FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nยบ 63 OCTOBER-DECEMBER 2016
MAGAZINE
THIS EDITION IS SUPPORTED BY:
CONTENT 6.
Editorial
10.
Latinstatistics. Patent applications filed in Latin America during 2015 compared to previous years
16.
Marcasur reports
18.
Marcasur Excellence Awards 2016. Winners and nominees
24.
Interview / Jacobo Cohen, Regional Legal Manager at MercadoLibre
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Topical issues.Smoking I await‌ Uruguayan Government vs. Philip Morris case. Daniel Lamas
32.
IX ACHIPI Sessions
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Towards New Business. IP Law firms tell us about their current and future activities
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XXX AAAPI Annual Sessions
44.
XXXVI ABPI International Congress
48.
AIPPI World Congress
Interview / Jacobo Cohen
51.
IPO Annual Meeting
Regional legal manager at MercadoLibre
54.
Attorneys in their free time. Guy Benda talks about chess
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Marcasur Excellence Awards 2016. Winners and nominees Winners and nominees
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Towards new business IP Law Firms tell us about their current and future activities
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staff Editor and Director: Juan Pittaluga juan@marcasur.com Editorial coordinator: Fabiana Culshaw fculshaw@marcasur.com Writers: Juan Francisco Pittaluga francisco@marcasur.com Wina Arambule warambule@marcasur.com Habitual contributors: Daniel Lamas dlamas@lamasgrimaldi.com.uy Teresa Pereira tere@marcasur.com Victoria Pereira victoria@pereiramarketing.com Contributor to this issue: Ricardo E. Antequera Ricardoenrique@antequera.com.ve
EDITORIAL
Commercial Department: Mei-lin Che mche@marcasur.com Social media manager: Cintia Ferreiro cferreiro@marcasur.com New content manager: Karina González kgonzalez@marcasur.com Communications: Claudia Azambulla czambulla@marcasur.com Natalia Domingo ndomingo@marcasur.com Graphic design: LP / arte visual Correction: Alejandro Coto
This is the fourth year in which we proudly celebrate the Marcasur Excellence Awards. We do not search for winners or losers, it is not about that. We just honor IP professionals every year, based on our readers' opinion (and we are the only ones to do such thing). This issue includes three very important events to be held this year in Argentina, Brazil and Chile. You will also find information about our new activity, “New Business Rounds”, which was recently inaugurated in Orlando and will be held again in Buenos Aires next December. Finally, we would like you to know that we are ready for launching the Marcasur application in December; this is as much as we will reveal, but it will soon be available! See you on our next issue. M
Printing: Gráfica Mosca
MARCASUR Number 63 October-December 2016 Cont. Echevarriarza 3535 A, 1501 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 Fax: (598) 2623 2957 info@marcasur.com
Juan Antonio Pittaluga Founder and Editor of
MARCASUR
Quarterly edited by Editorial MS S.R.L.
ISSN 1688-2121 D.L. 354.155 Comisión del Papel. Publication protected by Decree 218/96
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Latinstatistics
PATENT APPLICATIONS A Chronicle of the fall… LATINSTATISTICS ANALYZED THE FLUCTUATION OF PATENT APPLICATIONS FILED IN LATIN AMERICA DURING 2015, AND COMPARED IT WITH PREVIOUS YEARS. THIS ANALYSIS OFFERS THE NUMBER OF FILINGS PER COUNTRY, NUMBER OF APPLICATIONS FILED BY RESIDENTS AND NON-RESIDENTS, AS WELL AS THE AVERAGE PENDENCY FOR DISPOSAL OF PATENTS IN EACH COUNTRY. The number of patent applications filed in Latin America dropped 0.14 % from 2013 to 2014 and another 5.56% from 2014 to 2015; drastically falling during the last year. According to this research, carried out by Latinstatistics, this ongoing decrease is the result of the continuous deceleration that has been affecting this sector since
2012, when growth reached 6.31% (1.22 points less than in 2011). During 2013, there was a mere 0.71% increase. Overall applications in the region (17 countries) during 2015 (60,318) represents a 5.01% drop from 2012.
TABLE 1. PATENT APPLICATIONS FILED IN LATIN AMERICA (2010-2015) Country
Totals
2013-2014 fluctuation %
2014-2015 fluctuation %
Totals
Note: n/d: no statistical data 8
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TABLE 2. PATENT APPLICATIONS FILED IN LATIN AMERICA DURING 2015
COUNTRY
2015
MEXICO 18071 BRAZIL 25946 ARGENTINA 4089 CHILE 3274 COLOMBIA 2242 PERU 1249 VENEZUELA 1077 ECUADOR 718 URUGUAY 672 C0STA RICA 599 PANAMA 552 GUATEMALA 372 PARAGUAY 365 BOLIVIA 351 DOMINICAN REPUBLIC 309 HONDURAS 228 EL SALVADOR 204 CUBA N/A NICARAGUA N/A
Brazil and Mexico topped the 2015 list (25,946 and 18,071 respectively). Following, way behind, Argentina (4,089) and Chile (3,274). Compared with 2014, 9 out of 17 countries in the region have shown decline in the number of filings during 2015. Peru experienced a dramatic growth in 2011, with a 289.33% increase (from 2010), and grew up until 2014 when it came down by 2.95%. Venezuela has also dropped by 32.77%. But this Caribbean country is preceded by Uruguay (15.47%), Brazil (-14.49%), Argentina (12.67%), Paraguay (-10.10%), Honduras (-6.94%), Bolivia (-6.90%), Guatemala (-6.30%) and Peru (-2.95%). With a total number of 552 applications filed in 2015, Panama is at the top of the ranking with a 92.33% increase, 80.33% more than its successor; Mexico (12.00%). Following El Salvador —not so bad for the country with the biggest drop from 2013 to 2014 (-21.43%). Chile is ranked fourth with 5.65%, following Costa Rica (5.46%), Colombia (3.89%), Ecuador (2.43%) and the Dominican Republic (1.64%). In spite of the fact that Ecuador has increased its number of filings during
2015, this figure has dropped by 57.98% from 2015. Even though Panama is at the top of this ranking, this country has not been able to surpass the number of applications filed in 2010 (586). There are other countries that have not been able to surpass their own records —also achieved during 2010: Guatemala, El Salvador, Costa Rica, Honduras and Venezuela. Mexico is something else. After dropping by -3.57% during 2011, this country managed to overcome this drawback and has been growing steadily ever since: 8.95% (2012), 0.84% (2013), 4.47% (2014) and 15.90% (2015). Unlike any other country in the region, Chile has been increasing the number of patent applications ever since 2010; 159.47% (2011), 8.70% (2012), 1.22% (2013), 1.34% (2014) and 5.65% (2015). Countries with the biggest number of filings during the last six years are Brazil (171,255), Mexico (94,224), Argentina (27,894), Chile (16,302) and Colombia (12,318), while those with the smallest numbers are Honduras (1,458), El Salvador (1,553), Guatemala (2,335) and Paraguay (2,333).
TABLE 3. FLUCTUATION OF PATENT APPLICATIONS FILED IN LATIN AMERICA (2010-2015)
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TABLE 4. PATENT APPLICATIONS FILED BY RESIDENTS IN LATIN AMERICA (2010-2015) 2013-2014 fluctuation %
Country
2014-2015 fluctuation %
Note: s/d: no statistical data
Twelve countries provided information regarding the number of filings during 2015 by residents (domestic applications) and non-residents (foreign applications).
Historically, most patent applications are filed by non-residents; nevertheless, this figure has grown as follows: 16.30% (2011), 4.40% (2012), 0.93% (2013) and 3.72% (2014). Information available from 2015 is partial, corresponding to twelve different countries and showing an average 31.83% growth in said countries.
RESIDENTS
NON-RESIDENTS
Applications filed by residents increased in eight different countries, especially in Uruguay (105.41%), where 2014 had resulted in a -58.88% decrease, the second biggest drop of that period. In Colombia, filings by residents have increased in different percentages ever since 2010: 37.59% (2011), 16.39% (2012), 17.84% (2013), 3.58% (2014) and 23.46% (2015). 2015 was the year with the biggest number of filings (since 2010) in Paraguay, Brazil, Colombia and Mexico. Mexico was the country that grew the least in both periods (2013-2014 and 2014-2015).
In Latin America, most applications are filed by non-residents. Nevertheless, its growth started to fall and has currently reached negative percentages: 12.26% (2011), 5.74% (2012), 0.96% (2013), 0.77% (2014) and -5.75% (2015). Decrease ranges from -1.32% (Honduras) to -13.60 (Bolivia). From 2013 to 2014 Bolivia became the second country with the greatest drop (-20.05%), Ecuador was the first (-23.21%). Increase ranges from 0.06% (Brazil) to 36.81% (Ecuador). Paradoxically, in
Patent applications filed by residents and non-residents in Latin America.
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2014, Brazil was the country with the smallest decrease, while Ecuador had the greatest . During the analyzed period, 2015 was the best year for non-residents in Mexico (16,707), Chile (2,831) and Colombia (1,921). The biggest numbers of filings during the last six years correspond to Brazil (147,669), Mexico (86,465), Chile (14,100) and Colombia (10,957).
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TABLE 5. PATENT APPLICATIONS BY NON-LATIN AMERICAN RESIDENTS Country
2014-2015 2013-2014 fluctuation % fluctuation %
Note: s/d: no statistical data
Numbers Patent applications filed in Latin America during 2015 dropped 31.83% is the average growth that applications filed by residents experienced in the region during 2015. 5.56% from 2014. In 2014, filings dropped 0.14% from 2013.
9,836 applications were filed by residents during 2015; this 7.53% was the biggest growth during the last six years and was the best year since 2010 (55.58% growth between these two years). corresponds to the 2010-2011 period. 366,923 patent applications were filed in Latin America during Applications filed by non-residents in Latin America dropped 5.75% from 2014. the last six years.
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TABLE 6. AVERAGE PENDENCY FOR DISPOSAL OF PATENTS IN LATIN AMERICA (2014) Country
Average waiting time
Pendency (years)
Sources: World Intellectual Property Organization (WIPO) Argentina: Claudia Serritelli (Chaloupka law firm) Bolivia: National Intellectual Property Service Brazil: Vívian Íris Barcelos, Luiz Pimentel and Marcelo Chimento (National Industrial Property Institute) Colombia: José Luis Londoño and Henry Plazas (Superintendency of Industry and Commerce) and Fabio Andrés Quintero (Vera Abogados) Costa Rica: Cristian Mena and Jonathan Lizano Ortiz (National Registry of Costa Rica) Ecuador: Jackeline Herrera (Ecuadorian Institute of Intellectual Property) and José Luis Barzallo (Barzallo & Barzallo Abogados) El Salvador: Evelyn Menjivar and Rafael Castillo (National Registry Center – CNR) Guatemala: Intellectual Property Registry Honduras: Camilo Bendeck (General Directorate of Intellectual Property) Mexico: Mexican Institute of Intellectual Property Paraguay: Lorena Mersan (Mersan Abogados) Peru: Liz Mena (National Institute for the Defense of Free Competition and the Protection of Intellectual Property – INDECOPI) Dominican Republic: National Office of Industrial Property Uruguay: Lucía Nuñez (National Directorate of Industrial Property) Venezuela: Adolfo López Moreno (Ayala & López Abogados) M
Wina Arambulé Latinstatistics
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En la pantalla, Francis Gurry, director general de WIPO.
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OCTUBRE / DICIEMBRE 2 0 1 4
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MARCASUR reports Dominican Republic MEANT TO BE TOGETHER
IP master's degree. Seven years later, Zaida left Messina & Messina and started her own path. Ana continued on growing and has been very successful. Throughout her career, she has set several precedents in the IP world.
At the age of 19, Zaida Lugo became paralegal at Messina & Messina. A few months later, her aunt-in-law, Ana Isabel Messina, an IP pioneer in the Dominican Republic, discovered a precious potential in Zaida and became her mentor, introducing her to the IP world. Ana encouraged Zaida to study at the Frankling Pierce Law Center, where she became the first Dominican to obtain an
Neither one of them could foresee that twenty years later they would be reunited. They are both very happy to work together and harvest successful results. In May, 2016 Biaggi & Messina, strategically associated with Zaida, created a branch specialized in IP matters. Biaggi & Messina-Lugo IP currently manages a wide IP portfolio for national and international clients.
amessina@bmlip.com zlugo@bmlip.com
Panama A PLAYER WITH PROVEN EXPERIENCE WAS BORN Recognized Panamanian attorneys Luis Guinard, Vanessa Noriega and Ileana Martinelli, have decided to create GUINARD, NORIEGA & MARTINELLI. Luis Guinard was IP Manager at Vallarino, Vallarino & Garcia-Maritano, where he will remain as partner (changing its name to Vallarino, Garcia-Maritano & Guinard) and explore other areas of his professional career. Vanessa Noriega is former Brand
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Manager of that vary same law firm. Ileana Martinelli was IP Manager at a very well-known law firm up until a few months ago and has played major roles in the IP world, such as vice president of ASIPI. They have several years of experience in the IP area, as well as in other areas such as commercial and corporate law. In addition to this, GNM has an association agreement with Vallarino, Garcia-
Maritano & Guinard, and therefore offer a wide range of legal services. This new association of attorneys guarantees high quality services, as acknowledged by international specialized publications and confirmed by clients and colleagues of these prestigious professionals.
www.gnmlex.com
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Maria Pilar Troncoso, recognized Dominican attorney and vice president of ASIPI, is the winner of this year's Marcasur Excellence Awards, as decided by her colleagues of the region.
MAIN ARTICLE
Maria Pilar Troncoso, from the Dominican Republic, received the Gold Marcasur Excellence Award this year, with 44 votes; Jorge Otamendi, from Argentina, received the Silver price, with 37 votes; and the Bronze went to Hugo T. Berkemeyer, from Paraguay, with 30 votes. Congratulations! We also congratulate those who were nominated: Alicia Lloreda (Colombia), Gerardo Muñoz (México), Maximiliano Santa Cruz (Chile), María Carmen de Souza-Brito (Dominican Republic) and Guy José Bendaña (Nicaragua). This is the fourth Marcasur Excellence Awards edition, meant to price Latin 20
American IP professionals. Marcasur was very careful when evaluating these professionals, paying special attention to their merits and achievements during 2015. Career and experience were also taken into account, as well as recognitions received by other institutions, articles published in relation to the IP area and special merits, such as taking part in the creation of new IP laws in their respective countries. Our experience with previous editions surely contributed to this year's great success; 180 professionals took part in this awarding process.
Eight nominees were selected by 25 Latin American Attorneys, subscribers to this publication, who voted those professionals they considered had enough merits to be awarded such a price. Once these nominees were selected, Marcasur invited all subscribers, through its website and social media profiles, to choose a winner among their colleagues. This is how we obtained our results, which we now share with you.
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GOLD
BRONZE
1
María del Pilar Troncoso, Troncoso Leroux Abogados, Dominican Republic
She became President of ASIPI in 2015. She is Commercial Delegate Assistant of the Dominican Republic in the United States and Professor of Intellectual Property in Master Degrees and other courses at different local universities. She has a Law degree Magna Cum Laude from Universidad Nacional Pedro Henriquez Ureña. Founding partner of Troncoso Leroux law firm. She participated in the drafting of Law No. 20-00 on Industrial Property of the Dominican Republic and its Regulations of Implementation. She is former President of ADOPI (Dominican Association of Intellectual Property) and has published different articles on Industrial property issues. She has also taken part in several congresses and both national and international seminars as lecturer.
2 Jorge Otamendi, G. Breuer, Argentina. He was nominated for the Star Individuals (Chambers Latin America) during 2015. Clients and colleagues describe him as “an important IP author”. Doctor in Law and Social Sciences, Catholic University of Argentina; he also obtained a Master of Comparative Law at the University of Illinois. He is a very experienced professional, currently partner of the G. Breuer law firm. Some of his previous experiences: Advisor to the Secretary of State of Industrial Development (1979-1981), president of AAAPI (1980-1997), honorary member of AIPPI (2010), head of the AIPPI Argentinean Group (2004-2014). He has participated in a great number of seminars and symposiums, and has been teaching at universities for a long time. He is part of the Professional Advisory Council of the Catholic University of Argentina.
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3 Hugo Berkemeyer, Berkemeyer Attorneys & Counselors, Paraguay Nominated for Star Individuals (Chambers Latin America) 2015. His colleagues describe him as “the main character of the Paraguayan IP scene”. He studied law at the Universidad Nacional de Asuncion del Paraguay, got a Master of Law at the San Diego University (California) and a Law degree at the Franklin Pierce Law Center. His career has developed at the law firm founded by his father, Hugo Berkemeyer, in 1951. He was advisor for the drafting of the IDB Trademark Law (1997) and for the World Bank in order to improve the investment environment in Paraguay (2003-2004). He was president of ASIPI, member of the INTA Directorate and founder of the Paraguayan AIPPI Group. He has published works related to IP in Mercosur. He is lecturer in his country and abroad.
SILVER
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NOMINEES
Alicia Lloreda, Lloreda Camacho & Co., Colombia Winner of the President's and Volunteer Service Award Winners 2015, celebrated at the INTA's Leadership Meeting in Panama. She was the first Colombian attorney to be a member of INTA's Board of Directors (2008-2010). She is currently a member of the Presidential Task Force for revising the all entire INTA committee structure. She is also member of INTA's Panel of Neutrals and member of the Leadership Committee. According to different international rankings, she is one of the leading attorneys in Colombia. She has a Law Degree from Universidad del Rosario, a Master's Degree in Law from New York University and a Specialization Degree in Financial Law from Universidad de los Andes. She has been partner at Lloreda Camacho & Co. since 1996 and heads the Intellectual Property Department of the firm. She handles the most high-profile unfair competition litigations in Colombia. She is also a frequent speaker at INTA and other IP organizations such as APAA, ASIPI and ACHIPI.
Gerardo MuĂąoz de Cote Amescua, Grupo Televisa S.A.B., Mexico He serves as Intellectual Property Legal Director of Grupo Televisa, S.A.B. since 2010. He is also member of INTA's Board of Directors and Legal Vicepresident of the North American Broadcast Association (NABA). Since 2005, he has been taking part of negotiations between some NGO and different WIPO's member states. He studied Law at the Universidad Iberoamericana. He has been awarded, for the performance of his IP work team, by the World Trademark Review (2011 and 2013), the International Law Office together with the Association Corporate Counsel (2013 and 2015) and the International Legal Alliance Summit & Awards (2013). He represents some NGOs pushing the Protection of Broadcasting Organizations Treaty forward. He is cofounder of the Alliance of Ibero-American Broadcasters for the protection of Intellectual Property (ARIPI). He is professor and lecturer at different academic and professional forums.
Maximiliano Santa Cruz, INAPI, Chile He is Director of the Chilean National Institute of Industrial Property (INAPI) since 2009. During 2015, he became an International searching Authority, according to the WIPO, placing this institution as one of the most important in the world. He obtained his law degree at the Universidad de Chile and an LLM at the University of San Francisco, California. He was unanimously elected as chairman of the Standing Committee on the Law of Patents (WIPO) for two periods. From 1999 to 2004 he worked at the International Economic Directorate of the Chilean Ministry of Foreign Affairs. He is currently head of the Expert Advisory Group of the Medicines Patent Pool (MPP), a United Nations-backed public health organization. He is professor, lecturer and writer.
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Maria Carmen de Souza, Dannemann Siemsen, Brazil She became president of the Brazilian Intellectual Property Association (ABPI) in 2015. During her first speech as president of the Association, she expressed her intentions to continue with the work her predecessor, Elisabeth Kasznar, was developing. She is a chemical engineer, graduated from the State University of Rio de Janeiro, and Industrial Property Agent for specialized areas of NAS chemistry, pharmaceutical and biotechnology. She started her career at Dannemann Siemsen in 1988, where she became partner two years later. She mainly deals with clients from the cosmetic, agribusiness, pharmaceutical, paper and cellulose areas.
Guy José Bendaña Guerrero, Guy José Bendaña-Guerrero, Nicaragua He is the author of several books about IP and civil contracts. His Intellectual Property Law Course, republished in 2015, is part of the syllabus of the Nicaraguan Law School. He graduated as Doctor in Law from the Universidad Centroamericana (UCN) in Nicaragua. He was Judge of the Third Court of Managua District for more than five years, but afterwards decided to create the Guy Jose Bendaña-Guerrero & Asociados. He is former advisor of the Ministry of Development, Industry and Trade (MIFIC). He collaborates with the world-wide-known Katzarov Manual on Industrial Property. He used to be professor at different Nicaraguan Universities and has lectured at national and international congresses.
Previous Winners of the Marcasur Excellence Awards 2013:
2015:
Juan Eduardo Vanrell: Partner at Vanrell Propiedad Intelectual Abogados in Uruguay.
Three winners this year:
2014: Felipe Claro. Partner at Claro & Cia., Chile.
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GOLD
Fernando Becerril. Partner at Becerril, Coca & Becerril, Mexico Alfredo Corral Ponce. Partner at Romero Corral Abogados, Quito
Luz Helena Adarve. Partner at Dertons Cardenas & Cardenas, Colombia.
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2016 PROFESSIONAL CAREER AWARDS This year, MARCASUR priced three professionals that have made great contributions to the development of intellectual property both in their countries and Latin America:
Arturo Alessandri C. He is currently the President of the Chilean Bar Association (2015-2017), having served as its Vice-President from 2011-2014. He is a member of the Mediation and Arbitration Center of the Santiago Chamber of Commerce. He has focused his practice on foreign investments, mergers and acquisitions, as well as on project financing, concessions and arbitration. Alessandri has also performed civil service, firstly as a Counsel to the National Planning Office (ODEPLAN) of the Presidency of the Republic, from 1979 to 1983. Later, between 1992 and 1996, was elected Town Councilor to the Municipality of Santiago. He is managing partner of Alessandri Abogados law firm, Chile.
Peter Siemsen He is former President of the Legislation Committee for Latin America at INTA (1999-2000), Vice President of Fluminense Football Club (2002-2004), member and coordinator of CESA Intellectual Property Committee (2006-2007) and second Vice President of the Sao Paulo Association of Intellectual Property (2009-2011). Lawyer, Industrial Property Agent, with more than twenty years of experience in the trademarks and sports law area. MBA Professor of Intellectual Property and Internet Law at the Superior Law School of Rio de Janeiro (ESA). Partner of the Dannemann Siemsen firm, Brazil.
Tito Anibal MejĂa Economist and Lawyer. Founding partner of Bufete Mejia &Asociados, Honduras; Director of Financiera Solidaria S.A. and former director of La Prensa newspaper, one of the main newspapers in his country. Member of different professional and cultural associations in Honduras and other IP organizations, such as ASIPI. He used to be a commercial law professor. At the age of 83, he is recognized as one of the most important attorneys in his country and the region. M
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INTERVIEW / JACOBO COHEN IMACH
MercadoLibre and the trademarks dynamics E-COMMERCE IS GROWING WORLDWIDE AND THIS COMPANY IS A CLEAR EXAMPLE OF THIS. JACOBO COHEN IMACH, REGIONAL LEGAL MANAGER OF MERCADOLIBRE, TALKS, AMONG OTHER REGIONAL ISSUES, ABOUT THE CURRENT SITUATION AND FUTURE PLANS OF THIS COMPANY.
Mercadolibre is ranked as one of the 10 biggest e-commerce websites and as one of the 25 largest tech companies in the world. It currently has transactions all over Latin America. What do you think of Latin American ecommerce? There are currently 350 million internet users in Latin America, and the region still has great potential; there is a great number of people that do not use ecommerce. Only 220 out of 350 million have carried out electronic transactions. Mercadolibre, with 160 million users, has a strong presence in the region.
How is it possible that an Argentinean undertaking, such as Mercadolibre, could expand so quickly? Marcos Galperin, founder of this company, is Argentinean, but we understand this as a rather Multilatin undertaking; this has been our view right from the beginning, we even launched the platform almost simultaneously in different countries such as Brazil, Mexico, Venezuela, Colombia and Uruguay. Headquarters are located here, in Buenos Aires, but we have offices in Uruguay, Mexico, Colombia, Venezuela and Peru. To what extent have your services been expanded? MercadoLibre is an ecosystem that provides different services: the Mercado Online (Market Place, where you can buy and sell almost all kind of product, goods or services); Mercado Pago (system that allows anyone to pay or receive transaction payments within or outside MercadoLibre; we offer almost 70 payment services in the region); Mercado Envio (we have
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agreements with the main post offices in each country and therefore can provide good prices to our clients); Advertising (similar to the Google adwords); and Mercado Shops (allowing entrepreneurs to put their e-commerce shop together in less than a minute, with its own domain, email address, look and feel; there is a free version and a paid version). Which is the most profitable service you provide and how does the business model work? From the profitability point of view, the most important service is MercadoLibre and Mercado Pago. In MercadoLibre, we charge users once the product has been sold, from 10% to 18% of the product's total price. We also charge for publishing the products —although in some countries it is possible to publish for free. Mercado Pago works as a financial inclusion engine, provided that bancarization is scarce in our region and there is little access to credit cards. Mercado Pago processed 80 million transactions at 5.200 million dollars during 2015. With Mercado Envios we avoid transportation logistic problems, which is very www.marcasur.com
Career
Jacobo coordinates a regional team of 40 people.
“THE REGULATION OF INTERNET PAYMENTS IS CURRENTLY ONE OF THE MOST DISCUSSED TOPICS”
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Jacobo Cohen is 40 years old and was born in Tucuman, Argentina. He worked with the founders of MercadoLibre right from the beginning, in 1999, while he was about to graduate from Law School. “Analyzing e-commerce issues in Latin America back then was like science fiction. This kind of business did not exist in the region. I really liked the challenge; I was the only attorney working here for six years, then I hired a Brazilian professional. Then our team begun to grow and we currently have 30 attorneys in Argentina (where I am), Brazil, Venezuela, Colombia and Mexico, which are the biggest markets” explained Cohen. He recalls the first office of MercadoLibre, which was in an underground garage of a building. “We managed to overcome our competition, we entered Nasdaq and became one of the most innovative platforms for ecommerce” he said.
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About crimes and other misdemeanors… Which are the most common infractions? Avoiding sales commission payments to MercadoLibre. Some people include their personal information in their publication to avoid paying our commission. What about frauds? For example, when a user pays for a product and does not receive it or it is not in good conditions?
important in countries with poor facilities. As for Mercado Shops, we launched this service three years ago, and there are currently 300,000 shops. Which are the most important legal aspects of this business?
How many of these cases reach the authorities and under which circumstances?
I would say that, on the one side, there is the responsibility of intermediaries, who are internet service providers that do not have their own content, but rather show or store contents from third parties. This leads to intellectual property issues. On the other side, there is the protection of personal information; in other words, privacy related issues. The first Latin American Data Protection Law was created in Argentina in 2001. Nowadays, countries that do not have this kind of regulation are developing it, while others are updating it. Another current legal issue has to do with internet payments. One of the biggest e-commerce disadvantages is the lack of payment services.
Less than 10%. These are cases in which the user bought something and did not received it, but in general, these are users that do not follow the security mechanism we suggest. Some people make bank transfers without knowing the other party and before receiving the product.
The regulation of Over The Top (OTT) contents is currently being discussed…
Our security standards are just as good as —or even better— than those used by big international e-commerce platforms. We have preventive mechanisms that allow the early detection of fraud. The online world is mostly a reflection of our offline world. You can buy something in a store and have problems afterwards; the same can happen when using e-commerce. Mercado Pago gives the money back in some cases? If a person buys something using Mercado Pago and has any problem —does not receive the product, for example— we give the money back. Even if he or she receives a different product (not the one they bought) we work as mediators between the buyer and the seller. We have more limitations in those countries where Mercado Pago does not exist. We work hard trying to prevent problems by identify irregularities in time, studying profiles and products; once they are detected, buyers are notified so that they do not continue with the transaction. How many lawsuits do you face per year? Not so many, bearing in mind the number of transactions we work with. For example, 600 per year in Argentina, 500 per year in Mexico and less than 20 per year in Uruguay.
Which products are more related to fraud? Sometimes it happens with cutting edge technology products. We have never had fraud cases related to real state such as houses or apartments. Nevertheless, we have had fraud cases with cars. We recommend users not to pay for the car in advance, you must first go to the corresponding registry. Which authorities do you work with? With cyber police and justice of every country. We are nothing but intermediaries between seller and buyer, but we still have certain responsibilities, such as notifying the police when faced with money laundering cases.
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There is great discussion over the regulation of OTT contents, which are basically all contents we can access through the internet; this includes phone calls, chats, music, movies, videos, etc. Telephone companies or access providers want these services to have the same regulations that they have. They want, for example, that chats and WhatsApp/Skype calls are regulated as landline phone services, cellphones or text messages. The same happens with movies, music and other contents. But in
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my opinion, there are two different industries: one is a public service and the other involves contents we can access on the internet. On which of these issues have you worked the most as legal manager of MercadoLibre? On the responsibilities of intermediaries, on privacy or personal data protection and on the regulation of payment services. Not so much on OTT contents, for we do not work with that kind of content. What do you do if, for example, someone tries to sell fake trainers through your platform? In such cases, the brand owner sends us a notification indicating which product infringes IP rights and we proceed to remove such content. We are just an intermediary and therefore should not be responsible for content published by third parties, in this case, our users. What does the law say about this? The USA and Europe have regulations, created 15 years ago, that clearly state that intermediaries shall not be responsible for offending contents published on their platforms by third parties, as long as they remove such contents once they have been notified. Chile has a Copyright Law, which establishes this mechanism, and explains that said notification should come from a judge. Brazil also has this regulation. The rest of the countries have no regulation that describes the responsibility of intermediaries or which is the mechanism for such cases.
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Mercadolibre in numbers FOUNDED IN 1999, THIS PLATFORM HAS 160 MILLION USERS AND IS ONE OF THE 50 MOST VISITED WEBSITES IN THE WORLD: 8 MILLION PER DAY. DURING 2015, THE PLATFORM SOLD 128 MILLION PRODUCTS FOR USD 5200 MILLION AND 80 MILLION PAYMENTS WERE PROCESSED FOR USD 5200 MILLION IN LATIN AMERICA. 4000 SEARCHES AND 6 SALES ARE CARRIED OUT PER SECOND IN MERCADOLIBRE. IT HAS OVER 50 MILLION PRODUCTS PUBLISHED IN 2500 CATEGORIES AND 1580 OFFICIAL STORES THAT BELONG TO VERY WELL-KNOWN BRANDS. HALF OF THESE TRANSACTIONS ARE ISSUED IN BRAZIL, WHICH IS BY FAR THE LARGEST PLATFORM OF THIS COMPANY, FOLLOWING ARGENTINA AND MEXICO. THE COMPANY OPERATES IN 19 COUNTRIES, MOST OF WHICH ARE LOCATED IN LATIN AMERICA.
If you do not receive a notification, would you, as owners of the platform, have any legal problems?
Owners of trademarks are not always aware of infringements to their rights…
No, because we would not be aware of the infringement. We have currently 50 million articles published. We cannot know each one of them in detail, for they are published by our users. But, 15 years ago, we established a collaborative relation with trademark owners.
The owner of a brand is responsible for the protection of his rights. Nevertheless, if we detect an infringement we will probably remove the content, even when there is no notification whatsoever. You also develop practices to educate users, right?
Are you talking about the Intellectual Property Protection Program? Indeed. By means of this program, owners of trademarks can send us notifications and we can therefore remove such contents and notify the user. If the user repeatedly uploads this kind of content, we shall not allow him to publish on our platform anymore. We have more than two thousand members in our IP Protection Program.
“I SPEND A LOT OF TIME WORKING ON ISSUES RELATED TO PUBLIC MATTERS”
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Yes, for example, when someone is about to publish software for sale, we show them a banner that warns about our piracy prohibition, explaining that they shall be legally responsible for the content they publish. The same happens with articles such as watches, movies, music, there is a message for each case. In addition to this, we allow anyone to inform us about infringements, not only the owner of the brand, so that we can investigate and remove such content if necessary. How do you monitor each user? Each user has its scoring; those who reach a certain number of infractions are suspended or are disqualified and can no longer use the platform. We actually do not pay that much attention to the number of infractions but rather to the kind of IP infringement. This is a very sophisticated system and the user is not aware about his or her scoring, it is a rather internal control.
how the business works. My job is to help creating the necessary conditions for the e-commerce environment to develop in such a way that allows other companies to emerge in this sector and in this region. But that means MercadoLibre would have more competition‌ It would be better for everyone that the ecommerce market grows, because people will get used to use these services. MercadoLibre will not disappear because of competition; on the contrary. The more people connect to the internet, whether they go to MercadoLibre or any other platform or social network, the more benefits for the ecosystem. Competition improves industry, availability and forces us to keep up with innovation. M
At INTA Cohen is vice-chair of the In-House Practitioners Committee (INTA) for the 2016-2017 period. “This committee has more than 60 members, including companies and brands from different industries, of different sizes and from different regions. Our role is to lead and coordinate all efforts to make sure objectives defined by both INTA and the Committee are achieved� he explained.
By Fabiana Culshaw
Which is the most demanding activity as lawyer of MercadoLibre? Coordinating a 40-people team. I also spend a lot of time working on issues related to public matters, including relations with different governments, industrial and other sectorial chambers in the region. Latin American legislators are just beginning to understand the internet, e-commerce and e-payments phenomenon and are therefore trying to regulate it. Some projects are good, while others harm the industry and entrepreneurs. Part of my job is to talk to lawmakers, training authorities on this matter and explaining
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TOPICAL ISSUES
Smoking I await...
By Daniel Lamas On July 8, 2016, a historic event took place: an international arbitration court dismissed the USD 25 million sue for compensation that a powerful multinational company filed against a small Latin American country. The company claims that Uruguay's anti-smoking legislation devaluated its cigarette trademarks and investments in the country and therefore violated the bilateral investment treaty between Switzerland (where Philip Morris is headquartered) and Uruguay. This six-year-long trail came to an end when the court did not only dismiss the compensation claim, but requested the plaintiff to pay the cost of such process. 30
There are different possible approaches to this result and it is an interesting opportunity for reflection. This sentence may be understood as a positive milestone in the never-ending struggle between international capitalism, praised by almighty multinationals —capable of anything to succeed, and underdeveloped countries, subdued to their plans. It can also be understood as the triumph of David in his unequal and eternal fight against Goliath. It also has to do with one of the most important challenges that different countries —especially if underdeveloped— face nowadays: the urgent need to find new investors and create new sources of
employment and resources, in return of new undertakings that may affect the environment, human health, or interfere with the population's interests and rights. It is important to remember that in October, 2011, Philip Morris announced the closure of their facilities in Uruguay, clearly demonstrating how the adoption of administrative or legislative measures that may affect their business would have reprisals for Uruguay or any other country that attempted to do the same. The Court dismissed the idea that a direct or indirect expropriation of the company's trademarks may have taken place, for not only did this multinational keep its traditional trademarks, but it even filed www.marcasur.com
The President of Uruguay, Tabaré Vázquez, enjoys his legal victory
new additional patent applications, which are supposed to be used in the future, and will apparently occupy a significantly smaller area on cigarette cases. In other words, the court acknowledged the right of every country to adopt legislative measures that may affect the way in which trademarks are used on products, as long as the purpose of such measures consist of protecting public health or other assets as important as this. After this sentence, it is most likely that Uruguay takes its already existing antismoking legislation even further. It has already been announced that Uruguay will soon have plain packaging for tobacco, with no distinctive colors or signs, which according to different researches, will discourage teenagers to start smoking and will help those trying to quit. In addition to this, taxes on cigarettes will increase, making it more expensive for smokers to buy the product and will add restrictions to manufacturers so that they cannot promote or be
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sponsors of social, cultural or sports events. Likewise, the outcome of this trail may result in other countries adopting similar restrictive measures. Once again, we are the guinea pig for exploring the consequences of adopting radical anti-smoking politics which aim to eradicate all incentives and false benefits that smoking has been invested of. Official statistics show that ever since these anti-smoking measures have been adopted, consumption has dropped. Nevertheless, the illegal purchase of cigarettes grew strong. It is estimated that illegal access represents one third of total consumption, except in the border, where these percentage rises to 70%. Plain packaging and higher prices may stimulate this illegal activity. Truth is that smoking is no longer a “great and sensual pleasure” as the tango describes it. Most of the time, smokers do not quit because they do not have the strength to do so, despite the fact that social disapproval of this habit grows strong, that it is very disturbing for those who do not share it, and that it is extremely bad for health. But there might be a reason for which this habit stays with some of us. It might be the eagerness of feeling as an adult, of tasting what is forbidden, of experiencing danger, of having a company, even if it is made of smoke. There is no doubt that this habit fulfills an extremely important need of our modern society, which ought to be satisfied with some other substitute product or activity. Alcohol, another socially accepted addiction, is always stalking those who are looking for artificial stimulus to overcome day to day difficulties. Marijuana may also be a substitute, especially in a country which has decriminalized it and is getting prepared for selling it at pharmacies and drugstores. The incredible success of Pokémon Go, especially among children and teenagers, clearly shows that new temptations based on the consumption of inadequate (real or virtual) products are always in order and that these addictions may become strong enough to affect our lives and the lives of those around us. And
nowadays, just a step away from accessing virtual realities created for us by other people, who knows what surprises we shall face in the mid and long term. It is my personal belief that prohibitive policies, regardless of its type and origin, can sometimes create worst evils than the one they are fighting. This packaging and advertising prohibitions, to discourage consumption, are an example of the importance of such elements in today's economy. But these measures may, at the same time, set a dangerous precedent and allow future governments to favor us with yet another prohibition. I only hope that in the future we do not find ourselves saying: “it would have been better to just smoke a cigarette”.
The author. Uruguayan lawyer, an intellectual and industrial property expert. Professor and writer; he has several publications on legal subjects. Former deputy and member of the Chamber of Representatives of Uruguay. He proposed a great number of bills during his career. Email to: dlamas@lamasgrimaldi.com.uy
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EVENTS // IX ACHIPI SESSIONS
TIME FOR
CHANGE
Cristóbal Porzio, President of ASCHIPI (Chilean Association of Intellectual Property)
The event was held in the Ritz Hotel on August 23. Cristobal Porzio, President of ACHIPI, was in charge of the welcoming speech, followed by Maximiliano Santa Cruz, Director of the National Institute of Industrial Property and Claudio Ossa, Head of the Intellectual Rights Department. The first panel, with Juan Pablo Egaña as moderator, discussed “Incremental inventions in the Latin American pharmaceutical area”, where Jose Luis Cardenas (Teva Pharmaceuticals) examined some trials before the Tribunal for the Defense of Free Competition and research of the National Economic Prosecutor. Martin Bensadon (Marval O'Farrell & Mairal) explained the current situation in Argentina and Carlos Olarte 32
Starting with registrations to the event www.marcasur.com
THE CHILEAN ASSOCIATION OF INTELLECTUAL PROPERTY (ACHIPI) CELEBRATED ITS IX SESSIONS, UNDER THE FOLLOWING SLOGAN: “INTELLECTUAL PROPERTY IN MOTION, TIME FOR CHANGE”. ACTIVITIES BEGUN ON AUGUST 22 WITH A COCKTAIL ON THE 17TH FLOOR OF THE PLAZA DEL BOSQUE HOTEL, IN SANTIAGO.
(Olarte Moure) described the Colombian situation regarding this issues, making reference to some litigations in said country. “Contracts and licenses for creative or audiovisual works” was the following panel, with Rodrigo Velasco Alessandri as moderator and Andres Young, Professor at Universidad de Chile, who shared his experiences with such negotiations. Juan de Dios Larrain (from Fabula film producer), described the difficulties faced by local producers when it comes to international distribution. Finally, Daniel Alcaino, the actor, was the focus of attention while he shared his experiences negotiating with TV channels. The third panel, with Gonzalo Sanchez as moderator, discussed “Online marketing, the use of keywords”. During this panel, Serge de Olivera, from Entel and Francisco Kemeny, from BalckSheep, described how these companies were developed.
Maximiliano Santa Cruz, Director of the Chilean National Institute of Industrial Property
Local team. Maximiliano Santa Cruz (INAPI), Cristóbal Porzio (President of ACHIPI; Porzio, Ríos & Asociados, Chile), Claudio Ossa (Head of the Intellectual Property Department), Eduardo Molina (Estudio Villaseca, Chile), Max Montero (Johansson & Langlois, Chile), Cristián Mir (Puga Ortiz Abogados, Chile), Loreto Bresky (Alessandri Abogados, Chile), Juan Pablo Silva (Silva & Cía, Chile) and Santiago Ortúzar (Beuchat, Barros & Pfenniger, Abogados, Chile) www.marcasur.com
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Rodrigo Nuñez, shared the point of view of the CONAR (Self-regulation and Advertising Ethics). Finally, the last panel, moderated by Fernando Garcia, discussed “Intellectual Property in Chilean universities”, Barbara Ribeck, from the Catholic University, was in charge of opening this panel, following Patricio Feres (Innova Chile). Pedro Alvarez, designer and historian, shared a little bit about his current research on patents form 1840 to 1870 in Chile. M
TIME
Tábata Santelices, Ignacio Gillmore, Bernardita Dittus, Julika Weiss (Carey, Chile)
FOR CHANGE
Juan Avendaño (Mackenna, Irarrázabal, Cuchacovich & Paz, Chile María Rojas (Claro & Cía, Chile) and Raúl Jara (Lemontech, Chile)
Martín Torres (Brigard & Castro, Colombia) and Christopher Doxrud (Johansson & Langlois, Chile)
Santiago Ortuzar (Beuchat, Barros & Pfenniger, Abogados, Chile), José María Vi cetto (Izquierdo & Vicetto Abogados, Argentina), Rosa Bueno (Fernández – Davila Abogados, Peru) and Max Villaseca (Estudio Villaseca, Chile) 34
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MEETINGS
TOWARDS NEW BUSINESS
DURING THE 138TH INTA ANNUAL MEETING, HELD THIS YEAR IN ORLANDO, USA, MARCASUR ORGANIZED WORKING BREAKFASTS TO DISCUSS THE FUTURE OF IP LAW FIRMS. Law firms are —or will soon become— integral corporate organizations. Their leaders are discussing what new business to develop in order to keep growing. With qualified professionals, graduated from the best local and foreign universities, cutting edge technology and high quality network throughout the globe, IP law firms are corporate organizations with enough potential to become much more than just patent and trademarks registries. Without beating about the bush, some law firms are migrating to www.marcasur.com
other business, both within and outside the IP area, such as advisory on packaging, advertising, entertainment and callcenters. They are also associating with other law firms or expanding to develop other kind of services in foreign countries. Although Intellectual Property is growing strong —mainly because of technological inventions, it is well known that registering trademarks and patents no longer requires great facilities, nor highly qualified personnel. This is driving law firms to go out of their comfort zone.
Some law firms are already developing new businesses; some others are still looking for new opportunities, while a few others believe it will be long before this issue becomes a problem. What everyone agreed upon, was the fact that this is an issue that must already be at the top of every firm's agenda. Comments of different professionals are included hereunder (arbitrarily ordered), where you can learn about the different activities their firms are currently undertaking.
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Fernando Becerril, Becerril, Coca & Becerril, Mexico “We have been an IP law firm for the last 45 years, but we have recently included a corporate law area. We have worked with this kind of cases for a long time, but we now do it formally, in accordance with a well-defined business plan and it is profitable. I believe it is necessary to diversify our services; the important thing nowadays is the IP additional work, the global and technical analysis, the assessment. During the following twenty years, we will be faced with packaging related problems, protection of inventions developed by computer, and other complex issues. I foresee a turbulent future, so we will all benefit from service diversification. We need to define new business areas.”
Armando Pintos, Dumont Bergman Bider & Co., Mexico “Intellectual Property will become more specialized. In Mexico, we have a criminal law specialization that includes intellectual property in order to improve the protection of owners, companies, creators and innovators. My firm has created new areas for providing online, administrative and criminal protection. There is an entire area to explore and learn how to protect trademarks on the internet in global terms. The internet has changed our lives not just nationally, but also internationally.”
Elisabeth Siemsen, Dannemann Siemsen Bigler & Ipanema Moreira, Brazil “We started with IP and developed other areas later. We have offices in several Brazilian states; we are more than 1100 attorneys providing legal and corporate services, assessment on taxation, sanitary registration, research and consumer services. 300 attorneys work on the customer services area, working with clients from different areas, such as telephony, banks and health insurance. Demand has grown in the corporate and labor area. The franchise area is also a very strong practice in our offices.”
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Alfredo Barreda, Barreda Moller, Peru “IP has overcome a great transformation during the last 15 years. In the past, the patent and trademark applications were the main issue. Nowadays, it is only possible to make the difference when it comes to enquiries, oppositions and infractions. These have become the fundamental support and also represent greater income. When it comes to filing patent applications, there is a lot of competition, so they do not represent great income. Expanding our services is an option, but our firm decided to go back to IP, which is what we are best known for.”
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Loreto Bresky, Alessandri Abogados, Chile Pablo Silva, Silva & Cía., Chile “We have observed that the IP commodity, i.e. patent and trademark applications, has become less important, but it will not disappear; on the contrary, we are in an inventive world. Nevertheless, we need to provide satellite services to the IP area, such as litigations, research, technology transfer and entertainment and sports law advisory. Our firm is providing other services with good results. With the labeling regulations we learned the amount of sugar or fat that our client's products must comply with. Health protection related to food affects trademarks and their symbols. At the same time, several firms work with universities to assess and help inventors with their creative process. That is another option.”
“Practices will be more sophisticated, IP will work side to side with other areas; law firms are changing. Ours has already changed. We give more importance to advisory. When it comes to IP, we work more with the corporate, taxation and regulatory areas. We foresee that litigations will become more complex with time. There is a big discussion in Chile regarding food products, packaging, and both fat and calorie control. Our firm also advises on advertising and brand launching. In addition to this, a lot of European and American law firms are migrating to South America and merging with local companies, this situation will continue.”
Samuel Pamías, Hoglund & Pamías, P.S.C., Puerto Rico
Martha Berkemeyer, Berkemeyer Attorneys & Counselors, Paraguay “This year we celebrate our 65th anniversary. My father was a civil rights attorney, but also worked on Industrial Property and ten years ago we started our specialization in corporate law. Nowadays, we successfully provide all sorts of services. We have lawyers specialized in areas such as tax, civil and labor law. We are currently a law firm that provides all kind of services. We have different professionals working on different services.”
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“We have to understand IP to its full extent. When we have a patent application, we need to think about its purpose and how to develop its protection. The same happens with trademarks. We are also investing on technology transfer, patents and product commercialization areas. Our firm also represents the Universidad de Puerto Rico, which uses funds from the American federal government for research and development; how to commercialize technology is one of the items in their agenda. This will be a popular issue in the future.”
Eugenio Torres-Oyola, Ferraiuoli LLC, Puerto Rico “IP is new in Puerto Rico. Our clients request our IP services, but also need to be assessed on how settling down in our country and other legal advisory. This is why IP represents only 15% of our practice. Clients come to us for a patent application and then request our legal advice on everything. We have been successful so far.” 37
Ricardo Mejía, Bufete Mejía & Asociados, Honduras Arturo Pérez Guerrero, Pérez Guerrero, Puerto Rico “We are very close to the US, so our practice mainly consists of trademarks. Companies still prefer national systems, but we also get foreign clients who have their eye on the United States. There will be more global brands in the future. In the past, emphasis was made on the prosecution process, now we offer a greater number of services regarding regulation; how to create entities and carry out distribution.”
“The Free Trade Area of the Americas is an attempt to create a 600million-people unified market, which would be the biggest in the world after the European Union, unifying Russia and East Europe. The United States of America still represents the 20% of global commerce. This has forced our firm to offer our traditional IP clients additional services, such as border and franchise protection, legal advice and litigation services. Problems are not hypothetical, but commercial, mainly because of the effect the expansion of the Panama Canal has had on businesses.”
Enrique Cheang Vera, E.C.V. & Asociados, Venezuela “Bureaucracy in this country is huge. We have serious problems, such as oppositions, nullity actions and cancellations, which can last 15 years. This situation has led our firm to develop methodologies that simplify procedures and help our clients with complex situations. He have created a corporate area related to IP and we are about to create other new practice areas. This is necessary, clients require us to do so. This is the new tendency.”
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Manuel Polanco, Bolet & Torredo, Venezuela “The natural evolution of our offices is increasing the protection of rights and not focusing on filings. We want to take our protection services further to fight piracy and protect our clients. Piracy has grown strong in Venezuela. This activity is bigger than drugs and is related to terrorism. This issue is increasingly becoming more serious and our practice need to keep up with it.” www.marcasur.com
Edy Portal, Portal & Asociados, El Salvador
Gabriela Bodden, Eproint, Costa Rica
“My firm was founded by my father in 1979 and has mainly focused on tax law, which is still our most important practice; it allowed us to develop a corporate area. Five years ago, we started to work on anti-piracy cases. At the moment, there was a monopoly on this area, but now we also provide this service and have had good results in boarder protection, infraction notifications and regulatory law regarding labeling. IP litigation is another important area to work hard on. There are great expectations with the Madrid Agreement for Central America and El Salvador is expected to be the first country in the region to sign this agreement. This confirms that diversification is necessary.
“We are specialized in the IP area, nevertheless, we have some clients to which we also provide corporate services. But our thing is the IP area, not only in Costa Rica, but also in Honduras, the Dominican Republic and the Caiman Islands. We will soon start working in Belize. Within the IP area, asset valuation is more important than prosecution. Many of our clients do not know how to valuate their trademarks and patents; firms could profit from this. We have connections with the Universidad de Costa Rica, to work on research and development.� M
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EVENTS // XXX AAAPI ANNUAL SESSIONS
ADDED-VALUE SERVICES ONCE AGAIN, BUENOS AIRES DRESSED UP TO WELCOME PROFESSIONALS ATTENDING THE XXX AAAPI ANNUAL SESSIONS HELD ON AUGUST 25 & 26 AT THE FOUR SEASONS HOTEL.
Arturo Perez Guerrero & Vivian Ortiz Prince (Perez Guerrero LLC, Puerto Rico), María Rosa Schirripa De Amoedo & Claudio Schirripa (Barbat y Cía., Argentina)
Thursday started early, at 8.30 am with a welcoming speech by Carolina Fernandez, president of AAAPI, and the presence of Damaso A. Pardo, president for the National Institute of Industrial Property. The most popular panel was “IP law firm strategy for a decreasing market” with Diego Gonzalez, Juan Carlos Ojam and Hector Palacio, who explained the importance of providing added-value services to our clients and stepping out of our comfort zone to expand our horizons and explore new areas, such as sports and fashion law. 40
After lunch, at the Four Seasons Hotel, the afternoon lectures begun. At the end of the session, attendees went out and enjoyed the city's night life. Friday begun with a working breakfast, where important issues were discussed. This year, the AAAPI sessions had an international focus. “International Scenario: FTAs and TRIPs plus, PCT, TPP” was the first panel on Friday. This panel was in charge of Santiago Ortuzar, Gaston Richelet and Diego Bouche, who discussed about weather international treaties benefit or damage IP law firms. Both sides of this discussion contributed to an interesting debate. www.marcasur.com
The dynamic technical support and audiovisual contents during these panels helped catching the audience's attention. All conclusions drawn from the working breakfast were set forth in a round table during Friday afternoon, followed by the jurisprudence analysis. Closing speech of the sessions was —of course— in charge of Ivan A. Poli, vice-president of AAAPI. M
Panelists: Juan Carlos Ojam (Mitra ni Caballero Ojam & Ruiz Moreno, Argentina), Héctor Palacio (Palacio & Asociados, Argentina) & Diego González Rossi (Iberbrand, Mexico)
Graciela Pérez de Inzaurraga y Ga briela Musante (Huasheer Belgrano & Fernández, Argentina) & Miguel O’Farrell (Marval, O’Farrell y Mairal, Argentina)
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Caroline Casselli (Caselli Law Firm, Paraguay) and Verónica Vanrell (Vanrell IP, Uruguay)
Federico Vibes (ESPN International, Argentina), Marcelo García Sellart (Berton Moreno Asociados, Argentina) & Ricardo Gordó Llobell (Gordó Llobell Abogados, Argentina)
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EVENTS // XXXVI ABPI INTERNATIONAL CONGRESS
BRAZILIAN INNOVATION
Candida Caffe (president of LES Brazil, Brazil), María del Pilar Troncoso (president of ASIPI, Dominican Republic), Luiz Pimentel (president of INPI Brazil, Brazil), Maria Carmen Brito (president of ABPI, Brazil), Felipe Claro (president of AIPPI, Chile), Ricardo Fonseca de Pinho (president of ABAPI, Brazil), Marcelo Nemer (president of ASPI, Brazil), Paulo Parente (president of Grupo Brasilero LIDC, Brazil)
BETWEEN AUGUST 28 AND 30, THE XXXVI INTERNATIONAL CONGRESS ON INTELLECTUAL PROPERTY, ORGANIZED BY THE BRAZILIAN ASSOCIATION OF INTELLECTUAL PROPERTY (ABPI), WAS HELD IN SAN PABLO, WITH THE ATTENDANCE OF 600 PEOPLE. Most panels at this congress (called: “Innovation and competitiveness in the global economic sector”) discussed innovation. According to what Andre Ferrarese (Head of the National Association for Research and Development of Innovative Companies) and Jose Claudio Terra (Head of Innovation of the JewishBrazilian Charitable Association), Brazil is ranked tenth in the Global Innovation Index, with 31,000 patent deposits. However this figure is far from China and the US, which have 900,000 and 600,000 annual patents. Another weakness of this country is that only 15% (4,500) of the 44
total number of patents are domestic. In the United States, this figure goes up to 50%. All Latin American countries have this problem with national filings, which authorities, businessmen and professionals discussed during this congress. As Maria Carmen Souza Brito, president of ABPI, said during the welcoming speech: “Nowadays, during this economic crisis in Brazil —and other countries and regions around the world— innovation, creativity and enterprising projects are fundamental movements for overcoming social and economic instability.” Luis Otavio Pimentel (the charismatic president of the National Institute for the Protection of Intellectual Property —INPI) also talked about this issue during his conference, where he described the changes and structure www.marcasur.com
MARCASUR As every year, we were present at the ABPI event, informing and meeting readers in the MARCASUR stand. We interviewed the president of ABPI, Maria Carmen Souza Brito, and the president in INPI, Luis Otavio Pimentel, which we will share with you very soon.
Juan Pittaluga (Editor at MARCASUR, Uruguay), Maria Carmen Brito (president of ABPI, Brazil),at the MARCASUR stand
modifications this institute has suffered in order to improve the process of granting new patents (which currently take 10 years). He mentioned the effort these 192 examiners are doing and how they had to hire new examiners to study thousands of patents waiting to be examined. We would like to quote Leandro Karnal, the prestigious historian, who was the main lecturer of the conference: “the protection of intellectual property rights are not supposed to limit the access to the protected innovations or inventions, on the contrary, the better protection the country provides, the better ideas are developed…”
Liliane Leite (Có Crivelli Advogados, Brazil), Flavia Lizardo (Record TV, Brazil), Giorgia Pacheco (Pacheco e Advs. Associados, Brazil), Samia Santos (Samia Santos & Associados, Brazil)
Fernando Eid (Gusmão & Labrunie PI, Brazil), Jacques Labrunie (Gusmão & Labrunie PI, Brazil), Luiz Henrique Do Amaral (Dannemann Siemsen, Brazil) www.marcasur.com
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Wilfrido Fernández (Zacarías & Fernández, Paraguay), Rogerio Brunner ® Brunner & Associados, Brazil), Marianella Montilla (ECV & Asociados, Venezuela), Luiz Pimentel (president of INPI Brasil, Brazil), Clovis Silveira (C&S InterPatents, Brazil)
Attendees shearing opinions during the cocktail
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All panels at this congress are on the ABPI website. We hope Brazilian authorities and businessmen can benefit from concepts and ideas discussed during this congress in order to achieve a better national innovation level. M
Enrique Díaz (Goodrich, Riquelme y Asociados, Mexico), Jacqueline Moreau (Moreau González & Asoc., Venezuela), Marcello Do Nascimento (David do Nascimento Advs., Brazil), Natalia Aredes (David do Nascimento Advs., Brazil)
Mónica Wolf (Wolf Méndez Abogados, Colombia), Fernando Carey (Carey, Chile), Estuardo Jáuregui (Jáuregui & Asociados, Guatemala), Patricia Villegas (Jorge Mera & Villegas, Dominican Republic), Artu ro Pérez-Guerrero (Pérez Guerrero LLC, Puerto Rico)
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EVENTS // AIPPI WORLD CONGRESS
FROM MILAN THE WORLD CONGRESS ORGANIZED BY THE INTERNATIONAL ASSOCIATION OF INTELLECTUAL PROPERTY (AIPPI) WAS HELD THIS YEAR IN MILAN, ON SEPTEMBER 16 & 20, LEADED BY FELIPE CLARO, FROM CHILE.
More than 2,100 people attended this event. The program, based on current global intellectual property issues, was intense and diverse. The cultural and entertainment program will stay forever with most attendees, such as the concert at the famous La Scala opera house. International IP authorities also attended the event: Francis Gurry (Director General of the World Intellectual Property Organization —WIPO) was in charge of the welcoming speech; Benoit Batistelli,
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president of the European Patent Organization (EPO); Antonio Campinos, Executive Director of the Intellectual Property International Office (EUIPO); and Russel Slifer, Deputy Director of the United States Patent and Trademark Office (USPTO), all of which offered their speeches. This year's AIPPI program was based on four study questions for which resolutions were adopted:
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Security Interests over Intellectual Property Added matter: the standard for determining adequate support for amendments Requirements for the protection of designs Linking and making available on the Internet Two additional resolutions were approved, both based on the AIPPI Standing Committees: Standing Committee on IP & Green Technology: patent rights and green technology/climate change Standing Committee on Patents: publication of patent applications Cultural afternoon at La Scala Theatre on September 18, 2016. Carlos Faggioni (member of the Organizing Committee. Italy), Felipe Claro (former president of AIPPI, Chile), Renata Righetti Pelosi (second vicepresident of AIPPI. Italy), Antonio Campinos (Executive Director of EUIPO. Spain), Laurent Thibon (General Secretary of AIPPI. France)
Panel PI II - EPO – Setting the rhythm for the 21st century. September 19, 2016
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The two-year period of Felipe Claro as president of the Association came to an end with this congress. Hao Ma, from China, was elected president. The next AIPPI congress will be held in Sidney, Australia, on October 13 – 17, 2017. M
John Osha (Deputy Reporter General of AIPPI, USA), Dr. Massimo Scuffi (President, District Court of Aosta, member of Italian Patent & Trademark Board of Appeals / former Chief Judge of the IP Division of the Court of Milan, Italy), Juez Walter D. Kelley, Jr. (Hausferd / former District Judge, Eastern District of Virginia, USA), Chief Judge Ryuichi Shitara (Intellectual Property High Court of Japan, Japan), Justice John Nicholas (Federal Court of Australia, Australia)
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EVENTS // 44TH IPO ANNUAL MEETING
2016 IPO ANNUAL MEETING THE INTELLECTUAL PROPERTY OWNERS ASSOCIATION (IPO) ORGANIZED ITS 44TH ANNUAL MEETING IN NEW YORK CITY, ON SEPTEMBER 11-13.
The event offered a mixture of educational programs, committee meetings, exhibition hall and networking. The meeting, held in the New York Hilton Midtown —strategically located at the heart of Manhattan, started with keynote speaker Benoît Battistelli, president of the European Patent Office (EPO). Battistelli pointed out that the Brexit will have no impact on the European patent system or in the permanency of the United Kingdom in the EPO. “The EPO is not a European Union agency, it is an international and independent organization, created by means of a treaty signed by the United Kingdom” he explained. “Best Practices for Combating Counterfeiting on the Global Front” was one of the most popular panels, with the participation of Intel and Dupont representatives, among other multinationals. The speakers, experienced in different industries and geographic markets, explored the best practices for fighting counterfeiting around the globe. The discussion involved ideas on how to develop and use commercial and governmental relations to strengthen efficient controls. Another popular panel: “Artificial Intelligence-Created Intellectual Property: Issues and Future Directions”, leaded by IBM representatives who talked about the relationship between IP and artificial intelligence and its rapid development. . 51
Peter Harter (The Farrington Group, USA) and Julia Elvidge (Chipworks, Canada)
Marcela Bolland y Eugenio Pérez (Uhthoff, Gómez, Vega & Uhthoff, Mexico), Albert Keyack (European Patent Office, USA) www.marcasur.com
This panel emphasized the patentability of artificial-created intellectual property. Finally, “Is 'Fair Use' Really Fair to IP Owners?” discussed whether owners should accept the implicit compliment of parodies. Procter & Gamble experts, as well as HBO representatives, explained how it is not always appropriate for the fashion or television industries to laugh at what is supposed to be funny.
Castor González (GR Lex, Venezuela), Lorena Mersan (Mersan Abogados, Paraguay) & Carlos Salazar (Calderón & De la Sierra, Mexico)
Just registered, William Thomas (Daly, Crowley, Mofford & Durkee, Canton, MA) and Rose Lutron Electronics Co, Coopersburg, Pa)
Gustavo Noyola (Gustavo Noyola, Guatemala), Gilberto Sánchez (SPECyF, Mexico), Hilda Monterroso (Palacio & Asociados, Guatemala) & Federico Aulmann (Obligado & Cía, Argentina) www.marcasur.com
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Luiz Edgard Montaury (Montaury, Pimenta, Machado & Vieira de Mello, Brazil), Markus Wolff (Dannemann, Siemsen, Bigler & Ipanema Moreira, Brazil), Catherine Zheng (Deacones, Hong Kong), Afam Nwokedi (Stillwaters Law Firm, Nigeria) & Ibrahim Tamer (Benoit & Cote, Canada)
There was enough time to enjoy some of the activities New York has to offer during this 44th Annual Meeting. Dinner at the emblematic Museum of Modern Art (MoMA) and a 5km fun run through Central Park allowed attendees to take a rest from the academic and work sessions and breathe the air of this world capital. M
Eugenio PĂŠrez (Uhthoff, GĂłmez, Vega & Uhthoff, Mexico) and Juan Carlos Amaro (Becerril, Coca & Becerril, Mexico)
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ATTORNEYS IN THEIR FREE TIME
Litigant On The Board
Guy Bendaña (left) at the Argentinean Chess Club, with Sergio Verducci Silvelo
GUY BENDAÑA HAS ALWAYS HAD A THING FOR THE BLACK AND WHITE PIECES. HIS STRATEGIC WAY OF THINKING, VERY ATTORNEY-LIKE, IS JUST PERFECT FOR HIS OTHER PASSION: CHESS. In spite of his willingness to be interviewed, he was not easy to find. Marcasur tried to reach him at his office, at the Guy Jose Bendaña-Guerrero & Asociados firm, located in Managua, where we were informed that, after visiting Berlin, he was probably at Azerbaiyan. A couple of days later we located him in Madrid, but the interview finally took place once he arrived to Miami. This is Guy Bendaña's life, from one plane to the other, whether it is for his specialized-in-IP attorney career, for his activities as president of the National 54
Chess Federation in Nicaragua or for his international chess player condition. “I attended the E-mail Chess Club World Congress, the International Chess Federation Congress (held in Abaku, Azerbaiyan) and finally, the World Chess Olympiad” he explained. “I decided to make a stop in Madrid because I had a meeting with some procedural civil law professors in relation to the new Code that will soon take effect in Nicaragua, which is based on the Spanish Code. I also took the opportunity to see Verdi's Otelo Opera, at the Teatro Real… I am currently in Miami
From mass to kingside castling Bendaña started playing chess at the age of 16 “almost by chance” he said. He had finished his 4th year at high school at the Colegio Calazans and a priest convinced his father that he attended some religious activities in Miami. “One day, after visiting some places and being forced to attend to mass, we had an entire afternoon to enjoy ourselves. Walking around Miami, I saw a chess board that I really liked; it was a renaissance chess set with human-like pieces. I bought it for six dollars” he recalled. www.marcasur.com
CHESS Seated in their serious corners, the players Align the slow pieces. The board Holds them until dawn in its severe Enclosure where two colors hate each other. The game magically enforces discipline Forms: Homeric castle, lightFooted knight, warring queen, the King in the rear, his bishop at a slant, pawns advancing. When the players have gone away, When time finally consumes them, The ritual is surely not over. It was the Orient that sparked this war And now the whole earth is its theatre. As with that other game, this one is never-ending. Jorge Luis Borges
That afternoon, at the house where he was staying, a young man thought him some moves. “The thing is that the next year I joined the Managua Chess Club and I took my awesome chess set, only to find out that they did not use that kind of set, but rather to official Staughton pieces (which made reference to the English 1838 chess champion). So I started to become increasingly interested in this game” he explained. “At the beginning, chess stroke me as mysterious. I studied its origin, its evolution throughout time, the techniques used by the Italian and the ancient masters, such as Ruy Lopez de Segura, from the XVI century” he said.
Learning from the best Bendaña met international chess champions, such as Anatoly Krapov, from Russia (famous for his games with Gari Kasparov), Tigran Petrosian, also from Russia (best known as Boa Constrictor, for his capacity to frustrate the plans of his opponents), Miguel Tal, from Lithuania (known as the Magician from Riga, his hometown), and Boris Spasky (defeated by the American Robert Bobby Fischer in 1972, during what was called the Match of the Century, which was played during the Cold War and was a symbol of such confrontation).
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“In 2005, I saw the Das Rheingold Opera, by Richard Wagner, at the Colon theatre, in Buenos Aires. Daniel Alpern, the chess player and musician, invited me. Both he and Claudio Gonçalves, then president of the Argentinean Chess Club, introduced me to Bent Larsen, one of the best players in the world during the sixties and seventies. I played a couple of times with him, in 2004 and 2005, while I was travelling. I won the first and he won the second time. Even when these were friendly matches, I am glad I had the opportunity of playing with one of the greatest players in all times” he pointed out. Bendaña developed his passion with tactics, strategy and logic training. He won four championships in Nicaragua and a number of international online competitions; he has taught and promoted chess as well, all of which has led him to the National Sports Hall of Fame. Next challenges? The attorney/chess player is getting prepared for an international chess championship that will take place in Panama next November. “This will be a difficult tournament; there will be 100 competitors approximately” he explained. Will he win? “Surely I'll try” he answers with confidence. M
Among kings, rooks and pawns Guy Bendaña is president of the National Chess Federation in Nicaragua since 2014 (as well as from 1997 and 2010). Prior to that, he had been treasurer, delegate and secretary of said organization. He is member of the FIDE Social Action Commission. He was the first Nicaraguan to have a position at this organization. In 2008, he was included in the National Sports Hall of Fame of Nicaragua as chess player. He is member of the National Chess Team of Nicaragua; he participated in the Chess Olympiads as both captain and member of this team, in several occasions (ever since 1998). He is founder and sponsor of the Julio Ramirez de Arellano Chess Academy in Nicaragua, 1994. Four times winner of the national online chess championship. In addition to this, he is cofounder of the Nicaraguan Distance Chess League, 1967. He has received several prizes as referee, coach and tournament organizer.
By Fabiana Culshaw
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