chile) and Alejandro Moreira (Public Ministry)
«AHORA ESTAMOS EN UNA ETAPA EN qUE TENEMOS qUE ADAPTAR LA SOCIEDAD A INTERNET» www.marcasur.com
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Expositors. Carolina del Río (Clarke, Modet & Co Chile), Andrés Reid (Crowdfunding de Prochile) and Federico Mekis (Vinos de Chile)
Later, in the panel entitled “Protected creativity: Advertising and industrial design”, Fernando Lopez (Johansson & Langlois) spoke about the new bill, which facilitates the processing of applications for industrial designs and drawings by establishing a deposit system, which makes the protection more expeditious. On the other hand, Christian Erdman, of Chile Design, spoke about the various categories of existing design and how urgently protection is required in this union. Regional Vice President of the Chilean Association of Advertising Agencies, Samuel Benavente, through entertaining cases, made the audience think about the confluence between intellectual property and advertising standards. Finally, Javier Vergara, a partner at Ernst & Young, and Hernan Palacios, director of the MBA at the Pontificia Universidad Católica de Chile, explained —through examples and experiences in their professional development— different measurement and valuation methodologies for trademarks. Also, they talked about the value of a company in relation to its trademarks, and the way a trademark influences the price of products and services. M
Arancibia (NIC Chile) Juan Pablo Silva (Silva & Cia) and Maximiliano Santa Cruz (Director of INAPI)
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INTERVIEW // JUAN VANRELL
RENEWING
ASIPI
FROM NATIONAL DELEGATE TO TREASURER, FROM TREASURER TO SECRETARY AND FROM SECRETARY, THE YOUNGEST PRESIDENT OF THE ASSOCIATION. JUAN VANRELL IS THE NEW PRESIDENT OF ASIPI AND MARCASUR TALKED TO HIM.
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Juan Vanrell (Montevideo, 1968) is a person easy to talk to. The Uruguayan, who after 25 years of work on intellectual property established his first firm, Vanrell Abogados. He started in 1998 at the Fox y Bacot firm and then was one of the professionals at Bacot y Bacot. At the same time, he has integrated the board of the Uruguayan Association of Intellectual Property Agents, where he was a member, twice secretary and twice president. He was the youngest president of AUDAPI and now of ASIPI. www.marcasur.com
His work schedule is divided between his new firm and the dedication for the Association as the president. Still, he took time to meet us in his office in the Nautical Towers (next to the Rambla del Buceo and past the World Trade Center), on the fifth floor. On his desk he has photos of his children: Juan Andrés, 14, and Sofia, 9. In a corner of his office he has a mini golf course, owned by his son, who has begun to practice it. However, he confesses that what he really likes is soccer. His great passion is the Nacional Football Club, and he owns a box at the stadium. To begin Juan, tell us what has been your career within the Association. I entered in 1999 and my first activity was in Asunción in 1998. The person who usually went to the conference in the firm would not go so I did. At that conference a group was formed, at the time comprising young people, among whom were: Martín Pittaluga, Justin Young, Rafael Covarrubias, Carolina Fernández, Margarita Romero and me. Since then I have participated in all conferences. I started as a national delegate and at the same time I handled the ASIPI Youth Committee, which printed a magazine called ASIPI informa. It was published twice a year with articles from countries, some institutional articles, many pictures and advertising of events. At that time I was also a delegate of Uruguay from 2000-2003. And in 2003 I became treasurer, which was a rather unique situation because since its founding in 1964 until 2003, or for 39 years, the treasurers of the Association had been Americans. So in 2003 it was a
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«MY PRIMARY ROLE IS TO DEFEND THE PROFESSION AS THE UNION WE ARE»
Latin American, with all the fears that involved, because they saw the Americans as the fallacy of honesty. From 2003 to 2006 I was treasurer, then secretary from 2006 to 2012. I went in as treasurer under the presidency of Berkemeyer and then I was secretary of Michaus and Triana, and now president. What are your main responsibilities as president? The daily contact with the Secretary and with the entire membership. Everyday there are more and more inquiries and members. New members arrive every day who are not Americans, but Europeans and Asians. What is the link to the local authorities? What is increasingly happening is that they are asking us to collaborate on policy issues in different countries of Latin America. Why? Because despite having cooperation agreements with local associations as AUDAPI, AAPPI, ACHIPI, ABPI, etc., it is easier when a foreigner speaks with the authorities, as opposed to a local. Often, the local is an interested party and that can betray or transpire as something financial, and then the national authority interprets it as a union that will defend their economic interests, and do not see the position that is being defended from the legal or philosophical point of view. How is the relationship with other associations?
ASIPI has already crossed the oceans as we are engaging in intellectual property issues in other continents because we noticed that the attack on intellectual property does not come necessarily from America but from distant countries, such as Oceania, and then goes to the Americas. For example, the subject of tobacco began in Oceania, and then moved to England, Uruguay and Brazil. This topic makes the feeling of anti-property intellectual in the world to grow increasingly. On the one hand, intellectual property is increasingly protected and, on the other hand, it is increasingly gaining opponents. The tobacco issue is sensitive because it touches health and intellectual property, then it is very difficult to address because both issues are mixed. Other issues are not so. For example, what has ASIPI defended in recent times? In Brazil, for example, we presented a paper on behalf of the Association of Industrial Property Agents because a federal judge understood that the figure of agent of industrial property did not exist. ASIPI presented a position in line with the local association. What things do you think have changed at the events over the years? ASIPI events are going through something similar to other international conferences: more and more, companies hold their regional events there too. This did not happen before. On Saturday, Sunday or a day after the event, a company gathers all
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«THE IDEA IS TO TOTALLY GET IN THE DIGITAL AGE AND AT THE SAME TIME, ENGAGE THE MEMBER, WHO STILL RESISTS BROWSING THE WEBSITE AND THE SOCIAL NETWORKS» the lawyers in Latin America and holds its meeting, as INTA does. Many companies are taking ASIPI as a base for meetings with their correspondents in the region. Depending on the country where the event is being held, this activity may be bigger or smaller. If we hold a conference or a session in Argentina, Brazil, Mexico, Chile or Colombia, many companies that have offices in these countries can hold these meetings. It is more difficult in smaller countries like Uruguay, Bolivia, Paraguay, but I know that in Mexico, when we held our last event, many companies held their meetings with all the Latin American lawyers and agents. Last year, in Punta del Este, some companies held their events in ASIPI, instead of holding them in May at INTA. What is the limit for these events held simultaneously? There is an internal policy to so the conference activities do not overlap, mostly out of respect for the panellists who prepare their presentation and it is not logical that an audience is half full, not to mention half empty. So the idea is that no activities overlap, but there are increasingly more breakfasts and business meetings that do. What plans does the Association have for the long term? To position ourselves as an association of reference throughout Latin America and that is what we are trying to be achieve, so Latin America is considered as a major player in the IP worldwide. I think it already is, because we are permanently consulted from WIPO and other associations are having us in mind. ASIPI did not exist twenty years ago, that is the
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reality. We have a table at WIPO as permanent observers and we expect to be present at all meetings of IP NGOs in the world. For example, there was a meeting at INTA, where 15 or 20 associations of worldwide intellectual property came together, and it is the fifth time ASIPI participates at the event. In ASIPI have three base languages: Portuguese, English and Spanish and we have a very large asymmetry between members. It is very difficult to represent in a single forum the U.S. and Uruguay, because the needs and interests are very different. What are the demands of the members? For example, the ASIPI cocktail at INTA must be the busiest, attended by 600 people and is a leader in the event. These are things that have been institutionalized and members appreciate that. Publications are also important. The ASIPI membership must be the cheapest in the world among similar associations: you pay a $300 fee, and for example last year, members received three books of 200 to 300 pages. This year we also have planned two or three books and a few others are in the waiting list. Now is the time to adapt to new technologies and to use the new tools provided by Internet, in order to provide more services and that, ultimately, is what the member wants. The idea is to totally get in the digital era and also involve the member, who is still struggling to enter the website and social networks.
project that is beginning to be managed in the Americas and with which we intend to build a new space for the intellectual property in the various educational fields. In 1955 the scientific Heber Simon created the GPS, a troubleshooting system. He notes that human thought is a GPS General Problems Setting and Solving. ASIPI should be the GPS of intellectual property in the Americas. It is the place we want it to consolidate in the next decade, as the more powerful the general intelligence is, the greater our ability to solve specific problems. M
What would be the most desirable position to be in ten years? ASIPI have some goals for the next decade that are focused on the goal of being generators of knowledge. ASIPI Educa is an example, an educational
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COLUMN
SUCCESSFUL NETWORKING
HOW TO MAKE A DIFFERENCE AT AN EVENT the competition is attending the same events? What should we do to stand out? What are the steps and recommendations so that this investment in marketing is more profitable and achieve our goals? In this context, marketing, and in particular the area of business development has become strategic. The key? Organizing the event ahead of time, with proper planning and strategy. STEP BY STEP Prior > (depending on the size of the event, from 6 to 2 months before)
By María Victoria Pereira
The volume of international events that are attended in intellectual property is very unique in this branch of law. Conferences, seminars, sessions and annual meetings are part of the schedules of intellectual property lawyers. Attendance today has clearly more to do with networking than academics. That translates into actions to obtain new contacts and reaffirm existing ones through a relationship. What are those actions? The options are many. There are those that can be arranged in a schedule: work meetings, cocktails, parties, breakfasts, lunches, teas and dinners; there are those that are spontaneous, like sharing a taxi or chatting with someone in a queue; all is part of the networking. From the point of view of marketing, events are key times of the year. They have become the main marketing tool used in the profession, both for its importance as for the investment involved. It is when you see the people.
THE IRREPLACEABLE FACE TO FACE. It is time to make new contacts, find new customers and strengthen the loyalty of existing ones. But what happens when
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• SET A GOAL AND A STRATEGY specifically for the event. • PLAN actions and contacts, always taking into account the objective. • BE CREATIVE. Seek innovative measures. • CAREFUL PRESENTATION. Rates, brochures, business cards, are important; do it with time. • BUDGET. Have a defined budget. During > If you have a good planning, you will surely achieve a full and varied agenda and the “during” becomes very dynamic. Note: • BE PUNCTUAL. Golden rule. • BE FLEXIBLE. Have an agenda that allows changes to meetings or adds new ones. • CAREFUL SPEECH. Have a good oral presentation of your services. Be as specific as possible. • POSITIVE ATTITUDE. Here, bad days are not allowed. Good energy can be felt (and bad too!). • WRITE. The sooner the better; the networking is intense and memory fails. Write down what was discussed but are also valid personal impressions and observations. • CAREFUL IMAGE. First impressions DO count.
After > REPORT. Conduct a comprehensive report of the contacts made. • FOLLOW UP EFFECTIVE CONTACTS. As soon as possible and through a personalized email. Avoid handing contact cards to a third party to send a standard email to all contacts. • FOLLOW UP PENDING MEETINGS. Have they not attended your meeting? Did they arrive at the scheduled time? It can happen to anyone. But be sure to keep corresponding with the person. The sooner the better. Lost meetings can also be opportunities. •ANNUAL MEETINGS MONITORING PLAN. Keep in touch for a year with certain planned actions. It is usual to add the contacts to the database to receive information about your firm: alerts, newsletters, press releases. Excellent. But to go a step further, what really helps to stand out is the personalized mail, the specific interest. You can not apply that to everyone, but you should to the strategic ones. Select them and be consistent. Of course all this planning and actions proposed require a significant time investment. It is part of the new rules of the profession game, where marketing is important, and to get good results you have to devote time and dedication. Much can be delegated to professionals who are trained, who will pave the way. But others tasks are unavoidable, because when it comes to networking, we are talking about a relationship, something difficult (and we can add: inconvenient) to delegate.
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María Victoria Pereira is a consultant in legal marketing and business development, specializing in Latin American law firms. Her email address is: victoria@pereiramarketing.com For more information visit: www.pereiramarketing.com
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ARTICLE
PARASITE COMPETITION IN THE WORLD OF FASHION Any commercial litigation involves competition, which is important to harmonize the market; it prevents monopolies and makes manufacturers invest more in their product (price, quality and marketing) in order to win the consumer. The problem arises when the fair competition, i.e., the healthy rivalry that oxygenates the business world, it becomes unfair. The Paris Convention, an international treaty accepted by our legal system, introduces the idea of unfair competition in Article 10a: “It constitutes an act of unfair competition any act of competition contrary to honest practices in industrial or commercial matters.” In turn, the Industrial Property Law provides protection against unfair competition (Article 2) and gives some examples of actions that can configure such conduct (Article 195). This is not an exhaustive list, since section 209 safeguards the right of the injured party not to suffer losses or damages from “acts of unfair competition not established in the present law.” Therefore, we disagree with the assertion that the practice of unfair competition is limited to the erroneous purchase of a product or service instead of another, taking for granted the deviation of the customers. Such interpretation, perhaps the most rudimentary and childish regarding the issue, is not predominant today, because of the types of infringements, increasingly varied and intelligent. This is due to the so-called fraudulent diversion does not necessarily happen only in 41
LIKE ANY COUNTRY WITH FREE COMPETITION, BRAZIL HAS A MODEL OF ECONOMIC SYSTEM THAT ALLOWS BUSINESS, BASED ON FREE INITIATIVE, TO USE MANY MARKETING TOOLS TO ACHIEVE THEIR OBJECTIVES, NAMELY, INCREASING THEIR CLIENTS AND GETTING A PORTION OF THE MARKET.
By Marcelo Mazzola and Rafaela Borges Walter Carneiro, Dannemann, Siemsen & Ipanema Moreira
recruiting clients, but also the false association, opportunism, parasite exploitation, easy advantages, illicit enrichment, dilution; in short, anything that generates competitive imbalance and that, as such, can not be supported by
the legal system in any way. In some cases, the deviation of customers may even be the result, but will never be a fundamental requirement for configuration and characterization of this illegal act. From this point of view, we can say that www.marcasur.com
unfair competition is a general category and parasitic competition is a type. The parasitic competition is the bleeding of an intellectual capital employed by another business and its use in economic activity for an easy advantage, without wasting energy, time or money, but has guaranteed success, proven by the employer that generated such capital. It also occurs when a competitor draws inspiration from the achievements of others and tries to take advantage of these investments in the technological, artistic or commercial field, without necessarily appropriating their clientele. Recently, in an unprecedented ruling, the Court of Rio de Janeiro ruled that Globo, Monange and Mega Models must compensate the American brand Victoria's Secret due to parasitic competition practice. This was because in 2011 the defendants organized an event called Monange Dream Fashion Tour, which was clearly inspired by the world-famous Victoria's Secret Fashion Show. Besides the similarities between events, the defendants hired some famous models from Victoria's Secret, the so-called angels, to model in the accused event wearing lingerie (which Monange does not sell) and angel wings, exactly as in the event of the American company.
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The court held that the defendants used distinctive symbols established by the applicant to benefit from the glamour and sophistication of Victoria's Secret event, and thus created the impression among consumers that the events were somehow related. The court also highlighted the fact that Monange had launched a line of creams and cosmetics with the event name, proof of their clear attempt to create a partnership between Victoria's Secret famous angels, distinctive symbols of the trademark and recently launched products, to facilitate the positioning of the brand in the market. Firstly, the ruling recognized the practice of parasitic competition and ordered the defendants to pay property damage, that would be determined at the sentencing phase, and compensation for moral damages in the amount of R$ 100,000. In the appeal, the Civil Chamber of 6th shift overturned the ruling by majority, under the understanding that the cause of the plaintiff was unfounded. More recently, in a new instance, the judges followed the vote of the rapporteur, Cleber Ghelfenstein, and restored the ruling and the sentence to the defendants to pay compensation for moral damage. According to the judges, it configured unfair competition, as in the specific context of deliberate similarities; the
defendants' conduct erodes the distinctiveness of the commercial image and allows the popularization of the trademark of a competitor. This ruling, though not yet final and unappealable, demonstrates the maturity of the judiciary in matters relating to industrial property and gives security to the business community who faces litigation of this nature. M
The authors. Marcelo Mazzola and Rafaela Borges Walter Carneiro are partners at Dannemann Siemsen of Rio de Janeiro, Brazil.
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EVENTS
AIPPI TWICE JOHN BOCHNOVIC, PRESIDENT OF AIPPI, TOLD MARCASUR ABOUT THE CHALLENGES OF THE ASSOCIATION IN THE NEXT YEARS. NEXT WILL BE THE ANNUAL EVENT IN FINLAND. Consulted about AIPPI's place in the world stage of intellectual property, Bochnovic responded that the Association enjoys a leading position based on its long history and its prominent role in the development of laws and international treaties on the matter. “One of the distinctive strengths —he said— is that it has strong and influential national groups in many countries and regions, including South America.” He noted that “historically, the Association has advocated for the advancement of the law, without lobbying for the interests of a specific group or sector.” Respected for its outstanding studies and rulings, the Association represents the views of the intellectual property community and the owners of intellectual property. The three inevitable topics that, according to Bochnovic, will mark the agenda for the next ten years are: first, to continue efforts to harmonize, not only through multilateral international treaties with WIPO or the WTO, but also on the basis of bilateral agreements and more practical issues related to the practice of patents and trademarks. “The patent offices will also continue efforts to implement a shared work”, he said. And he stressed that “the unitary patent and patent court unified in the European Community, will surely be a dominant theme, as the impact this will have on the global IP community is very important.” Finally, the increase in litigation of patent rights, particularly by non70
practicing entities (sometimes referred as patent trolling), has currently attracted considerable attention in the United States:
“This can be a very active topic both in the US and other countries (for example, Europe) in the next ten years”. www.marcasur.com
FORUM & EXCO IN HELSINKI
From 5th to 11th of September, it was successfully held the event in Helsinki, capital of Finland. A metropolitan and vibrant city, with over half a million inhabitants and located in the center of the Baltic Sea. Sergio Stefan Schohe (Boehmert & Boehmert, Germany), Sergio Ellmann (Marval, O’Farrel & Mairal, Argentina), Edy Portal (Portal & Asociados, El Salvador), Fernand De Visscher (Simont Braun, Belarus) and Felipe Claro (Vice member of AIPPI and partner at Claro & Cia, Chile)
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OCTUBRE / DICIEMBRE 2 0 1 3
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ATTORNEYS IN THEIR FREE TIME
ROBERTO RIOS (San Juan de Puerto Rico, 1974), lawyer at Hoglund & Pamias of Puerto Rico, devotes his free time to music and acting. He inherited his grandmother's interest in the arts. She was a singing teacher who managed bands and involved the family in these activities. “I liked the dynamics of the artist on stage doing his show and interaction with the public”, he says. From that moment, he knew: “Someday I want to do the same”, he said to himself. He studied at the prestigious Escuela Libre de Música Ernesto Ramos Antonini in San Juan, Puerto Rico. During those years he learned to play flute, guitar, percussion; he took singing lessons and participated in the concerts choir. In his college years he was part of the concert choir of the university and he began singing with bands and orchestras of tropical music (salsa, merengue, etc.). “I spent nearly all my college years with my guitar serenading and singing bohemias”. In 1998 he recorded a CD of merengue as a member of Kasado band, with record label Sony Tropical. However, after completing his degree in electrical engineering, he relocated in the United States to work at the USPTO as a patent examiner, so he decided to keep singing only as a backup singer for various bands and orchestras in private activities until today. “It gives me the perfect balance between my family, work, singing and acting.”
SINCE A LONG TIME, PROFESSIONALS NORMALLY COMBINE WORK AT THE FIRM WITH ACTIVITIES THEY CARRY OUT THE FASCINATING WORLD OF FREE TIME. MARCASUR SPOKE TO TWO OF THEM AND THEY TOLD US ABOUT THEIR CHOICE.
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He likes to sing because it allows him to be creative, interact with the public and act in musicals. “I can combine my two passions into one platform, combining feelings and emotions in one interpretation”. He sings pop music, ballads, merengue and salsa. However, he admits that salsa is not his strong suit: “I have to practice the songs a lot.” One of his favourite songs is Something Stupid, by Frank and Nancy Sinatra. “It is a melodically simple song but full of emotion.” His favourite band is the Christian rock band Stryper. “The lead singer, Michael Sweet, was a big influence on who I am as a singer today.” The acing goes back to high school, where he played one of the main characters in the play The runaway hero, by Puerto Rican writer Nemesio R. Canales. Two years ago, when his eldest son began taking acting classes, he went to pick him up at the academy and without thinking twice, he signed up for the classes. “Acting professionally in the theatre is a new stage in my life; I am enjoying it every day and hope to have the opportunity to perform with my son.” “The last play I acted in was about a group of people who are locked up in an elevator and situations that occurred between them. The day of the premiere I took the theatre elevator to go to my dressing room. What happened? The elevator was broken and I was locked up there for 30 minutes. That will surely get you into character!” The opportunity to sing and perform in front of an audience has not only helped www.marcasur.com
to increase his confidence as a professional, but has also improved his diction and image towards people. “This double life as superhero, as I call it, has always been possible with the support and help of my family, my children and my wife.”
MARINA BUSCALIA (Buenos Aires, 1979). Among the many activities she combines with her work as a lawyer in charge of the international department at Lauritsen & Asociados, there is one that is also her passion: hockey. And while she says that in Argentina hockey is not a sport that has a lot of recognition, they have Las Leonas, who are for those who practice it “an example of tenacity, grit and love of the sport.” It is precisely this perseverance that defines Marina in hockey. She began practicing it in high school when she was 14. “We had to choose an extracurricular activity and hockey was a sport that I liked, so I decided to try it”, she explains. The game immediately absorbed her and playing as a team was a good opportunity to make friends and also a way to release the tension accumulated during the week. She usually plays with former mates form various college courses and other friends of friends. “We train on Wednesday nights”, she says. “We exercise technique and practice some strategies, and then we split into two teams and play a game.” They have participated in friendly tournaments with friend teams and are currently participating in the championship Lica in two categories: “mommies”,
whose requirement is that the players are over 30 and have not played in the last five years professionally, and “free”. “We started in the category E of the tournament and now we are about to move up to B”, she proudly says. The most difficult game she played this year was against River. “It is a highly competitive team and we had to give the best of us. I think it was also the best game we played, it was a great effort but we won.” Anecdotally, she remembers entering a friendly tournament last year, organized by Lica in Mar del Plata, which allowed mixed teams. “While the men of our team may not know well the art of the game, they put a lot of effort and were assembled many competitive games; it was a nice experience.” On whether this activity results beneficial to the profession, she says: “We played some games against teams from other law schools, so this sport is not only entertainment, but also serves to expand the network of contacts.” A restless spirit, the next goal with the team is to make the B category. “It's almost there, and we are very confident that it will happen.” Professionally, she hopes to continue developing in the firm. “We are growing steadily and we are in the ranking of the most important IP firms of Argentina”, she concludes. M
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