FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nยบ 66 JULY-SEPTEMBER 2017
TRADEMARK STATISTICS FROM LATIN AMERICA
INTA IN BARCELONA
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STAFF Director and Editor-in-chief: Juan Pittaluga juan@marcasur.com Editor: Fabiana Culshaw fculshaw@marcasur.com Digital Media Department: Juan Francisco Pittaluga francisco@marcasur.com Commercial Department: Mei-lin Che mche@marcasur.com Social Media Manager: Cintia Ferreiro cferreiro@marcasur.com Director of new contents: Karina Gonzรกlez kgonzalez@marcasur.com Communications: Claudia Azambulla cazambulla@marcasur.com Digital Media Design: Natalia Domingo ndomingo@marcasur.com Contributors: Daniel Lamas dlamas@lamasgrimaldi.com.uy Teresa Pereira tere@marcasur.com
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MARCASUR Number 66 2017 Cont. Echevarriarza 3535 A, 1501 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 Fax: (598) 2623 2957 info@marcasur.com ISSN 1688-2121 D.L. 354.155 Comisiรณn del Papel. Publication protected by Decree 218/96
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This digital magazine in English, first published in late 2010, reports on the latest Latin American events in the field of intellectual property. lt is sent out to more than 10,000 contacts in North America (the United States and Canada), Europe, and Asia. As of 2011, Marcasur Digital Magazine is also available for iPads at the App Store.
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Conscious of the growth experienced by the Asian Market, and in particular China, at the end of 2011 we launched this monthly digital newsletter to report on the latest intellectual property developments in Latin America. The newsletter is sent out once a month.
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LatinestaTISTICS
Slight growth in trademark applications
Latin America has had a 2,55% increase in trademark applications in the last year (2015-2016) and would be a little bit higher if Cuba’s data were added, which is estimated in favor of growth. The Cuban Intellectual Property Office is processing this information. The countries of the region that in absolute terms did not have the highest number of applications, reached the highest growth rates.
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Trademark applications in Latin America (2014, 2015, 2016) Country Guatemala Nicaragua Puerto Rico Dominican Rep. Argentina Paraguay Costa Rica Chile Brazil Mexico Honduras Panama Peru Colombia El Salvador Uruguay Ecuador Cuba Venezuela Total
2014 2015 12.140 10.203 n/d 4.200 4.121 4.398 9.838 10.214 57.908 65.931 24.735 22.146 12.346 13.150 42.360 43.181 157.016 158.709 118.745 134.342 6.906 7.755 8.924 9.180 25.258 26.354 40.383 44.262 7.109 7.631 5.755 5.499 15.589 17.932 2.491 6.108 20.755 19.569 572379 610764
2016 12.687 5.057 4.899 11.170 71.020 23.485 13.844 45.284 166.368 138.745 7.547 8.930 25.577 42.295 7.184 5.123 15.491 n/d 21.672 626378
Total of the three years 35.030 9.257 13.418 31.222 194.859 70.366 39.340 130.825 482.093 391.832 77.189 27.034 77.189 126.940 21.924 317.741 49.012 n/d 61.996 2157267
Fluctuation 2014-2015 (%) -16,0 n/d 6,7 3,8 22,6 -10,5 6,5 1,9 1,1 13,1 12,3 2,9 4,3 9,6 7,3 -4,4 15,0 145,2 -5,7 6,68
Fluctuation 2015-2016 (%) 24,3 20,4 11,4 9,4 7,7 6,0 5,3 4,9 4,8 3,3 -2,7 -2,7 -2,9 -4,4 -5,9 -6,8 -13,6 n/d 10,7 2,55
n/d No data.
According to the World Intellectual Property Organization (WIPO), Latin America is the third region in filing trademark applications, under Asia and Europe and above United States (around 10.000 more applications than that country). Guatemala, Nicaragua, Puerto Rico and Dominican Republic, in that order, are the countries with the highest percentage of applications, ranging from 7.7% to 24.3%. Guatemala leads with 24.3%. While ten countries show growth in this
area, seven show a downturn, especially Ecuador (13.6%), Uruguay (with a fall of 6.8% in the last year and 4,4% the previous year) and El Salvador (of almost 6%). Although there is a growth in the region of 2.55%, Latinstatistics estimates that, once Cuba’s data is available and is added, the region will witness a growth somewhat higher than it now registers. Cuba went from 2,491 trademark applications in 2014 to 6,108 in 2015. That is not much in absolute terms, but it meant
Fluctuation of trademark applications in the region (*)
(*) If any difference is noticed with the figures stated by Latinstatistics in previous editions, it is because the data has been updated. 8
* Data updated by Latinstatistics; in some cases figures differ from estimated figures published in previous editions.
a 145.2% increase, which raised the total average of Latin America at that time (a total increase of 6.68% of applications was reached in 2015). Cuba’s data corresponding to 2016 will likely shorten the gap between the period 2014-2015 and 2015-2016 in the region. It is important to mention that trademark applications in Cuba filed by applicants from the United States skyrocketed in 2015, following the opening of diplomatic relations between the two countries in December 2014. It is estimated that the trend will continue to rise as the relations and agreements between the two countries progress positively. Joe Ferretti, president of the International Trademark Association (INTA), told MARCASUR this year that Cuba is precisely one of the focal points of the organization, since investors and business growth opportunities are rapidly increasing there. As for Venezuela, although in theory its political-economic crisis should have had a negative impact on the number of trademark applications, this has not happened because the number of local business ventures in search of survival opportunities has increased. www.marcasur.com
THE GIANTS OF THE REGION Latinstatistics shows that, in absolute terms, the giants of the region are still the same. Brazil and Mexico lead with 166,368 and 138,745 trademark applications in 2016, respectively. And following far behind, Argentina (71,020), Chile (45,284) and Colombia (42,295). These are the top five of the region, even with a decrease of 4.4% in Colombia in the last year.
Top 5 OF 2016 Country
Trademark Applications
Brazil Mexico Argentina Chile Colombia
166.368 138.745 71.020 45.284 42.295
In the last three years, Brazil accounted for more than 482,000 trademark applications and Mexico nearly 392,000, a true record of almost 874,000 applications in that period.
2,55 %
Trademark registrations increased in Latin America in 2016
626.378 Trademark registrations were filed in Latin America in 2016
69,44 %
Trademark registrations were filed by residents in Latin America in 2016
Guatemala Increased 24,3% its trademark registrations in 2016 with respect to the previous year, obtaining the highest number of the classification.
Ecuador The country with the highest drop in 2016, -13,6%
Residents and non-residents The region has more applications filed by residents than by non-residents, 69.44% versus 30.56%. The countries that registered the highest percentage of applications by their residents in 2016 are Brazil (82.9%), Chile (70.14%) and Mexico (69.70%). Nicaragua (80%), Honduras (71%) and Panama (62.6%) stand out among non-resident applications.
69,44Â %
30,56Â %
Residents
Non-residents
Country Residents Percentage residents Non-residents Percentage non-residents Total 2016 Brazil 137.878 Trademark 82,90 28.490 17,10 166.368 Applications filed by residents and non-residents in 2016 Mexico 96.692 69,70 42.053 30,31 138.745 Argentina n/d n/d n/d n/d 71.020 Chile 31.699 70,14 13.585 29,86 45.284 Colombia 24.306 57,00 17.989 43,00 42.295 Peru n/d n/d n/d n/d 25.577 Paraguay 14.448 61,52 9.037 38,48 23.485 Ecuador n/d n/d n/d n/d 15.491 Costa Rica 6.302 45,52 7.542 54,48 13.844 Guatemala n/d n/d n/d n/d 12.687 Dominican Rep. 6.646 59,50 4.524 40,50 11.170 Panama 3.339 37,39 5.591 62,61 8.930 Honduras 2.185 29,00 5.362 71,00 7.547 El Salvador 3.146 43,80 4.038 56,20 7.184 Uruguay 2.238 43,70 2.885 56,30 5.123 Nicaragua 997 20,00 4.060 80,00 5.057 Puerto Rico n/d n/d n/d n/d 4.899 Cuba n/d n/d n/d n/d n/d Venezuela n/d n/d n/d n/d 21.672 Total 329.876 69,44 145.156 30,56 626.378 www.marcasur.com
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INFORMATION OF INTERST OF THE TOP FIVE BRAZIL Trademark applications in Brazil, last year and so far in 2017, have been filed mainly by microenterprises (49%), medium and large companies (22%) and individuals (25%), according to data from the National Institute of Industrial Property of that country (INPI). Non-resident trademark applications are predominantly filed in the United States, Germany, France, Switzerland, Japan, China and United Kingdom, in that order. The months of 2016 with the highest numbers of applications were March and, in the middle of the year, from June to September. Brazil has one of the most prominent trademark offices in the region, but with a large backlog of trademark applications piled up in the INPI, amounting to around 160,000 monthly in 2016, according to information provided by the Trademark Office. (More information on this subject can be found in the article “Desbordados por ríos de expendientes”, an interview with INPI’s President, Luiz Otávio Pimentel, published in issue 65 of MARCASUR, page 42).
Trademark applications in Brazil by month, 2016
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feb.16 mar.16
abr.16 may.16
jun.16
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ago.16
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Source INPI
MÉXICO Trademark applications in Mexico, in general terms, have increased over the last few years, according to the statistical country profile published by the World Intellectual Property Organization (WIPO).
Applications in Mexico have increased through the Madrid Protocol system. In 2013 there were 7,855 and at the end of 2015, there were 22,423. The trend of this indicator continues to rise.
Trademark application
Application
Application
Madrid Protocol
Source: IMPI, México
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Source: IMPI, México
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Trademark applications in Argentina by month, 2016
ARGENTINA In the southern country, the largest number of trademark applications in 2016 took place in August and September, with an earlier push in the March-April-May quarter. Non-residents who filed trademark applications came mostly from the United States, and then from Germany, Switzerland, Mexico, and France. Argentina experienced a good growth in the period 2014-2015 (22%), and in 2016 it experienced a more moderate growth (7.7%), reaching 71,020 trademark applications. It is estimated that with the new government the entrepreneur will be more encouraged to invest and file trademark applications or renewals; this hypothesis may be confirmed - or not - at the end of 2017.
ene.16
feb.16
mar.16
abr.16
may.16
jun.16
jul.16
ago.16
set.16
oct.16
nov.16 dic.16
Source: Trademark and Patent Office of Argentina.
Trademark applications in Chile by month, 2016
CHILE Comparing the total number of new trademark applications in one class filed in 2016 compared to 2015, Chile shows an increase of 4.8%. And if you compare 2016 with 2014, the increase is of 6.9%. The number of applications is quite homogeneous throughout 2016, especially from February to September. In the last three years, this country has had a constant growth, from 42,360 trademark applications in 2014 to 45,284 in 2016. If the political-economic stability in that country continues it is expected that these numbers will keep rising. It is worth recalling that, precisely because of Chile’s stability, among other reasons, the International Trademark Association (INTA) chose to establish its regional office in that country, opened this year in May.
Solicitudes de marcas en Colombia por mes, 2016 ene.16
feb.16 mar.16
abr.16
may.16
jun.16
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Source: Trademark and Patent Office of Chile.
Trademark applications in Colombia by month, 2016
COLOMBIA Trademark applications in Colombia had a positive rise in June-July, and in August and December 2016. National applicants are 77% of the total, while the rest of the applications came through the Madrid Protocol system, although it is estimated that applications could increase considering the facilities that this system offers. As it can be appreciated in the corresponding table, Laboratorio Lafrancol is the first resident applicant in 2016, while Abercrombie & Fitch Europe SAGL heads the ranking of non-residents. Laboratorio Franco Colombiano S. A. S., commercially known as Laboratorio Lafrancol, was founded in Barranquilla in 1911. It currently operates from its prowww.marcasur.com
ene.16
feb.16 mar.16
abr.16
may.16
jun.16
jul.16
ago.16
set.16
oct.16
nov.16
dic.16
Source: Trademark and Patent Office of Colombia. Data base Trademarks SIC.
duction plant in Cali. It develops, manufactures and distributes, at a national and international level, pharmaceutical products and functional foods for human consumption. It exports to Central and South America and works extensively in the therapeutic segment. Abercrombie & Fitch (A & F), for its part,
is an American fashion company with more than 300 branches in the United States and focused on its international expansion in several global trades. It was founded in 1892 and specialized in hiking clothing, until it was positioned as the present casual luxury brand. It made its entry in Colombia in 2015. JULY / SEPTEMBER 2 0 1 7
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Source National
Source Madrid Protocol
Consulted sources:
77 %
23 %
Ranking by applicants year 2016 Residents Position
Applicant
1 Laboratorio Franco Colombiano (Lafran-
Non-residentes Position
Applicant
1
Abercrombie & Fitch Europe SAGL
2
Apple Inc.
2 Mercadería S. A. S. (stores)
3
Johnson & Johnson
3 Banco Popular S. A.
4
Orion Corporation
4 Industria Licorera de Caldas
5
Huawei Technologies Co., Ltd.
5 Jerónimo Martins Colombia S. A. S.
6
Hyundai Motor Company
7
SM Marken GMBH
6 Apoderados
8
Jafer Enterprises R&D, S.L.U.
7 Jhon Jairo Salazar Vallejo (pharmacies and cosmetics)
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LG Electronics INC.
col) S. A. S.
(distribution chain)
8 Diana Corporación S. A. S. (foods)
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Bayerische Motoren Werke Aktiengesellschaft
9 Tecnoquímicas S. A. 10 Colombiana de Comercio S. A. Corbeta S. A. / Alkosto S. A. (cadena de almacenes) Fuente: Oficina de Marcas y Patentes de Colombia. Base de datos Marcas SIC.
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Claudia Serritelli, Estudio Chaloupka, Argentina Ricardo Martín Gordó, Gordó Llobell Abogados, Argentina Luiz Otávio Pimentel, National Institute of Industrial Property (INPI), Brazil Felipe Claro, Claro & Cía., Chile Luis Antonio Silva, Center for Information Technology and Industrial Property Management Support (CIGEPI), Colombia José Zuluaga, Brigard & Castro, Colombia Superintendency of Industry and Commerce, Colombia ‹www.sic.gov.co/estadisticaspropiedad-industrial› Arlen Perdomo Días, Cuban Industrial Property Office (OCPI) Statistics Yearbook of Cuba Ana Paula Campusano, J. J. Roca & Asociados, Dominican Rep. Gonzalo Luzuriaga Mirabá, Luzuriaga & Castro, Ecuador Martha Evelyn Menjívar, National Registry Center, El Salvador Mayra Navarrete, García y Bodán Abogados, Honduras Intellectual Property Registry of Nicaragua García & Bodán Abogados, Nicaragua Leonardo Uribe, General Directorate of Intellectual Property Registry, Panama Fernando Becerril & Nuria Becerril, BC&B, Mexico Lorena Mersán, Mersán Abogados, Paraguay Francisco Espinosa, Espinosa Bellido Abogados, Peru National Institute for the Defense of Free Competition and the Protection of Intellectual Property (Indecopi), Peru Mitchelle Méndez Castañeda, Registration of Trademarks and Trade Names, Puerto Rico Marianela Delor, National Office of Industrial Property (DNPI/MIEM), Uruguay Ricardo Enrique Antequera, Estudio Antequera Parilli & Rodríguez, Venezuela Adolfo López Moreno, Ayala & López Abogados, Venezuela M Fabiana Culshaw Latinestadísticas
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OPINION
Error in the Ecuadorian criminal code in relation to trademark infringement By Gonzalo Luzuriaga Luzuriga & Castro Ecuador
In their debate, Ecuadorian legislators confused legal concepts of intellectual property, which translated into a criminal regulation with no coherence in relation to the punishable conduct that was intended to sanction. Within the legislative debate to approve the IP crime, the principles of proportionality and minimal intervention prevailed, that led to a reduction in penalties and sanctions for this illegal conduct, which, according to the governing philosophy, should not even be considered a crime. The crime against intellectual property rights is then included in the ninth section of the Ecuadorian Criminal Code, related to property rights, through a reform published on September 30, 2015. The reform has a critical error as it confuses “counterfeit” with “non-authorized use”. According to official documents, the Ecuadorian legislator sought to criminalize “the commercialization or manufacture of falsified merchandise, or its packaging, that bears a valid registered mark for such goods, or a mark that cannot be distinguished in its essential aspects.” 4214
Unfortunately, the reform did not include “falsification” of mark as an illegal act within the IP crime of (incorporated) article 208A of the Ecuadorian Criminal Code. The misfortunate redaction of the current IP crime by Ecuadorian legislator, open the door for “unauthorized use” of mark to be punishable as a crime. Therefore, commercialization of originals goods with no previous authorization from the IP owner, could be consider an IP crime based on current Ecuadorian legislation. The title of the criminal norm contained in article 208A of the Ecuadorian Criminal Code reads: “Counterfeiting of trademarks and harmful piracy against copyright”; however, the rule that follows the title is a poor adaptation of the definition of “counterfeit goods” contained in the Explanatory Note to Article 51 of the TRIPS, definition related to border actions, not to criminal conducts. The definition contained in this explanatory note is not, by its structure, a basis for the composition of a criminal law. The falsification of trademark contains, in itself, several illegitimate acts. One is the unauthorized use of the trademark; and, the simulation (as a consequence of the first) - in this case understood as the act of unauthorized reproduction of the goods. The former IP crime contained in articles 319 and 323 of the Ecuadorian Intellectual Property Law (derogated by the Ecuadorian Criminal Code in force since
August 2014), included those two aspects, and restricted IP owners to exercise criminal actions only when their marks rights were infringed by falsification of their trademarks, that is, the unauthorized use and the act of simulation together in one illegal action. The legislative technique used by the Ecuadorian legislator at the time of the elaboration of the current IP crime contained in article 208A of the Ecuadorian Criminal Code, erroneously uses the explanatory note, and determines that in Ecuador the IP crime regulated the following illegal conduct: “commercialization or manufacture of merchandise, or its packaging, that bears without authorization a valid registered mark for such goods, or a mark that cannot be distinguished in its essential aspects.” The legislative error becomes more evident when analyzing the second paragraph of the IP crime under study, because when criminalizing pirated goods, the Ecuadorian legislator clearly and precisely establishes Piracy as an illegal behavior, and then proceed to define what are considered pirated goods. Gonzalo Luzuriaga: Graduated from the Pontifical Catholic University of Ecuador, PhD from the International University SEK, and Specialist in Intellectual Property from the University of Castilla-La Mancha, Spain. Specialist in Protection of Industrial Property Rights. gluzuriaga@luzuriagacastro.com
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MARCASUR informa SPAIN GRUPO 10 PRESENTS APIGES PRO Grupo 10 Empresarial IP Software presents Apiges Pro, its leading program in industrial property management. Over these more than 25 years of experience in the sector, Grupo 10 Empresarial Ip Software, Spanish computer company specialized in the development of Software for the management of portfolios of industrial property records, reinforces its presence in Latin America and presents its software Apiges Pro: • Very easy to use: in a single screen you will find all the necessary information for processing your file.
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OPINION
Fashion retail stores in Latin América By Maricruz Villanea Ideas Trademarks and Patents Costa Rica
Latin America covers almost 7.5 million square miles (similar to the combined size of the United States and Canada). It groups more than 20 countries, in a market of 650 million people, with an estimated GDP (Gross Domestic Product) for 2017 of US$5,4 billion, estimated by the World Bank to grow up to US$ 6,2 billion by2020. Purchasing power in Latin America has been steadily growing, with the middle class going from 20% to 30% over the last decade and it’s expected to reach 50% by 2030(source: World Bank). Almost 10,000 individuals are considered “UHNW” (ultra high net-worth individuals). This means that the region has more people with assets over US$30 million that in the Middle East and Russia combined. In the coming years, apparel strategy in Latin America has become very important for the new aspirational middle class, and this is creating big opportunities for fast fashion brands positioned at premium prices. How well leading players engage with the taste and demand of Latin America, will determine who comes out on top. With a shopping mall boom in all the region, fast fashion culture gathering pace with investments of stores like Gap, Forever 21, H&M and Top Shop are 20 40
giving some competition to Inditex, who has been a leader in the market for the past decade. Among Latin American countries, Panamá plays a strategic role as an entry point. It sits roughly halfway along the region and with its Panama Canal, which handles 330 million tons of cargo every year, it controls most of the traffic in the region. Also, the Colon Duty Free Zone hosts thousands of distribution centers and hubs. Panama has a domestic market population of only 4 million, but it attracts customers from all Latin America. Panamas has a competitive advantage over cities like Miami, because it doesn’t require visa for Latin American citizens and there is an important offer of cheap flights between countries. Regarding the biggest markets, recent political changes in Brazil and Argentina may enhance the opportunities for business growth, as new governments that promote foreign investment and open market economies have replaced.previous socialist ones. There are many ways to enter the market, such as franchising, licensing, joint ventures or company direct investments. The most common form is through a franchise. These kind of agreements are atypical in regulation; meaning that these are not regulated by most of the local legislations. This option may present interesting opportunities for companies with international expansion aspirations. The most common advantages of a franchise would be low-cost distribution
system, enhancing profitability and no need for major expansion in overhead and complexity of the organization. Typically, the investment will be made by the franchisee. The company will receive an initial fee and periodical royalties (fixed amount or percentage of sales). These royalties are subject to holding taxes. The percentage of these will vary according to each country legislation, from 12% and up to 35%. To create and enforce a franchise agreement three elements are required: register a trade name, “know how transfer” and monetary agreement. The franchisor must register their intellectual property rights in the franchise jurisdiction. Most of these countries have very protective laws to protect the “weaker party”. These protective laws include measures like big compensations, buying the remaining stock, and liabilities for compensation of the employees. Companies must be very careful with the contracts they must include all the details of the relationship to try to avoid local protective laws. Maricruz Villanea: Business Partner of Ideas Trademarks and Patents founded in 2009. More than 20 years of experience in Intellectual Property matters in Costa Rica, as well as management of trademarks portfolios through the entire Central American and Caribbean Region. She has specialized in the defense of Intellectual Property rights, offering advisory and management services in the area of distinctive signs, patents, copyrights, names of domains. She focuses on assisting fashion companies and retail companies in navigating Latin American. Based in Costa Rica, Maricruz has assisted many companies on issues of market entry, franchising, licensing, grey market goods, import and exports. mvillanea@ideatpcr.com www.marcasur.com www.marcasur.com
OPINION
INTA and its relation with Latin America By Jorge Omar Casco Zelaya Casco & Casco Honduras
The International Trademark Association (INTA) is a global organization of trademark owners and professionals dedicated to supporting the protection of trademarks and intellectual property in order to “protect the consumer and promote fair and effective global commerce”. Now that a new 2018-2021 Strategic Plan is being considered, I suggest an important step forward in the sense that INTA promote common efforts with the Latin American region to develop some pending tasks that establish realistic and concrete programs of intellectual property protection. The Inter-American System begins with the First International Pan American Conference (CIDIP) of 1889-1890 in Washington, having as historical background the Panama Congress of 1826 convened by Simón Bolívar; On April 30, 1948, at the Ninth Conference in Bogota, was adopted the Carta of the Organization of American States; The first CIDIP established the International Union of American Republics, created a Permanent Secretariat and the Commercial Office of the American Republics. Although Colombia’s initiative was to boost trade between Latin America and the United States of America and Canada, other important fields have www.marcasur.com www.marcasur.com
been developed, such as the integrated development of legislation in public and private international law; system of protection of human rights, border delimitation, justice, democracy and security. INTA can include in its Strategic Plan a series of programs to support development processes in the area of punctual strengthening of capacities, establishment of regulations and projects such as: a) The creation of seminars and workshops jointly with the state universities of Latin American countries and the respective Chambers of Commerce for the training and updating of officers of the Intellectual Property Institutes and lawyers in exercise for the harmonization of criteria in the protection of patents, trademarks, designs and other signs: b) The provision of short courses for the promotion and knowledge of industrial property arbitration; c) Training courses for Lawyers from the Free Legal Clinics supported by Universities to acquire knowledge, abilities and skills in the drafting of patents and support people with inventive capacity but no resources to hire specialists and register their proposals; d) support in the development of technical regulations that are lacking in some Institutes of IP; e) Seminars for staff training for searches departments in order to improve their knowledge of the criteria on confusion; f) Creation of software for a database shared by all Property Institutes for the classification of administrative and
contentious-administrative resolutions to establish jurisprudence or a system of precedents; These programs and others considered to be priorities, could be developed through a cooperation agreement with the InterAmerican Association of Intellectual Property (ASIPI); I have witnessed the extraordinary transformation of this regional organization in the last 20 years; Went from a club to smoke cigars and play guitar to a center of academic and scientific debates on transcendent issues in the world of intellectual property. ASIPI is the ideal mechanism that could operate some programs directly with the member countries that most need this hemispheric support. Jorge Omar Casco Zelaya, Honduran; Emeritus Professor; Doctor Honoris Causa of the Honduran National University; Former Professor of International Law, Diplomatic, Commercial Law, Former Director of the Institute of Legal Research, Former Academic Director of University Extension, Former Director of Law Review, Former Rector of the National University of Honduras; Former President of the Commission of Selection of Magistrates of the Supreme Court of Justice; Certified Arbitrator; Attorney and notary; Founding partner of Casco & Casco, S.A. Honduras. jorge.casco@cascoinfo.com
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AIPPI
GOAL: MORE MODERN AND OPEN With its 120 years of history, the International Association for the Protection of Intellectual Property (AIPPI) has been characterized by a highly professional profile. Today, it also aims to increase the number of its members and enhance their networking.
“AIPPI contributed in the creation of the Paris Union Convention, in the creation of the International Trademark System of the Madrid Protocol and in the definition of the European Patent Convention”, Durán. Luis Alfonso Durán defending AIPPI’s academic profile.
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“I have the goal of making AIPPI’s voice be heard more in the Americas, to try to increase the number of members in our region”, Do Amaral.
Claro, president of the organization during the period 2014-16. “AIPPI contributed in the creation of the Paris Union Convention, in the creation of the International Trademark System of the Madrid Protocol and in the definition of the European Patent Convention. And at this moment it continues to contribute with its studies on a treaty of substantive law on patents, trademarks and designs” explained Luis Alfonso Durán, Honorary Member of AIPPI. According to Luiz Henrique Do Amaral, Assistant Secretary General of AIPPI for the past two years, the association has been focused on modernizing. “You already feel a change in the perception of the organization. It is more dedicated to the new generations and, although most of its members are patent offices, more companies are becoming members,” Do Amaral stated.
Luiz Henrique Do Amaral with his eyes on Latin America.
With its 120 years of history, the International Association for the Protection of Intellectual Property (AIPPI) has been characterized by a highly professional profile. Today, it also aims to increase the number of its members and enhance their networking. If something characterizes AIPPI it is the study in depth of existing treaties and the proposal of the adoption of measures to harmonize the laws of the countries, keeping their local characteristics valuable. Its main objective is to improve the legal systems of Intellectual Property worldwide and encourage effective protection in this matter. “The function is to coordinate the regional chores as an orchestra director would,” said Felipe www.marcasur.com
Review process of the association In the last four years AIPPI underwent a review process. “We wanted to know where we were standing and where we are going because we identified the need of giving a greater importance to the work of the association that did not transcend the international community, despite being valuable. This way, we improved the methods of dissemination without losing the quality of legislative work. There was also a restructuring of the committees; now they are more open,” explained Claro. AIPPI considers that it has been renovating and turning out to be more attractive for professionals. “Membership had declined, but it is rising. About three years ago we had 8,000 members and we are now over 9,000. There are new national groups in Jordan, Pakistan and Vietnam. The United States had a low membership and is now one of the largest groups. The China Group also grew because the new president, Hao Ma, is from that country,” Claro said. Strategic plan 2017-2020 Founded in 1897, AIPPI is a global association with 69 national and regional groups and over 9000 members from 125 countries. JULY / SEPTEMBER 2 0 1 7
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Strengths One of the most valued aspects of AIPPI is its annual visits to large Intellectual Property offices, such as the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), the China Patent and Trademark Office, the Japanese Patent and Trademark Office, the World Trade Organization (WTO) and other governmental organizations, NGOs. The relationship with these organizations and the in-depth study of topics that are addressed make AIPPI a valued entity for its global view of Intellectual Property and global trends. Duran emphasizes the heterogeneous membership of AIPPI, which constitutes an added value for the organization. “When issues are discussed you can approach different angles, so the resolutions are balanced. Members work in the private and public sector, they are attorneys and trademark and patent agents, professionals devoted to industrial property litigation, academics, university professors, members who belong to Industrial Property offices in different countries”, he said. “We have to analyze issues intertwined with litigation, labor, foreign investment and other areas that exceed what Intellectual Property is in the strict sense. The organization adds value to topics from other perspectives,” said Claro.
Felipe Claro beyond intellectual Property.
“It is true that there is a healthy and natural competition among associations, but I cannot say that AIPPI has less networking, it is just another type of networking”, said Claro. With the rapid growth of technologies and dramatic changes in global socioeconomic development, AIPPI’s role in promoting intellectual property protection has become increasingly important. One of its recent achievements is to have defined this year a strategic plan, for the first time in its history. The plan includes empowering the members of the association and its regional groups, enhancing the leadership of the organization, developing more programs on current topics and perspectives, recruiting new members, developing networking, getting more involved in national and regional meetings, providing more added-value services. 24
Another type of networking There are other intellectual property organizations known for establishing greater networking than AIPPI. “It is true that there is a healthy and natural competition among associations, but I cannot say that AIPPI has less networking, it is just another type of networking. This one is more study related. For example, when discussing the level of inventiveness of a patent, the topic is studied in-depth,” said Claro.
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“Some professionals believe that AIPPI stayed in the technical and scientific level and distant from the market. However, recently more companies are becoming members and a more intense network is taking place with them,” stated Do Amaral. Duran recognizes that other Intellectual Property organizations have more participation by their members. “AIPPI’s networking is more formative and not so social,” he said. About Latin America The most active groups in AIPPI are the Europeans. “Latin America still does not have a high participation in the organization, but it is improving in that sense. The professionals in this part of the world are a small and forceful group, and see the benefits of being part of this organization because then they perform very well with their clients,” said Claro.
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Do Amaral’s mission is to coordinate the groups of the Americas in order to maintain constant communication. “I also have the goal of making AIPPI’s voice be heard more in the Americas, to try to increase the number of members in our region,” he added. As an approximate reference, it is important to point out that of the more than 9,000 members of AIPPI, around 4,000 are European, 3,000 Asians, 1,000 from Latin America (of which 400 are Brazilians) and about 600 North Americans. The latter, with a potential growth at this time. “We are also making a great effort to have more Brazilian companies join the association,” commented Do Amaral.
to open the upcoming congress in Sydney, Australia to members and to non-members. This event will take place from October 7 to 13. “We do not expect a large number of Latin American attendees due to the geographic distance. Logically, more Asian and European will attend. However, the next congress, in 2018, will be in Cancun, Mexico,” said Do Amaral. Durán believes that each AIPPI event “is a fantastic school to learn, discuss, reach an agreement, analyze work methodologies and negotiate. Connect with high level professionals is not common,” he concluded.M Fabiana Culshaw
With eyes in Sydney This year, we will celebrate AIPPI’s 120th anniversary and, within the changes that have been made, it was decided
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THE PRESENTATION OF THE NAME OF BRANDS IN CIGARRETTE PACKAGES, BEVERAGES, AND PROCESSED FOODS REDUCE THEIR SPACE IN FAVOR OF HEALTH WARNINGS. THE INDUSTRIES INDICATE THAT THESE LEGAL REGULATIONS COMMERCIALLY HARM THEM AND GENERATE UNEMPLOYMENT. HOWEVER, THIS TENDENCY CONTINUES TO ADVANCE AROUND THE WORLD.
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It all began in New Zealand when the Council of Toxic Substances of the Health Department of that country recommended in 1989 that cigarettes should be sold only in white packages with black text, with no colors or logos. In the 1990s, Canada inspired by the same idea, also made proposals for the so-called simple packaging of these products. But it was in December 2011, that Australia became the first country in the world to demand that tobacco products be sold in simple packages, also called plain, generic, homogenous or standardized. This was achieved with the enactment of the Tobacco Plain Packaging Law in that country. Since then, other governments, including the European Union, have been adhering to measures that minimize the size of brands in packaging and increasing the size of health warnings, despite the lobbying of the tobacco industry, which has been slowing down some legislative initiatives. What began as a concrete measure and circumscribed to a territory, began spreading to different countries to reach other industries beyond tobacco, such as beverages and food.
Tabaré Vázquez explains his anti-tobacco position Uruguay’s victory against Philip Morris The case was emblematic and established international jurisprudence. In 2010, Philip Morris International filed a lawsuit against Uruguay before the International Center for Settlement of Investment Disputes (ICSID) of the World Bank for USD 25 million, alleging violation of the Bilateral Investment Treaty (BIT) between Switzerland and Uruguay. The BIT provides protection to investments made in that country, including intellectual property. This happened when the government of President Tabaré Vázquez applied law 18256, approved in March 2008, which includes strategic grounds of the antitobacco policy. Some of these legal regulations were: prohibition to sell different types of presentations of the same brand of cigarettes; placement of graphic images on labels warning smoking risks (mouths with cancer, terminal lung patients, etc.), imposing that they occupy 80% of the package; tax increase in the tobacco sector; prohibition of tobacco advertising in the media; prohibition of tobacco sponsorship at events; prohibition of smoking in public places. Of all these regulations, Philip Morris objected two: the requirement of withdrawing from the market seven of its twelve products and the obligation to increase to 80% the area for the placement of images warning the health risks. After six years of international arbitration, in 2016 the ICSID ruled in favor of Uruguay, on the understanding that its government acted within the framework of a general plan in defense of public health and in agreement with the WHO. Philip Morris had to pay USD 7 million for costs of the process, among other expenses. The case was seen as an absolute success and unprecedented by the Uruguayan government. As a result, it was decided that from 2017 cigarettes will be sold in neutral packaging in that country. Uruguay was advised by the American legal firm, Foley Hoag LLP. The tobacco company was represented by the Swiss firm, Lalive. At present, the Uruguayan government has a project on plain packaging. Another news related to this issue? Yes, in March 2017, the Uruguayan government issued a decree requiring beer brands to clearly state on their packaging the alcohol content, including non-alcoholic beers, for which they set a maximum tolerance of 0.1 % Vol.
“FROM NOW, WHEN THE TOBACCO COMPANIES TRY TO MODERATE THE REGULATIONS... THEY WILL COME ACROSS OUR PRECEDENT”, SAID TABARE VAZQUEZ, PRESIDENT OF URUGUAY AND ALSO ONCOLOGIST”.
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Governments want to warn with greater force about the percentages of alcohol, fat, calories and salt content, in order to improve dietary habits and avoid diseases derived from unhealthy consumptions. Today, the health trend seems unstoppable. This has unleashed a huge controversy. Some studies show that simple packaging reduces tobacco consumption in the population (0.5% a year after the measures were adopted in Australia) and, therefore, the measure is efficient. In contrast, many industries and analysts argue that these results are inconclusive, or that the same effects could be achieved through educational actions on good consumption habits, without affecting the brands, which are fundamental for the GDP growth of nations. In the diatribe, a third position arises: one that defends the balance between the requirements of labeling in favor of health and the rights of brands to present themselves clearly before consumers. The problem is that this “balance” is not easy to achieve and not everyone agrees with this. In favor with firmness The World Health Organization (WHO) applauds measures on simple packaging and has the support of the Pan American Health Organization (PAHO), global institutions against cancer, diabetes and obesity, and most of the international scientific medical entities. The basic idea is that this type of packaging is less attractive, thus discouraging consumption of unhealthy products, while increasing negative perceptions about smoking or eating foods high in fat, calories or salt. Warnings on processed food packaging are intended to show the population the ingredients that they are consuming and in what quantities, so that they can adopt the necessary precautions, especially regarding child obesity, which is one of the greatest worries at this time in many countries.
“To what extent can the State limit a property right that it has granted to companies?” he added. According to him, there would be cases of expropriation of industrial property rights due to the impossibility of using trademarks, with infringement of basic commercial rights. Etienne Sanz de Acedo considers that “we must be careful of the boomerang effect. It is restricted to brands only thinking of health, but the impact returns affecting the industries, and thus, resulting in job losses. There are other ways to promote health without making brands disappear or minimizing them from the packaging of the products, nor affect the companies”, he concluded. Plain packaging Plain packaging stands, according to some spokespersons, as a clear consumer defense (making the packaging less attractive, smoking is discouraged), while other spokesmen consider it an attack against commercial brands considering
Gustavo Giay
-as they point out- that not even the arms industry has been so punished as the tobacco industry has in terms of distinctiveness. “There must be a balance between trademark protection and consumer rights. Brands have a relevant value for the societies and economies of the countries and should be harmoniously interpreted with other legislations in benefit of everyone’s rights”, said Gustavo Giay, partner of Marval O’Farrell & Mairal of Argentina and also Global Advisory Council for Latin America at INTA. “You can warn the consumer without destroying the right of the owner to place the brand on his product,” he summarized.
Against the regulations “We are witnessing a tendency of legislators from many countries limiting the rights of trademark owners, in violation of international agreements. Not only is there plain packaging, but limitations to use figurative trademarks or certain colors in the packaging”, mentioned Etienne Sanz de Acedo, CEO of the International Trademark Association (INTA). www.marcasur.com
Nutritional traffic light, Ecuadorian labeling system JULY / SEPTEMBER 2 0 1 7
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«THERE MUST BE A BALANCE BETWEEN TRADEMARK PROTECTION AND CONSUMER RIGHTS»
María Cecilia Romoleroux
Ecuador dyed in colors The cases of Ecuador and Chile, especially Ecuador, are perhaps the most emblematic in Latin America in terms of trademark restrictions. In 2012 Ecuador launched a food labeling system whereby all packaged products had to incorporate a color indicator called traffic light, which indicates if the sugar, fat and salt content is high (red), medium (yellow) or low (green). The traffic lights food-labeling system was installed by 2014 and today, there are very few supermarkets without this indicator which visually imposes itself over the names of the brands along the shelves. The measure was adopted in response to the incidence of diseases related to poor consumption habits, such as diabetes, which has quintupled in the Ecuadorian population in the last four years. According to official data, 80% of processed foods contained harmful substances in 2013. “Generally, in other countries, restrictions begin with cigarettes and continue with sugar based products, but Ecuador started directly with foods. The industry argued at the time that the resolution would
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cause financial losses and destroy jobs, and besides, that the labeling system was not clear to consumers, but it succeeded anyway,” said María Cecilia Romoleroux, intellectual property lawyer for Corrales Rosales, in Quito. The government’s intention is for companies to produce healthier foods, and those that have been able to invest in adjusting their ingredients or production lines, are doing so. Besides this labeling measure in Ecuador others have been added, such as the sugar
tax that has increased the price of soft drinks, special consumption tax (SCT), in the order of 300%, applied to liquors and cigarettes, and advertising restrictions (it must be produced in the country, it cannot be imported). “What is generating more controversy here is that processed foods are regulated but nothing is being done regarding informal food. Most of the Ecuadorians eat at street stalls which have no regulation,” Romoleroux said. For the Ecuadorian government, to continue with the adopted measures is a true victory, one that it does not plan to renounce. Margarita Guevara, back then (2016) Minister of Public Health of that country, said: “It has been a constant struggle, but now, when the industry wants to get rid of the labeling, there is a regional movement with the technical support of the Pan American Health Organization (PAHO), with the civil society, which is making sure no steps backwards are taken from the rights and achievements earned”.
Margarita Guevara, former Minister of Public Health of Ecuador
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they only focus on health issues and how to mitigate illnesses resulting from poor eating habits or addictions. It is important to mention that, at the close of this edition (June), the US subsidiary of PepsiCo initiated a legal action against the Chilean Ministry of Health, stating that it would infringe intellectual property rights by prohibiting decorative figures on the packaging of their Chettos and Gatolate products. Projections
Smoke Issues Australia: It was established that from 2012 products on sale must have simple packaging. New Zealand: The same law was adopted in 2016; it is not fully implemented in practice. France: Standardized packaging has been applied to cigarettes since January 2017. United Kingdom: It has been in force since May 2017, with the expectation that 300,000 Britons will quit smoking. Norway: From July 2018. Ireland: From September 2018. Hungary: From May 2019 all packaging must be standardized. Canada: Graphic health warnings cover 75% of the main face of cigarette packs. Similar decisions are repeated in other countries, including Latin America. Europeans are the pioneers in the field.
View video Read related article
Francisco Carey
Chile also with signs Many countries in the region, such as Colombia, Bolivia, Peru and Uruguay, are in the process of regulating the labeling of products or labels on packaging, but in Chile and Ecuador the regulations are even stronger. Food packaging in Chile has a black stop sign warning high-sugar, high-sodium or high-fat products. One of the issues that has arisen a major controversy has been the restrictions on figurative trademarks (images or logos that visually distinguish a brand), according to Francisco Carey, partner of Carey de Chile. “The authorities understand that figurative marks may be regarded as advertising and therefore, liable to be prohibited. However, in our opinion, it is not established in the law,” he said. “There are those who think that, rather than a defense of consumers’ health, legislation is moving towards a ground against intellectual property,” he added. Legislators deny this view and say that
In rough waters, clear forecasts are difficult. But there is some consensus that trademark restriction laws, with the health flag, will continue throughout the world, in different degrees. These regulations and campaigns are led by the governments of the most diverse countries, they generate precedents in the matter and are supported by international health organizations. A possible scenario is that companies will adopt their products to the new regulations regarding the ingredients of the products in order to meet the expected health requirements, but for this they will need financial muscle. Organizations that defend intellectual Property, such as INTA, will continue to try showing the value of brands before governments, public and private organizations and the international community, with the conviction that to defend the populations’ health there are many educational means that go beyond packaging restrictions. The table is set and everything indicates that the struggle between governments and industries will keep up for a long time. Regarding professional practice, law firms are sure to try to open the range and look for different ways on how to better protect their clients’ intellectual property based on the new regulations.M
Fabiana Culshaw
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OPINION
Wine protection in Argentina
Evolution of the system of geographical indications and appellations of origin of wine in Argentina
By Ricardo M. Gordó Llobell Gordó Llobell & Associates Argentina
Wine is that drink that has always been a part of the Argentines. Thanks to marketing, it has made possible that when friends gather they do not only talk about football but also about wine varieties, strains, origins, aromas, qualities, winemakers and, why not, about the different prices of wines. The history of wine and the evolution of the system of geographical indications and appellations of origin in Argentina is curious and interesting, in an upward curve that prestiges the positioning of such a noble Argentine product. It starts with the arrival of the Spaniards to the region and, along with it, the cultivation of the vitis (vitis vinifera, common grape vine). Until then, only wild vitis (non-vinifera) existed in this region of America. In Argentina, the greatest advance in wine production began in 1853 with the introduction of French strains (Cabernet Sauvignon, Malbec and Pinot Noir) and the hiring of French expert agronomist Michel Aime Pouget. All at the behest of Domingo Faustino Sarmiento, the renowned Argentine national hero, who among other achievements was the first governor of the province of San Juan (1862) and then president of the nation (1868). In this context, Pouget estab32 34
lished in the province of Mendoza a plant nursery known as the Normal Farm of Agriculture, and organized a model vineyard with French varieties and a scientific method for its cultivation. He imported machinery and agricultural implements, and disseminated rational pruning and grafting. The incorporation of these French strains and the teachings from the French school, added to the immigration phenomenon of Italians and Spaniards at the end of the XIX century and the arrival of the railroad in 1885, produced a substantial change in the industry that resulted in the production of quality wines and the birth of a new agroindustrial model sustained in the vitiviniculture, mainly in the Cuyo region (Mendoza and San Juan), which came to complement the livestock farming model of the provinces of Córdoba and Santa Fe. Then, in the 1940s and 1950s, there was a growth in consumption that led to the development of massive planting of
common varieties and the installation of fractionation plants. This new situation formed a model of massive winemaking, divided between winemakers and fractionators, that lasts until our days. Later, in 1959, the Wine Law (Nº14.878, in force to date) was passed, replacing the old law (Nº4.363 of 1904). The new law established severe penalties for adulterations and created the National Institute of Vitiviniculture (INV, for its Spanish acronym), responsible for the inspection, promotion, development and technical control of production, industry and wine trade throughout the country. In 1980, the Law on Trademarks (Nº22.362) was passed, amending Law Nº3.975, which in article 3, among other prohibitions, specifically prohibited those related to appellations of origin, which indicates that a product comes from a certain place and, for that reason, possesses special characteristics that other products of equal kind but of different origin do not possess. In order to avoid detriment to the consumers, the prohibition of its trademark registration was foreseen. In 1983, the Commercial Loyalty Law (Nº22.802) established guidelines for the identification of merchandise, including wine. Article 7 prohibited the use of national or foreign appellations of origin to identify fruits or products, if these do www.marcasur.com www.marcasur.com
OPINION not come from a certain place, and article 8 considered appellations of origin of general use, and consequently of free disposal, those that by their previous use have become the name or type of product. Finally, in 1999 Law Nº25.163 (currently in force and also known as the Law on Appellations of Origin in Vitiviniculture), established the general rules for the designation and presentation of wines and spirits of vinous origin, geographical and provenance indication, and controlled appellation of origin, which was regulated in 2004 through Decree Nº57/2004. According to the information provided by the National Institute of Vitiviniculture, the Argentine wine map is formed by the following regions: Northwest region: La Rioja, Catamarca and Salta, between 22 and 29 degrees south. Central-western region, also known as the Cuyo region: Mendoza and San Juan, between 29.5 and 36 degrees south. Southern region, also known as the Patagonian region: Río Negro, Neu-
quén and La Pampa, between 38 and 41 degrees south. Other regions: San Luis, Córdoba, Tucumán, Santiago del Estero and Buenos Aires. Source: National Institute of Vitiviniculture. Although the territorial extension is vast and there is a significant number of recognized geographical indications and other places with very good characteristics and aptitude for such recognition, it is surprising that there are only two controlled appellations of origin of wines1 in Argentina, since the regulation was created with the goal of promoting the development of this industry. For this reason, we are committed to helping grow this valuable legal instrument for the protection of products, especially in a country like Argentina, so rich in food and fruits of the earth.
Ricardo M. Gordó Llobell: Lawyer. IP Agent. PhD in IP, University of Buenos Aires. Managing Partner at Gordó Llobell & Associates, Buenos Aires. Member of the AAAPI (local associations, VP 2010 - 2013), ASIPI (currently National Delegate), AIPPI (Standing Committee of Geographical Indications since 2014), of LES and INTA. Graduate and post graduate university professor. Member of the Research Team of the Institute of Investigation of Comparative Argentine – French Law of the University del Salvador – School of Law – Buenos Aires – Argentina. Co-author for the publication “Geographical Indications of Wines and Spirits in Argentine Law”. “Intellectual Rights”, ASIPI, vol. 18, 2013. rmgll@gllobell.com.ar
LUJAN DE CUYO. Res C 15/2005 del INV y SAN RAFAEL. Res C 31/2007
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EVENT / VERA
On the occasion of INTA’s 2017 Annual Meeting in Barcelona, Spain, between May 20 and 24, the legal firms VERA ABOGADOS, Colombia; GRAN IP, United Kingdom and BUFETE OCAMPO, Mexico, organized on May 20th a cocktail party on the rooftop of the Yurbban Trafalgar Hotel, a charming boutique hotel in the district of Ciutat Vella. The wonderful city of Barcelona witnessed an unforgettable evening that brought together lawyers and representatives of several firms from various countries, with whom we spent a joyful moment.
To the rooftop with Vera
Jorge and Carolina Vera (Vera Abogados, Colombia). Father and daughter.
Hernán D’Urso and Laura Berti (Estudio Laura Berti), Carlos Garlhardi and Rafael Garutti (Vilage Brazil IP, Brazil). Matching.
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Leonardo Cordeiro and Andréa Possinhas (Gruenbaum, Possinhas & Teixeira Propriedade Intelectual, Brazil). Backdrop.
Juan Manuel Álvarez (Bosc), Lara Grant (Grant IP) and Carolina Vera ((Vera Abogados, Colombia). Chin chin!
The extraordinary view from the terrace of the hotel, with the historical district below and emblematic postcards of the Cathedral Basilica of Barcelona, the Palau de la Música Catalana, the Agbar Tower, the Cataluña Square and the Barcelona Zoo Park. This great panoramic view was accompanied by a bar with delicious drinks and a complete
Natalia Vera (Vera Abogados, Colombia) and Iran Cohen (Henkel & Cohen, E.U.A.). Pure sangria.
assortment of cheeses and Catalan cold cuts, which included fuets, espatecs, secallona and sumaia. The scenery, relaxing and energetic, not only allowed the assistants to meet and catch up on their legal tasks, but also to recharge their batteries for the intense academic days, meetings and networking.
View complete picture gallery of Vera cocktail party www.veraabogados.com JULY / SEPTEMBER 2 0 1 7
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M A R C A S news The Eagles sue ‘Hotel California’
The American band The Eagles filed a lawsuit for trademark infringement against the owners of Hotel California, an establishment located in the Mexican town, Todos Santos 75 km from Cabo San Lucas. The band claims that the hotel, which has that name since 2001 when a Canadian couple bought it, have falsely promoted in internet myths and legends linked to The Eagles and have taken economic advantage by organizing tours for their guests.
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Zara against Zaga
Gonzalo Sarmiento Arenas requested without success before the Superintendency of Industry and Commerce of Colombia (SIC) registration of trademark Z Zaga Industry, which was opposed by the Spanish textile Inditex on the grounds that it infringed its already registered trademark Zara. In its ruling the SIC argued that trademark Z Zaga Industry presents orthographic, phonetic and graphic similarities which may confuse the consumer with the Zara products of Inditex.
Maradona aims at Konami
In the 2017 edition of the video game Pro Evolution Soccer, the company Konami gives you the option to select former soccer players, among which you can find the Argentine Diego Armando Maradona. After learning about this characteristic of the game, Maradona announced on Facebook that he would sue Konami, since he never authorized them to use his image. In a statement, Konami replied that the Spanish club FC Barcelona (where Maradona played from 1982 to 1984), had transferred his image rights. But Maradona’s lawyer denied that possibility “since Maradona’s rights do not belong to FC Barcelona”.
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M A R C A S news Arturo Vidal, the king
In 2015 the company Asesorías Publicitarias Hueso Santo SPA received from the National Institute of Industrial Property of Chile (INAPI) registration of trademark King Arturo and a logo with the initials AV to use in mineral waters, soft drinks, isotonic and energetic beverages. The soccer player Arturo Vidal requested cancellation of the trademark, stating that King Arturo refers to his nickname Rey Arturo and that the AV logo is a copy of a tattoo that he has on his back with his initials. Although the company argued that King Arturo does not belong to Vidal and that his tattoo is a copy of a design that Vidal imitated, on May 17, INAPI cancelled both trademarks.
FIFA Spray
Heine Allemagne is a 46-yearold Brazilian who claims having invented the evanescent spray that soccer referees officially use since 2013 to delimit the field during incidents in a match. Allemagne sent a notification to FIFA, the confederations that form it and the International Football Association Board, demanding they stop using the product in all its competitions and claims economic compensation, since he patented the technology in 2010 before the National Institute of Industrial Property (INPI) of Brazil and FIFA never paid him for using it.
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Zip-line patent
Canadian entrepreneur Darren Hreniuk claims that in 1990 he invented the popular zipline adventure in the town of Monteverde, Costa Rica, which consists of sliding through the air attached to a cable. In October 1998, the Industrial Property Registry Office of Costa Rica granted the patent of invention for zip-line for a period of 20 years, but in 2014 it was removed due to third party actions before the Administrative Contentious Court. Now Hreniuk wants the patent to be returned. “It was amply confirmed in the judicial file that the necessary requirements for novelty, inventive level and industrial application were met,” his lawyer said.
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OPINION
E-sports: legal aspects to consider By Alexander E. García López Cambra La Duke & Co. Panama
competition, the event includes narration, commentary, images, replays, interviews, image rights of the competitors, team trademarks), mainly in favour of the issuer, who will be considered the producer of the audio-visual recording, along with its corresponding rights.
CONCLUSIONS
We can start with a business aspect, such as the fact that Riot (authors of the largest online game in the world, League of Legends), requested and achieved that, in the US, professional video players be classified as elite athletes when requesting work visas. With respect to the subject at hand, Intellectual Property plays a preponderant role. The company that develops videogames and their copyrights; and companies that broadcast and/ or rebroadcast competitions, must all ensure the audio-visual broadcasting and/ or recording rights are upheld. Hence, collective management entities will also be mindful of the protecting of their catalogues. We could make a long list of legal aspects closely related to intellectual property, but let us at least mention the most important ones: Videogames, the fundamental center of the competition, have technical and artistic elements that must be protected, based firstly and obviously on the fact that we are dealing with an 28 40
original work supported by media. Recently, public figures such as Diego Maradona, controversy included, are part of the variety of creative elements comprising videogames. We also must mention that when organizing the event, the rights of the game’s “Publisher” will be exploited, since it involves public communication and, why not? Also, public execution, on part of the players. We are thus faced with the need to provide a legal response to obtainment of licenses from the owner of the videogame, as well as payments to corresponding authors and interpreters, through the management entities. Most fans will follow the competition by means of a broadcast (television or online), where another company will be involved in the filming, live broadcasting and recording of the competitions. Whoever broadcasts the event must consider at least two scenarios: the negotiation of broadcasting rights over the videogame in question; and the audio-visual rights of the event. We will have public communication, as well as the provision and conversion of the broadcast. The Publisher shall also contemplate the issuance of licenses with respect to the audio-visual recording, resulting from the event (in addition to the game and
Undoubtedly, one of the main aspects for the development of E-Sports the entry of new competitors into the game, namely, sponsors. For them, it will be vitally important that the rules of the game (legally speaking) are appropriate. Scholars agree that the main issues to be considered are: athletes and players’ associations’ rights; bets; match fixing; use of internal and privileged information; salary caps; distribution of income between teams and players due to broadcast rights; doping; and the contractual framework of the employment relationship between players and their teams. Alexander E. García López, Attorney at Law, Panama, 1973. Bachelor of Law and Political Science, USMA. Postgraduate in Computer Law, UBA. Member of: Panama´s National Bar Association, INTA, ASIPI (Sports Law Committee), ALADDE (Latin American Sports Law Assoc.). agarcia@cambraladuke.com
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OPINION
Trade dress, industrial design and trademark protection for the get-up of products, services and packages in Brazil By Rodrigo Borges Carneiro Dannemann Siemsen Brazil
An original and distinctive get-up of a product or its packaging is an important differential used by companies to capture the attention of consumers. The combination of colors and its distribution on the packaging, the elements of the dĂŠcor of an establishment or a particular shape of the product or its packaging can contribute to the commercial success of a new product or service. Just like the marketing team can use several tools to create the best get-up for a product the legal department has many alternatives in Brazil to protect the resulting product configuration. The first line of defense is comprised by the rules against unfair competition found in international agreements, mainly the Paris Convention, as well in our Industrial Property law which have already being recognized by courts in Brazil to be applicable to cases where a distinctive overall presentation of a product has been copied by a competitor. Cases involving the distinctive trade dress of a chain of shoe stores, similar color combination and designs of labels of food products such as snacks and bottles of spirits have obtained positive decisions in courts recognizing that in view of i. the distinctive impression www.marcasur.com
resulting from the combination of different elements and ii. the similarities involved among the competing products there was a likelihood of undue association and misappropriation of the reputation of the original product or service. These cases always involve an analysis of the distinctive nature of the elements and a survey of the competition to address whether the elements in relation to which protection is sought are diluted on the market. A second tool used to strengthen the protection is to obtain a trademark registration for the get-up of the product or its packaging. Courts pay close attention to the existence of a certificate of trademark registration which by law grants exclusive rights to its owner. However, in going through this path, the legal department has to pay close attention to the guidelines of trademark examination of the Brazilian Trademark Office which contains several rules which should be considered. For example, the Brazilian Trademark Office accepts the filing of labels with distinctive elements such as combination of colors and distinctive word elements or designs but does not accept applications which may contain the same label within the confines of the design of a common packaging, say a common bottle even if the design of the bottle is disclaimed by the use of shadow or dotted lines. In relation to three- dimensional trademarks which represent a package or a container the Brazilian Trademark Office will limit the analysis of distinctiveness to the three- dimensional shape of the package and will not consider the designs and word elements which may
be included in the application. However, elements in relief on the surface such as drawings, patterns or textures, are subject to a a case-by-case analysis of their impact on the distinctiveness of the mark as they may have a significant effect and convey a distinctive character to the shape in question. The third option in the arsenal available to the legal department is to consider the possibility of filing an industrial design application for the product or packaging in question. An industrial design is considered to be any ornamental plastic form of an object (three- dimensional creations) or any ornamental arrangement of lines and colors that may be applied to a product (two- dimensional creations), that provides a new and original visual result in its external configuration, and that may serve as a type for industrial manufacture. The above options can be combined and should be used strategically to afford the best protection available to creative get-up of products and services in Brazil. Rodrigo Borges Carneiro: is a lawyer, industrial property agent and partner of the Dannemann Siemsen firm. Having graduated in Law from the Pontifical Catholic University in Rio de Janeiro and has a Master’s degree in Intellectual Property from the John Marshall Law School in Chicago in the United States. He also has a post-graduate degree in International Copyright Law from King’s College, London University, and in Company Law from the Pontifical Catholic University in Rio de Janeiro. rcarneiro@dannemann.com.br
MARCASUR DIGITAL 22 00 11 77 JULY / SEPTEMBER
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EVENt/ FERRAIUOLI
It is an expected tradition of the Annual Meeting of the International Trademark Association (INTA): the successful cocktail party that the Puerto Rican firm Ferraiuoli LLC always offers in some of the most beautiful places of the host city. This time the chosen site was the Alaire Terrace Bar, the rooftop of the Hotel Condes of Barcelona, a fantastic building of the 19th century located in the heart of Paseo de Gracia, one of the emblematic streets of the Catalan capital. The terrace of the eighth floor began to fill up from 7:00 pm to enjoy a dreamy sunset, with the last natural glints saying goodbye and welcoming the lighted modernist Barcelona.
Barcelona from above
Living Barcelona
Victor Rodríguez, Maristella Collazo, Eugenio Torres, Yolisamar Vázquez and Jean G. Vidal.
View complete picture gallery of Ferraiuoli cocktail party www.ferraiuoli.com Wallis Pons (AngelesPons, Dominican Republic), Eugenio Torres (Ferraiuoli, Puerto Rico) and María del Pilar López (Zurcher Lawyers, Costa Rica) 42
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Spring accompanied the evening with an ideal temperature so that the nearly 400 guests could delight themselves with the view of iconic places such as La Pedrera and Sagrada Familia, both by Gaudí, in an ideal way to rest after an intense first day of the Annual Meeting. The live jazz band enlivened even more the 180º landscape, but the main course (or rather, the main courses) was the food: artisan croquettes, breaded prawns, calamari, mini veal burgers, cheese and Catalan hams, sausages, coca bread with tomato, patatas bravas and dark chocolate tarts, among others. The tasting was complete and constant, filling the bellies and souls of a crowd who enjoyed every minute and stayed until very late at night taking in the night image of the city of Barcelona, all of which Ferraiuoli LLC made possible.
Eugenio Torres (Ferraiuoli, Puerto Rico), Edna López (Lexincorp, El Salvador), Luiz Baz (Elzaburu, Spain) and Maristella Collazo (Ferraiuoli, Puerto Rico). Hosts.
Juan Pittaluga (Marcasur, Uruguay), Eugenio Torres (Ferraiuoli, Puerto Rico) and Luis Baz (Elzaburu, Spain). Chatting.
Musicians. Sounds great! www.marcasur.com
Maricruz Villanea Villegas (Ideas Trademarks & Patents, Costa Rica), Ana Cristina Arroyave (Ideas Trademarks & Patents, Costa Rica), Rodrigo Velasco Alessandri (Alessandri Abogados, Chile), Jacqueline Moreau (Moreau González & Asociados, Venezuela), Ana Carolina González (Moreau González & Asociados, Venezuela). Fortunate! JULY / SEPTEMBER 2 0 1 7
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OPINION
But, this is my trademark
On returning trademarks to their true owners in Costa Rica
By Marianella Arias Chacón Divimark Abogados Costa Rica One of the most difficult circumstances in our professional practice is having to explain to a Client that their trademark cannot be registered in our country because it is already registered with full identity in all its aspects (graphic, phonetic and ideological) in the name of a third party. After the first reaction of surprise and indignation, the uncomfortable questions arise: How is this possible if the trademark is of our creation? How can it even protect the same products or services? How is this possible ... BUT, THIS IS MY TRADEMARK!!! We will not analyze malicious intent and possible malice of the owner who registers a trademark knowing that it does not belong to him; instead we will analyze the possible actions that are available to the legitimate owner to recover his trademark in Costa Rica. The Costa Rican Trademark Law provides solutions for these situations by means of nullity or cancellation proceedings of the spurious registration, depending on the specific case. However, for these actions to be successful we must overcome the most difficult aspect of satisfying the 44 50
requirements of our authorities: we must prove the legitimacy of ownership of the trademark claimed in Costa Rica with abundant and suitable evidence. The evidence that is provided in defense of the trademark must be “convincing and conclusive” in both quality and quantity. The Client must undergo the task of collecting clear and sufficient information about the age of its trademark and its history. We must demonstrate the extension of brand awareness at an international level and in their country of origin, positioning in the world market through their sales (a sensitive subject for many companies), advertising and brand promotion, among others. Any evidence that may be provided as the basis for your legitimate ownership claim must comply with all formalities such as apostille or legalization, and must be translated into Spanish. Perhaps the more difficult aspect to solve is that evidence must prove use in Costa Rica. If the client has not yet ventured into the local market. In an effort to make it easier for our Clients to recover their brand and overcome the stumbling block of the territorial test of use in our country, we have identified a solution that has given us positive results in concrete cases solved in favor of our Clients: the use of trademark on the Internet is accepted as evidence.
This is admitted if two circumstances are fulfilled: (i) that the company’s webpage and the trademark in question and its information are available in Spanish (official language of Costa Rica); and (ii) that there is a true purchase possibility via the Internet by the average and common Costa Rican citizen, who can make his purchase in full knowledge of the product or service he is acquiring and its cost in Costa Rican currency. The evidence we obtain from the Internet must be duly certified by a Costa Rican Notary Public and in this manner it becomes suitable evidence to demonstrate use in our country. This evidence, together with the aforementioned types of evidence prepared in the indicated conditions, can restore a trademark to its true owner. Although these proceedings can take up to 18 months to be solved, the proper preparation of the evidence, duly adjusted to the requirements of our laws, has allowed us to return trademarks to their legitimate owners in our country. In doing this, we are not only addressing null or tainted proceedings that granted illegitimate and spurious registrations, but we are also directing the country to the recognition of the rights legitimately acquired by the true trademark owners. Marianella Arias Chacón, Partner of Divimark Abogados, currently provides assistance and counseling in all fields of Intellectual Property, such as trademarks, commercial names, patents, copyrights and related rights, domain names, enforcement of IP rights and infringement and counterfeit goods. She has a noticeably successful track record in litigation. Founder and current President of the local association of professionals in Intellectual Property, APPICR 2016-2018. Current Senior National Delegate before the Administrative Council of ASIPI 2015-2018. marias@divimark.com
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AIPPI IN DEFENSE OF INTELLECTUAL PROPERTY MARCASUR interviewed Mr. Hao Ma, President of AIPPI, who from his offices in China refers to the situation and plans of the association, as well as to the evolution of his country in the field of intellectual property.
Hao Ma leading the organization from China 46
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Which are AIPPI’s immediate goals? Founded in 1897, AIPPI is a truly global association with 69 national and regional groups and over 9000 members from more than 125 countries and regions in Europe, the Americas, Asia, Oceania and much of Africa. The objective of AIPPI is to improve and promote the protection of intellectual property (IP) on both international and national bases. AIPPI has proudly made many great contributions, including the promotion of revisions of the Paris Convention (leading to enormous improvement in the protection of industrial property during the 20th century) and the establishment of the Trade Marks Law Treaty. On the basis of its 120-year history, AIPPI promotes the value of all types of intellectual property, supports international conventions and agreements for IP protection, comparatively studies national laws and fosters their harmonisation and improvement with its 700+ resolutions, educational programmes, professional development programmes, forums, congresses and seminars. AIPPI will identify and pursue targeted membership growth, with particular emphasis on the recruitment of young and in-house professionals. We want to continuously provide improved services to our members. AIPPI also aims to strongly support its National and Regional Groups (NRGs) and more actively strengthen the relationships with national, regional and international institutions What aspects will the association work on to improve performance? At the beginning of this year, AIPPI issued a Strategic Plan for 2017-2020. The overall objective of the Strategic Plan is to empower AIPPI’s individual members, www.marcasur.com
National and Regional Groups and Independent Members (IMs), and thereby AIPPI itself, to maintain and increase AIPPI’s prominence and influence in carrying out its objectives. Some highlighted objectives of the Strategic Plan include the following: 1. The Annual Work Programme of Study Questions and the Professional Development Programme at Congresses will be maintained while continuously aiming for improved quality and impact. AIPPI will continue to promote increased activity of its Standing Committees by encouraging participation from all NRGs and IMs and by providing additional tools to enhance communication and collaboration. 2. More member and NRG/IM services and information will be provided through the centralized leadership and administration. 3. AIPPI will identify and pursue targeted membership growth, with particular emphasis on the recruitment of young members and in-house members. 4. Coordinated strategies and tools will be provided for the effective use of popularly accepted and evolving forms of contemporary communication. 5. AIPPI will further build and consolidate its relationships with IGOs, GOs, IPOs, NGOs and business organizations. AIPPI will drive greater advocacy in support of its 700+ Resolutions. 6. AIPPI Congresses will provide as satisfying a meeting experience as possible for as many people as possible. AIPPI will become more involved in assisting NRGs and IMs with national and regional meetings.
It is our sincere hope to provide a roadmap for the development of our Association and to take significant strides towards fulfilling our goals relating to the improvement and promotion of the protection of IP on both international and national bases. What are your projections on intellectual property in the world for the next five years? Firstly, with the application of information technology, big data and artificial intelligence, the quality and efficiency of the PCT system will be further improved and the PCT as an international filing route will continue to grow. Also, IP offices will provide faster, more efficient and sophisticated services covering not only high quality examinations and patent searches, but also patent dossier management and sharing, patent information analysis, high quality patent translation and much more. Secondly, the cooperation among IP offices including the IP5 will be further strengthened, harmonisation of procedural and substantial aspects in obtaining patent rights will be further studied and pushed forward, backlogs will be substantially reduced, and more worksharing mechanisms among patent offices on patent examination and patent quality will be established to improve efficiency. Thirdly, there is still a need to further raise awareness of the positive role of IP as a tool for innovation and sustainable economic development worldwide and to promote efficient patent systems that incentivize investment in creation and innovation. Fourthly, some ongoing discussions on hot topics and harmonisation in certain areas continue to exist, including business needs with respect to requirements for JULY / SEPTEMBER 2 0 1 7
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design protection for Graphical User Interfaces around the world, best practices for dealing with utility models, valuation and monetization of patent assets, patentability of computer implemented inventions and quantification of monetary relief in relation to the infringement of patent rights. Lastly, new technology may bring furious challenges to IP law firms and IP lawyers in the not too distant future. The manner of providing legal services will change greatly and a higher service standard will be established. What would you advise intellectual property lawyers for the future? (practical tips) Firstly, keeping candor and integrity are still essential for IP lawyers. Providing candid assessment of legal issues will gain the trust from clients also in the future.
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“Studying new technologies and utilizing them in day-to-day work will become vital to future IP lawyers” Secondly, increasing the ability of providing high quality work products and improving communication skills remain very important for IP lawyers. Thirdly, with the rapid development of information technology, big data and artificial intelligence and their implementation in many related areas, IP lawyers will face higher demand, pressure and challenge to increase efficiency, reduce cost and enhance quality. Studying new technologies and utilizing them in dayto-day work will become vital to future IP lawyers.M
“The manner of providing legal services will change greatly and a higher service standard will be established”
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EVENTS / DUMONT
Dumont Bergman Bider & Co. team
Dumont history and innovation Cecilia Fernández Wagener (Brands & Law, Paraguay) and Armando Pinto, (Dumont Bergman Bider & Co., Mexico). Saying goodbye to the sun.
The Hospital of Santa Creu and Sant Pau, located in the neighborhood El Raval, was founded in 1401 and is one of the patrimonies of Barcelona. A construction of the Gothic civil architecture, in charge of Lluís Domènech i Montaner, was remodeled and today has become a renowned knowledge, cultural and exhibition center named Recinto Modernista de Sant Pau. Carlos González (Abril Abogados, Spain), Salvador Díaz Paredes (Abril Abogados, Spain) and Christian Thomae (Dumont Bergman Bider & Co., Mexico)
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Ana Carolina González (Moreau González & Asociados, Venezuela), Jacqueline Moreau (Moreau González & Asociados, Venezuela), Laura Collada, (Dumont Bergman Bider & Co, Mexico), Ana Cristina Arroyave (Ideas Trademarks & Patents, Costa Rica), Maricruz Villanea Villegas (Ideas Trademarks & Patents, Costa Rica), Maria del Pilar Troncoso (Troncoso Leroux, Dominican Republic) and Michele Katz (ADVITAM IP®, Chicago, E.U.A). Women power!
It is a must-stop for tourists visiting the city, especially for architecture lovers, and Dumont’s clients and friends had the pleasure of having this place exclusively for themselves in the spring sunset: the Mexican firm organized i ts p arty there during INTA 139th Annual Meeting (International Trademark Association). The last rays of sun were accompanied with varied Spanish wines, goat, tupí and serrat cheeses, exquisite sweet and sour tapas and instrumental music with a live band completing a luxury event, which connected tradition and modernism and allowed the attendees to relax after the second exhausting day of INTA. As if all this was not enough, Dumont dismissed the guests, faithful to their style, with an original gift that surprised even the most imperturbable: virtual reality lenses that nobody wanted to lose the chance of receiving one and which they took with a smile in their faces and well protected in their bags. Congratulations to all the members of Dumont, who have set the bar very high to surpass next year in Seattle.
Luis Guinard and Vanessa Noriega (Guinard & Noriega, Panama)
View complete picture gallery of Dumont cocktail party www.dumont.mx www.marcasur.com
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Excelência em Propriedade Intelectual [Excellence in IP]
IP SPECIALISTS
Desafios são superados com estratégia, IN BRAZIL determinação e inteligência. Somente um qualificado time de especialistas e um escritório premiado são capazes deovercomed encontrar soluções Challenges are with diferenciadas para os seus clientes. strategy, determination and intelligence. Only a qualified team of professionals
Visite o nosso site e conheça mais sobre nossas and an award-winning firm are able to áreas de find atuação e referências em the best solutions for your business. www.montaury.com.br. [See more in www.montaury.com.br]
Rio de Janeiro
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São Paulo (branch)
montaury@montaury.com.br www.montaury.com.br
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BRASIL
OPINION
Legal Advice for “Multilatinas”? Press the Mixer Button for a Custom Recipe! By Felipe Claro Claro & Cia Chile
The term “Multilatina” is used to refer to a big company with a strong international presence, and Latin-America origins and capital. It is confusing to speak about “Multi” Latin companies. Even if they are multinational, do we speak of “Multieuropean” or “Multiasian” companies? Perhaps, after Brexit, the limits on the TPP and the construction of “The Wall” we may start speaking this way! The prefix “multi” denotes a much deeper concern, namely, the lack of unity in politics, culture, interests and common purpose of the Continent. This has affected the business environment and has stopped the region from advancing economically. The Latin-American forces need to be aligned and pointing to the same direction to produce a positive result. We must all move in a common direction, instead of erasing and rewinding every step we make, as it is usually the case. The region has Latin as a common root. Latin was superseded by the Romanic languages (in this case: Spanish, Portuguese, French and Italian). Unfortunately, many things have happened over the centuries that have torn us 12 www.marcasur.com
sufficiently apart from each other to be perfect strangers or, at least, not wanting to go on together or build our dreams together due to suspicious minds. When we gather our regional leaders, grand visions do not emerge as they mainly look to protect their national interests. They hardly agree on the basics and don’t see the multi-Latin American Region as one single body where every country is an important member with a specific role. An apparent harmonized, friendly and easy to operate region has become a nightmare to many companies that dare to cross the borders to expand their businesses. The phenomenon of fast growing LatinAmerican companies expanding beyond their national borders, started in Chile (with companies like Cencosud, Latam, Falabella) and in Mexico (Mexichem, Cemex). The approach that many of these companies have taken, and the economic influence they have had, has helped to harmonize and stabilize a region that urgently needs multi-national pragmatic integration. Companies like Mercadolibre have gone a step further and no longer emphasize their nationality. These companies are also entering into other markets beyond the Americas and they are looking not only at their Romanic European roots but have become true “Mundi”-Latinas acting all over the world. The success of these Mundilatinas has been supported by taking a big picture approach to their legal issues. In this region solid legal advice is crucial to support the
businessperson - to translate Spanish into Spanish or to show what is floating in the air but not seen by the naked eye. When you need to protect your investment in countries where patents are granted after expiration; 3D trademarks are partially recognized; a mirror copyright deposit is needed; data privacy issues are databreaches or free-speeches AND license agreements must comply with special drafting requirements, THEN you are best to use a multi-faceted firm aware of regional differences. Latin-America, as a single body depicted below as the “Talking Duckling of the Americas”, is waking up and has important things and innovations to offer global consumers and business world. We must work to overcome the complicated obstacles that are in the way. The process may be slow, but the goal is nearer when the journey to conquer different jurisdictions is paved by qualified local advisors. Stay tuned! Felipe Claro is the Head of the IP Section of the top tier full service law firm Claro & Cia. His team, together with their colleagues in the firm’s other departments provide full legal support for even the most complex matters. He was President of AIPPI and is recognized as a leading lawyer by international publications. He acts as an adviser to many domestic and multinational companies marketing their brands and inventions in Chile, with a particular interest in new technologies. felipe@claro.cl www.marcasur.com JULY / SEPTEMBER 2 0 1 7 53
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INTA 139 Annual Meeting
th
Between May 21 and 24 over ten thousand professionals attended INTA’s Annual Meeting in Barcelona
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MEETING / BARCELONA
Montserrat Puente (Zacarías & Fernández, Paraguay), Andrea Soldani (Obligado & Cia. Lda., Argentina), Hugo Esteves (Jones & Co., Uruguay), Carolina Lacaze (Obligado & Cia., Argentina), Ana Garcia (Zacarías & Fernández, Paraguay). To the beach!
Karina Carmona (David Do Nascimento, Brazil), Adolfo López (Ayala & López Abogados, Venezuela). Laughs!
Between May 21 and 24 over ten thousand professionals attended INTA’s Annual Meeting in Barcelona This year, the largest number of attendees in INTA’s history was recorded: 10,667 people from 157 countries. Of the total, 1,256 were from Latin America. The event stood out for its academic and social aspects, networking and exhibitors. The academic topics were covered by Marcasur journalists, who transmitted the main issues daily through Marcasur’s app. Networking continues to grow at the INTA event year after year and for many, this has become the reason for attending. If it is estimated that 70% of the attendees had at least two meetings, it sums up to 14,000 meetings in four days. It was a bit complicated for those who had to meet downtown or at the Convention 56
Carlos Salazar (Calderon y de la Sierra y Cia. S.C., México), Rodrigo González (Baudelio & Cia, México). Gentlemen to the attack! www.marcasur.com
With lots of light! Carolina Martínez and Francisco Espinosa (Espinosa Bellido Abogados, Peru) together with Gloria Isla (Isla del Campo, Mexico)
Center, since it took minimum 45 minutes by taxi or subway to get from one place to another. However, they succeeded. Large intellectual property service providers were present. With some exceptions, booths did not amaze with their settings, as many had done in Orlando, USA. This was an event that INTA and Barcelona passed… and with a high grade! Authorities in Barcelona In line with the objective of seeking exchanges of experiences, INTA invited to the event the authorities of the different intellectual property national offices. Representing Latin America, Marcasur interviewed Dámaso Pardo (President
Mónica Wolf (Wolf Méndez Abogados Asociados, Colombia), Viviana Erejomovich (Atilano Fernández Estudio, Argentina)
Yolianna Arosemena (Benedetti & Benedetti, Panama), Alida Benedetti (Benedetti & Benedetti, Panama), Ana Isabel Cáceres (Troncoso y Caceres, Dominican Republic)
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of the National Institute of Industrial Property of Argentina), Maximiliano Santa Cruz (Director of the National Institute of Industrial Property of Chile), José Luis Londoño (Deputy Superintendent of the Superintendency of Industry and Commerce of Colombia) and Miguel Angel Margáin (General Director of the Mexican Institute of Industrial Property). INTA invited the authorities to meet with each other. To that effect, it only offered the physical space, since there was no agenda or issues proposed by the Association. The invitation was essentially made so that they could talk freely, with no public present. In this regard, the directors interviewed by Marcasur believed that this was a great opportunity for exchanging experiences.M
Pencil and paper The academic agenda of the Annual Meeting of the International Trademark Association (INTA) is always rich and varied. Since it is impossible for the participants to attend the great amount of conferences, this is a summary of the best presentations that Marcasur attended. «dotBrand and You: Should You Apply in Round Two?» analyzed the new program for the assignment of more generic top-level domains (gTLDs) of the Internet Corporation for Assigned Names and Numbers (ICANN). According to experts, the first round of assignments did not work as expected for domains known as dotbrands, which carry the name of a brand. Currently the number of dotbrands is low because many companies still do not understand the importance of registering their brands as gTLD: it prevents criminals from registering them and, therefore, avoiding criminal activities such as counterfeit. In the long term, it boils down to greater consumer confidence in our brand. Having a registered gTLD brand allows companies to offer a better consumer experience, greater security and a better platform to innovate. «Wine, Women, Song… and a Cigarette: The Perils of International Advertising»” promised a lot of entertainment and it was accomplished. Through advertising spots, speakers described claims, social demands and legislations that address feminism, racism, misleading advertising, comparative advertising and parody, among other issues. They also mentioned the “disastrous results” of generic packaging for Australian trademarks and warned the alcohol and sweetened foods industries of future restrictive measures of the same type.
COUNTRIES WITH MORE ATTENDEES
United States
2.368
United Kingdom
661
Germany
615
China
600
France
367
FROM THE REGION, THE COUNTRIES WITH MORE ATTENDEES:
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Mexico
222
Brazil
217
Argentina
128
Chile
70
Colombia
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«Fashion. What’s in a Name? Designers’ Names as Marks» had the most original proposal: a mock scenario was used in this panel where it was debated from a fantasy case of a designer named Johnny Bello, who wants to launch a clothing brand with his name, like Carolina Herrera and Giorgio Armani. If he wants the brand to be highly known, the name will no longer belong to him but to the company. So, if Johnny Bello decides to abandon the company, can he register his name again as a registered trademark? This is one of the many questions that were answered. «Potential Liability of Intermediaries in the Real World» had representatives from two multinationals and an international intellectual property consultancy to discuss the responsibility of the intermediaries in counterfeiting and piracy crimes, focused on shipping companies. Although “a lot of ground remains to be covered” efforts are being made by the shipping industry to help decrease cargos of fake merchandise transported by shipping companies; among them, awareness campaigns, track & trace, better screening mechanisms of containers and increase coordination with infringed trademarks and the governments. «The Trademark Attorney’s Second Job: Spotting Key (Non-IP) Issues in Social Media» was the most up-to-date panel because it focused on a trendy topic yet to be mastered by trademark owners: the influencers. It was explained how lawyers should act when a trademark is promoted in social networks, how to protect it the best way possible, among other things, reminding to use hashtags «very clear» and «at the beginning of a post».
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Juan Carlos Torres (Buritica Abogados SAS, Colombia) and Adriana do Valle Garotti (David Do Nascimento, Brazil)
Friends and colleagues. Pepe Isern (Isern Patentes y Marcas, Spain), Jorge Chavarro (Cavelier Abogados, Colombia) and Javier Isern (Isern Patentes y Marcas, Spain)
Ricardo Rojas-Gaona (Rojas Gaona & Bandres, Venezuela) and Luis Arevalo (Rojas Gaona & Bandres, Venezuela). Backdrop. www.marcasur.com
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Johana Aguirre Guerrero (Julio C. Guerrero B., Ecuador), María José Suárez (Julio C. Guerrero B., Ecuador), Juan Pittaluga (Marcasur, Uruguay). Interviewed.
María Milagros Nebreda (Hoet Peláez Castillo & Duque, Venezuela), Milagro Chaves (Facio & Cañas, Costa Rica)
Carol Durling (Arias, Fábrega & Fábrega, Panama), Manuel Alfredo Polanco (Bolet & Terrero, Venezuela). Polka-dots. 60
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Hernan Ríos (HGF Limited, England), Ricardo Mejía (Bufete Mejía & Asociados, Honduras), Juli Gutierrez Zanelli (Muñiz, Ramirez Perez-Taiman & Olaya Abogados, Peru), Maria del Pilar Troncoso (Troncoso Leroux, Dominican Republic), Javier Isern (Isern Patentes y Marcas, Spain), José Luis Rodríguez(Isern Patentes y Marcas, Spain), Felipe Claro (Claro y Cia., Chile)
Latin American firm with greater presence in INTA Barcelona:
Arochi & Lindner S. C., Mexico Dannemann Siemsen, Brazil Marval, O’Farrell & Mairal, Argentina Carey Abogados, Chile OlarteMoure, Colombia
Martin Michaus (Basham, Ringe & Correa, Mexico), Cinzia Petruzzello (AIPPI, Switzerland). www.marcasur.com
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Claudia Zeraik, Ana Paula Brito, Luiz Edgard Montaury Pimenta, Joana Siqueira, Clarissa Jaegger (Montaury Pimenta Machado & Vieira de Mello, Brazil). A unique firm.
Ignacio MartĂnez Cornejo (Aguayo, Ecclefield & Martinez, Chile), Mauro Tovorovsky (Vitale Manoff & Feilbogen, Argentina), AndrĂŠs Felipe Zapata (Atoz Legal Consulting, Colombia)
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Est. 1.944
De Sola Pate & Brown is a law firm based in Caracas,Venezuela originally established in 1944. Our practice is broad-ranging, from all aspects of patent, trademark, and copyright law and litigation, to advice on domain names, security interests in intellectual property, licensing, franchising and related aspects of commercial law.
Our comprehensive knowledge of the Venezuelan intellectual property laws, our moderate size that facilitates personalized service and close attorney-client relationships, and our dedication to client service has kept us as VenezuelaÕs leading intellectual property law firm. Our firm has contributed over a dozen scholarly articles on all topics of Venezuelan Intellectual Property to the leading International IP Journals. Our attorneys are being recognized by various publications that rank intellectual property practices, such as Chambers and Managing Intellectual Property. Partners: Irene De Sola Lander and Richard N. Brown E-mail contact: irene@desolapate.com and/or rbrown@desolapate.com Website: www.desolapate.com Torre Domus, 16th Floor Av. Abraham Lincoln, Sabana Grande Caracas, Venezuela 1050-A
Telephone: +58-212-793-9898 Fax: +58-212-793-9043 U.S. Mailing Address: M-22, c/o Jet International P.O. Box 020010 Miami, FL 33102-0010 www.marcasur.com
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YOUR GATE TO LATIN AMERICAN IP
Marcasur International supplies essential, updated and trustworthy IP news from all over Latin America. Its newsletter is published by the most prestigious law firms of the region.
EL SALVADOR
ARGENTINA
PERU
Central America IP Offices sign agreement for IP development
Argentine music legend accuses Bruno Mars of plagiarism
Peru simplifies procedures and reduces costs for obtaining trademarks and patents
The agreement focuses on the promotion of copyright and creative industries through training programs, projects and the exchange of knowledge and experience.
Through the recently launched Electronic Gazette of Industrial Property, a trademark could be obtained in a worldwide record time of 45 working days. Read more
Argentine musician and producer Charly García accused American singer and songwriter Bruno Mars of plagiarizing one of his songs for the global hit “Uptown Funk” Read more Estudio Chaloupka
Espinosa Bellido Abogados
HONDURAS
COLOMBIA
NICARAGUA
With 250 brands, Honduras tobacco industry expands worldwide
Veleño guava jelly obtains Appellation of Origin
A Country Brand for cacao
Read more Portal & Asociados
Honduras has 250 tobacco brands with which it annually produces more than 100 million cigars that are exported to Asia, the United States and Europe. Read more Bufete Mejía
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The famous confectionery is the 27th Colombian product to receive the protection from the Superintendency of Industry and Commerce. Read more Vera Abogados Asociados
Government, businessmen and producers seek to increase exports and consolidate Nicaragua as a worldwide producer of quality cacao. Read more Guy José Bendaña-Guerrero & Asociados
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CHILE
GUATEMALA
BOLIVIA
Chile leads Global Innovation Index 2017
Changes in Trademark Law coming to Guatemala
New Legal framework will protect knowledge of indigenous peoples
Read more Aguayo, Ecclefield & Martínez (AEM Law Firm)
The Republic of Guatemala acceded to the Trademark Law Treaty, which entered into force, with respect to Guatemala, on December 12, 2016. Read more Mayora IP
The Bolivian Congress is working on a new legal framework that better protects Intellectual Property in the country, including the defense of the knowledge of indigenous people. Read more Orpan
PUERTO RICO
MEXICO
PANAMA
The unconstitutionality of prohibiting Disparaging Trademarks
Aguascalientes producers look for Mezcal Appellation of Origin
Medical Devices
Once again Chile is positioned as the most innovative country in Latin America and the Caribbean, according to a report by the World Intellectual Property Office (WIPO).
On June 19, 2017, the Supreme Court of the United States held that the Lanham Act’s disparagement clause is unconstitutional under the First Amendment’s Free Speech Clause. Read more Ferraiuoli LLC
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Mezcal producers from the State of Aguascalientes have begun procedures to extend the Appellation of Origin of the product. Read more Becerril, Coca & Becerril, S.C.
Up to this date it is not required in Panama to obtain market authorization (sanitary registration) for medical devices to be imported and commercialized. Read more Alfaro, Ferrer & Ramírez (AFRA)
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EVENTS // BECERRIL
Becerril’s fortress
Luis Pavel Garcia (Costinica & Asociados, Mexico), Felipe Samaniego (Corral Rosales, Ecuador), Gonzalo Menéndez (Lexincorp, Guatemala), Laisha Mubarak (Philippi Prietocarrizosa Ferro Du & Uría, Peru), Gustavo Noyola (Central Law, Guatemala), Alejandro Linares Villegas (Jorge Mera & Villega, Dominican Republic), Juan Puga (Puga IP, Chile). Lined up.
Renata Righetti (Bugnion, Italy) and Fernando Becerril (BC&B, Mexico). Guest and host. Caroline Casseli (Casseli Law Firm, Paraguay), Wallis Pons (AngelesPons, Dominican Republic), Magali García (García & Allende, Peru) and María del Pilar López (Zurcher Lawyers, Costa Rica). With a smile on their faces.
View complete picture gallery of Becerril cocktail party www.bcb.com.mx
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Carmen Prieto (Jorge Mera & Villega, Dominican Republic), Edy Portal (Portal & Asociados, El Salvador) and Alejandra Valdez (Valdez Albizu, Abogados, Dominican Republic)
Sergio Jiménez (Jiménez & Pacheco, Costa Rica), María Vargas-Uribe (Victor VargasValenzuela Law Office, Costa Rica), Viviana Méndez (Jiménez & Pacheco, Costa Rica), Alejandro Pacheco (Jiménez & Pacheco, Costa Rica). Say cheese!
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The former military fortress located in the Montjuic Mountain is one of the symbols of Catalonia. Located at 185 meters above sea level, it allows an entire view of Barcelona, with the huge port to the south and the rest of the city to the north. The place calls for hosting an event that takes your breath away, and that is exactly what the Mexican firm Becerril, Coca & Becerril, S. C. achieved with its cocktail during the 139th Annual Meeting of the International Trademark Association (INTA). The castle was dressed for the occasion, with the recognizable blue color in a special combination of lights reflecting the logo of the firm on all the walls and soldiers in Renaissance armor walking through the building delighting the guests. That environment and the formidable landscapes of Montjuic, dazzled the hundreds of attendees who stopped at every spot on the way in to take a picture. They even had the opportunity to amusedly have their pictures taken by a photo booth installed at the reception. And for those romantic couples, they were allowed to go up to the roof of the castle which was less illuminated and enjoy a wider view of the Catalan capital. With so much organization, the evening continued until after midnight: live music, a video montage with the members of the firm, ten food stations and an assorted bar with drinks located in the middle allowed attendees and friends enjoy a great night that, as all the other nights during the Annual Meeting, was accompanied by warm weather. JULY / SEPTEMBER 2 0 1 7
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INTELLECTUAL PROPERTY LAW OFFICE ECUADOR
PIONEERS AND INNOVATORS SINCE 1919 Julio C. Guerrero B. Are Masters In Intellectual Property And Trademarks. We Have More Than 98 Years Of Experience In The Ecuadorian And International Market. We Work With The Most Demanding Ethical And Professional Standards For The Protection Of Intellectual Rights In Ecuador And The World.
w w w . j u l i o c g u e r r e r o b . c o m email: jcgb@juliocguerrerob.com - PBX: (593 2) 323 8008 www.marcasur.com Address: Mariano Aguilera E7-262 and Ave. Diego de Almagro, Edificio Doctorados FLACSO 2nd floor - Quito, Ecuador 68
JACQUELINE MOREAU
ISABEL MANRIQUE
ANA CAROLINA GONZร LEZ
MGA CELEBRATES ITS 5TH ANNIVERSARY Moreau Gonzalez & Associates (MGA) founded by Jacqueline Moreau Aymard and Ana Carolina Gonzรกlez, reaches its fifth anniversary on the 23rd of January 2017 and wishes to celebrate it with all of its clients, allies and Intellectual Property friends through Marcasur.
These awards ratify the passion, commitment, motivation and enthusiasm that the whole MGA team feels for work and for its country.
Venezuelan law firm MGA has been consolidating its position in the national and international market, achieving and maintaining its position in the most prestigious international legal publications such as Chambers Latin America, The Legal 500, The Best Lawyers, World Trademark Review and Leading Lawyers IP.
Moreau, Gonzalez & Associates specializes in Intellectual Property practice, Administrative Law- Economic Regulatory and Corporate Law.
www.moreaugonzalez.com.ve
MGA appreciates the trust and support received from its clients and allies during these first five years.
/moreaugonzalez @moreaugonzalez
info@moreaugonzalez.com.ve
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