FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nº 69 APRIL-JUNE 2018
FIFA: Our Main Goal Is To Educate Interview to Daniel Zohny, Head of Intellectual Property of the Fédération Internationale de Football Association (FIFA) ASIPI in the city of the orchids Latinstatistics: the time frame of the offices of Latin America for trademark and patent applications
THIS EDITION IS SUPPORTED BY:
CONTENT
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Interview. Daniel Zohny, Head of IP of FIFA
6.
Editorial and staff
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Latinstatistics. Patience!...We must wait. Time frame of the offices of the region for granting or denying trademark and patent applications.
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Marcasur reports
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Interview. Daniel Zohny, Head of Intellectual Property of the Fédération Internationale de Football Association (FIFA).
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Events. Cocktail Brigard & Castro.
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Event ASIPI in Bogota. IP in the city of the orchids.
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Interview. José Luis Londoño, INTA's new Chief Representative officer for Latin America and the Caribbean.
32.
Event AMPPI in Mexico
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Event ASIPI in Bogota IP in the city of the orchids
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staff
Director and Editor-in-chief: Juan Pittaluga juan@marcasur.com Editor: Fabiana Culshaw fculshaw@marcasur.com
EDITORIAL
Digital Media Department: Juan Francisco Pittaluga francisco@marcasur.com Commercial Department: Mei-lin Che mche@marcasur.com Social Media Manager: Federica Reyes freyes@marcasur.com Director of new contents: Karina Gonzรกlez kgonzalez@marcasur.com Communications: Claudia Azambulla czambulla@marcasur.com Digital Media Design: Natalia Domingo ndomingo@marcasur.com
MARCASUR has been published on paper and in a digital format for more than 20 years and covers all the IP information of Latin America, as well as the social and professional events that are related to the profession. We are leaders in legal communication and IP in Latin America. We also publish digitally MARCASUR INTERNATIONAL twice a month in English and, with the four magazines that are published in Spanish, we prepare four special and summarized English digital editions. M
Contributors: Daniel Lamas dlamas@lamasgrimaldi.com.uy Teresa Pereira tere@marcasur.com Victoria Pereira victoria@pereiramarketing.com
Juan Antonio Pittaluga Fundador y editor de marcasur
Graphic Design: LP / arte visual Correction: Alejandro Coto Printing: Grรกfica Mosca
MARCASUR Number 69 2018 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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LATINSTATISTICS
Patience! We must wait… THE TIME FRAME OF THE OFFICES OF THE REGION FOR GRANTING OR DENYING TRADEMARK AND PATENT APPLICATIONS HAVE SLIGHTLY IMPROVED IN RELATION TO 5 YEARS AGO, WITH A FEW EXCEPTIONS. REGARDING TRADEMARKS WITHOUT OPPOSITION, CHILE AND PERU TAKE THE LEAD.
Trademark and Patent applicants from different countries of Latin America complain about the time they must wait to receive a resolution. It is well known that many trademark and patent offices are making great efforts to combat the backlog that overwhelms them and have even changed their systems and procedures to achieve faster results. However, the goal is difficult to achieve. Latinstatistics consulted law firms of the region to learn about their experiences and how this issue is www.marcasur.com
presented and the progress in their respective countries. The study was based on a survey sent between February and March this year, supplemented with qualitative interviews in some cases. Other sources of information of this department were added. It is important to mention that the conclusions of this report on the time frames are based on estimated averages but give a quite thorough idea of what is happening in the region.
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Average resolution time frame of trademark applications without opposition Country Chile Peru Costa Rica Honduras Mexico Colombia Ecuador El Salvador Guatemala Argentina Nicaragua Panama Venezuela Paraguay Puerto Rico Cuba Brazil Uruguay
2013 7 mont hs 6 mont hs 6 mont hs 6 mont hs 4 to 10 months 6 to 8 months 8 mont hs 6 to 7 months 8 mont hs 12 months 12 to 14 months 10 months 8 to 12 months 9 to 12 months No data 1 to 2 years 3 years 8 to 9 months
2017 2 to 4 mont hs 2 to 4 mont hs 4 to 6 mont hs 4 to 6 mont hs 6 to 10 months 6 to 10 months 6 to 10 months 6 to 10 months 6 to 10 months 10 to 14 months 10 to 14 months 10 to 14 months 10 to 24 months 14 to 18 months 18 months to 2 years 18 months to 2 years 2 years 2 years
Average resolution time frame of trademark applications with opposition
Country
2013
2018
Cuba
2 years
2 to 36 mont hs
El Salvador
12 months
6 to 10 mont hs
Honduras
7 to 8 months
6 to 10 mont hs
Chile
12 months
6 to 12 mont hs
Mexico
4 to 10 mont hs
6 to 12 mont hs
Peru
11 to 13 months
6 to 12 mont hs
Costa Rica
12 to 15 months
6 to 12 mont hs
Ecuador
18 months
13 to 18 months
Colombia
8 to 12 mont hs
13 to 18 months
Panama
12 months
18 months
Guatemala
12 to 18 months
19 to 24 months
Paraguay
12 to 24 months
1 to 2 years
Nicaragua
24 to 48 months
2 years (1)
Uruguay
20 to 21 months
3 years
Brazil
4 to 6 months
4 years
Argentina
12 to 14 months
No data (2)
Puerto Rico
No data
No data (3)
Venezuela
3 to 10 years
No data (4)
(1) In some cases, the period for s ubmitting a resolution of an opposition takes more than 40 months. (2) Recently the opposition system in Ar gentina has been modified. (3) The cases vary a lot, so the sources did not provide averages. (4) Difficult to specify due to the current crisis in Venezuela and its institutions .
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Resolution of Trademarks without opposition One of the main results of the study is that Chile and Peru share the first place in terms of time frames of resolution of trademarks without opposition, both to grant and to deny. The procedure in these offices take an average of between two and four months, according to the law firms consulted. Costa Rica and Honduras follow them, with an average of between four and six months, much faster than in most countries. At the end of the ranking we can find Puerto Rico, Cuba, Brazil and Uruguay, where the corresponding procedures reach or exceed, in many cases, the year and a half. It is important to point out that in Brazil, although the time frame of a resolution of a trademark without opposition is generally two years, it represents an improvement in respect to 2013, when it took about three years. On the other hand, Uruguay has fallen back in this indicator, given that in 2013 the procedure took nine months while it now takes two years. In relation to five years ago, most of the countries have slightly improved their time frames or have remained in approximate parameters, except Uruguay, as well as Venezuela, since the crisis in the Caribbean country is affecting all its indicators. Resolution of Trademarks with opposition In cases of trademark applications with opposition, the delays for granting resolutions are considerable. The quickest time frame in the region to grant a resolution would be between 6 months and a year, but most of the cases take between one and two years. The countries with more delay are Uruguay and Brazil, taking between three and four years to grant a trademark with opposition, respectively. Argentina is a special case, given that the opposition system has recently been modified. A trademark owner that has received an opposition no longer has a year - from the date of notification - to negotiate a possible withdrawal of the opposition with the opposing party, but only has three months. In case of failure to obtain such withdrawal within that
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period, the opposition will be resolved by the Trademark Office. Because this modification is very new, it is not possible to estimate the time the Trademark Office takes to resolve an opposition and subsequently issue a resolution to the trademark application. In Venezuela, the Autonomous Intellectual Property Service (SAPI) has a great backlog in issuing decisions, due to the change of authorities and the low number of personnel in the organization. Fees and more On average, the fees for filing a trademark application in one class is around USD 145 in the region. For this calculation, Latinstatistics did not include the values ​of Venezuela, since it generates distortion in the averages. In this country, due to exchange controls, the fees were paid in Bolivars until the Autonomous Intellectual Property Service reported that as of May 2015, "foreigners who wish to carry out procedures regarding commercial trademarks in the country must pay in dollars . This includes various procedures, including patents, as well as patent annuities and fines. Paraguay, Costa Rica and Chile are among the countries with the lowest rates, while rates in Uruguay, Cuba and Colombia are the highest. Then there is the atypical case of Venezuela, where, to date, USD 1950 is paid.
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Fees for filing a trademark application in one class
Country Paraguay CostaRica Chile Honduras Argentina Guatemala Nicaragua Panama Nicaragua Puerto Rico Peru Ecuador Uruguay Cuba Colombia Venezuela
2018 USD28 USD50(1) USD78 USD80a200(2) USD85 USD125 USD140 USD140 USD140 USD150(3) USD165 USD208 USD216 USD300(4) USD350 USD1950
Other regions and countries Average resolution time of trademark applications without opposition
Region or country European Union United States Hong Kong Singapore Japan Korea Thailand Malaysia Indonesia
Time frame 5 to 6 months 6 to 8 months 6 to 8 months 6 to 8 months 1 to 2 years 1 to 2 years 2 to 3 years 2 to 3 years 2 to 3 years
Generally, fees are managed according to the tax units and are subject to exchange rate variations. They also depend on how many products or services are to be published. (1) In Costa Rica, USD 50 is paid for the initial application, to which the fee of the publication of the edict in the Official Gazette is added. (2) In Honduras, USD 2.50 is paid for filing a trademark application, for its publication USD 80- USD 200, for registering USD 40. (3) In Puerto Rico, USD 150 is paid for the application and USD 75 for its publication. (4) In Cuba, the multiclass system applies, through which up to three classes are paid. (5) In El Salvador, it is not paid per application, but per registration of the trademark. Its publication USD 80 approx. and for registering USD 100 per class.
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Other regions The average time frames for granting a resolution of trademarks in the European Union are of five to six months, whereas in the United States it reaches six or eight months, as happens in countries like Hong Kong and Singapore.
Average time frame for granting a patent application
Granting patents The time frame for granting or denying a resolution of a patent in the region are led by Peru, Nicaragua and El Salvador, at the moment. The minimum delay is two years, at best. We can observe that the average ranking is concentrated in the five years of delay approximately, but this is very variable, depending on each case, and this lapse can easily be extended. The countries with more backlog are, once again, Brazil and Uruguay, with eight and ten years respectively. In Argentina the range is quite broad, but patent granting usually takes seven years or less, with the exception of biochemical and pharmaceutical patents, which take an average of twelve years. In 2012, Panama amended Law 35 on Industrial Property and included the examination for patents. The Patent Office is still waiting for the patent examination to begin on patents filed as of October 2012. Patents filed since that date have not been granted or denied. Previously, the resolutions took an average of one and a half years, as we were informed.
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(1) Patent applications from Panama are filed in the US, unlike trademark applications. (2) The sources consulted find it difficult to establish averages, due to the variation depending the cases. (3) In Venezuela patents of invention have not been granted for over 14 years. The resolution of industrial model applications and drawings in that country take about 8 years approx.
Consulted Sources Estudio Chaloupka, Argentina. David Do Nascimento, Brazil. Villaseca Abogados, Chile Brigard Castro, Colombia. Posse Herrera Ruiz, Colombia. Ideas Trademarks & Patents, Costa Rica. Claim Consultores de PI, Cuba. Estudio Luzuriaga & Castro, Ecuador. Arent Fox LLP, USA. García & Bodán. Guatemala, El Salvador, Honduras, Nicaragua. Jáuregui & Asociados, Guatemala. Mayora IP, S.A., Guatemala. Becerril, Coca & Becerril, Mexico.
Guy José Bendaña-Guerrero & Asociados, Nicaragua. C&M - Cedeño & Méndez, Panama. BKM - Estudio Berkemeyer, Paraguay. Mersan Abogados, Paraguay. Espinosa Bellido Abogados, Peru. Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Abogados, Peru. Ferraiuoli, Puerto Rico. Estudio Pittaluga, Uruguay. Hoet Peláez Castillo & Duque, Venezuela. Bolet & Terrero, Venezuela. MARCASUR Latinstatistics Department . M
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MARCASUR reports El Salvador ROMERO PINEDA´S RENOVATION ON THE EVE OF ITS 40TH ANNIVERSARY
Carlos Castillo, Roxana Romero, Roberto Romero Pineda and José Roberto Romero
In its 40th Anniversary year the firm is rebranding itself with a new image, reflecting evolution and deliberate steps to guide its associates to new heights. Romero Pineda provides professional legal services in strategic areas of law, key to doing business in El Salvador and the Central American region i.e. corporate law, banking, finance, aeronautics, intellectual property, litigation, tax and regulations for a variety of industries. Through its extensive global network as exclusive member of LexMundi in El Salvador, the team has a crystal-clear understanding of its international client's needs. The firm is known for its combination of experience, creative thought and strategic legal development, its team of lawyers and the trust of its multinational and local clients, each leader in their individual market areas. Unique digital identity: The firm has a cloud installed digital platform, designed to store all its clients´ and case information. Its website, www.romeropineda.com, is refreshed daily with legal and institutional information for clients, followers and site visitors. Always abreast of market trends, it has also shared how e-commerce is regulated in each country of the Central American region.
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Since 1978, Romero Pineda & Associates has enjoyed being one of the most important law firms in El Salvador and Central America. Its outstanding client portfolio has positioned it as one of the most exclusive and specialized providers of legal services.
For the last 40 years the firm has displayed its logo that denotes elegance, knowledge and tradition. During this period, the logo itself received awards and recognition not only for its design, but for the achievements of the talented attorneys the image represents. “We're at the eve of completing our first forty years. We are filled with enormous satisfaction and empowered by our successful history to continue with renewed purpose, excitement and innovative thinking, improving our systems, as well as creating avenues to integrate new professionals, all to move ROMERO PINEDA & ASSOCIATES into the future, as we record our memorably past.” Dr. Roberto Romero Pineda (President) 2018 is the year of our 40th anniversary; it is an iconic year in our history since we are re-launching our new brand image, representing what we are: a modern firm that evolves with time, maintaining the highest professional and ethical standards as we have in the past and will continue into the future. José Roberto Romero M. (Managing Partner)
The new image Our new brand is comprised by the logo (”Romero Pineda”) joined on top with the symbol and the stylized and elegant isotype combines tradition, creativity and a modern mood. As the initials “R”, “P” y “A”, have been so prominent in the heritage of our last graphic symbol; they will be always part of us. The new design provides a modern functionality for our markets reflecting our capacity to adapt to our clients. The new brand image represents modernism, technology and the strength of our professional staff who offer a unique and specialized service.
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INTERVIEW
«The main goal is to educate businesses and the public»
level of IP protection available in the potential host countries and filling the gaps.
DANIEL ZOHNY, HEAD OF INTELLECTUAL PROPERTY OF THE FÉDÉRATION INTERNATIONALE DE FOOTBALL ASSOCIATION (FIFA), IS WORKING HARD WITH HIS TEAM ON THE EVE OF THE WORD CUP 2018. HE ANSWERED FOR MARCASUR. What are FIFA's main goals and legal strategy to combat violations of its IP and to protect partners and sponsors during 2018 FIFA World Cup Russia? There are several strategies we implement to safeguard the integrity of our brands and the FIFA Commercial Programme through which FIFA generates the means to organize the FIFA World Cup™ and its numerous football and social development programs worldwide. The main goal is to educate businesses and the public about FIFA's intellectual property and commercials rights to avoid infringements from the get go. From our experience a very large number of violations are a result from a 18
lack of knowledge of the restrictions regarding the use of our brands and/or otherwise commercially associating with the Tournament/FIFA without authorization. Therefore a lot of effort goes into explaining these restrictions, for example by providing information via our Public Guidelines which are available for download in five languages, incl. Spanish via www.fifa.com/brandprotection. However, we of course cannot rely on educational efforts alone and have to actively protect our rights by enforcing against violations. The foundation of an effective enforcement programme is already laid at the bidding stage for a FIFA World Cup with reviewing the
Further to the educational aspect how does the enforcement programme work? Once a country is awarded the right to host the Tournament and the Brand assets such as the Official Emblem, the Official Mascot, the Official Typeface and the rest of the look and feel for the event are being developed, FIFA's IP Department's IP Registration team is instrumental in ensuring protection by securing rights from the agencies that create these brand assets and subsequently protecting same via trademark, copyright and design registration in all relevant territories and for all the goods and services that are provided by FIFA's Commercial Affiliates, i.e. FIFA's partners, sponsors and licensees. The goal is to achieve a level of protection that allows us to effectively deal with different types of infringements ranging from counterfeits to unauthorized use of our brand assets for advertisement purposes to unauthorized ticket sales, both off-and online. Since such illicit activities take place worldwide, identifying them is often challenging especially when you only www.marcasur.com
have offices in Switzerland and Russia. We therefore strongly rely on the eyes and ears of our Commercial Affiliates, our online enforcement service provider, local authorities and of course our worldwide network of external local counsel to detect infringements and illegitimate marketing campaigns. When it comes to enforcing FIFA's rights we aim to take a reasonable approach. The main goal is to stop the infringement as quickly as possible to minimize the impact on our Commercial Affiliates' exclusivity of rights. However, if necessary we will use the full spectrum of legal tools available to us to enforce our rights, incl. seeking damages in litigation. What is the composition of FIFA's IP Department? Due to the wider restructuring of the FIFA administration as part of an effort to meet the highest standards of corporate governance, compliance and accountability, changes have been made to the general setup of the Legal Division of FIFA and within the sub-division in which my Department is rooted, adjustments have been made to create more efficiency. The former independent groups of IP registration and Brand Protection were combined into one Intellectual Property Department with myself as responsible for both pillars. Currently the Department has 10 team members with one counsel and four paralegals in IP Registration, two counsel and three case managers in Brand Protection and one IP assistant. Two of the Brand Protection colleagues are located in Moscow and manage our efforts in the host country,
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while the rest divides responsibilities between them for the remainder territories on the world. Furthermore, an additional colleague mainly manages Ticketing Enforcement cases. During the Tournament the team grows even more, since we have a FIFA Brand Protection Manager located in each venue to oversee the implementation of our operations onsite and prevent violations of our rights in the stadium and the two km Commercial Restriction Area around it. Are you working with Russian authorities? Moreover we work with Russian authorities via the National Rights Protection Committee which was established especially for the FIFA Confederations Cup and FIFA World Cup and which meets every two months and is comprised of representatives of FIFA, the Local Organizing Committee for the Tournament and the various enforcement agencies and institutions tasked with protecting intellectual property and commercial rights. We also closely cooperate with consumer protection agencies across the globe to ensure that fans are informed about the risks involved when purchasing tickets from unauthorized traders on the secondary market, etc. What are the differences between this World Cup and the last one held in Brazil from the viewpoints of logistics/financial/legal? From the enforcement point of view the main difference is certainly our approach
towards actioning cases. In Russia we are pursuing every case that is reported to us by the authorities, even if the matter involves only a single counterfeit product in a small store. This of course creates a financial burden that we manage by working with a local law firm with which we have a scalable fee arrangement. Since Russia uses an alphabet different to the Roman one, the language barrier is higher for the team and more time is necessary for translation. Ticketing Enforcement, i.e. the detection and enforcement against unauthorized sales of tickets to matches of the Tournament was taken in-house and, due to its overlaps with Brand Protection (very often the tickets are advertised by using FIFA IP), is under the responsibility of the IP Department. To date this has produced almost 400 matters and has certainly expanded the duties, but also the knowhow of the team. Furthermore, with the addition of several sponsors from China, new previously less experienced arenas for infringement have moved more into our focus, for example infringements on online platforms such as WeChat and Weibo. Together with the language barrier, these platforms create new challenges we need to adjust to. What types of infractions do you foresee will be more frequent at the event? Currently we frequently deal with companies (especially banks) that run promotional campaigns in which tickets to matches of the FIFA World Cup are promised as prizes/incentives. In this context it is important to remember that the ability
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to give away/offer tickets to the Tournament is an extremely valuable marketing right owned by FIFA that is granted exclusively to FIFA's Commercial Affiliates for the tournament. Any promotional use of Tickets without FIFA's specific prior written consent is clearly prohibited under FIFA's “General Terms and Conditions for the Use of Tickets� and creates an undue association with the Tournament, likely to mislead consumers to believe that the organizer of the promotion is legitimately associated with the Tournament and/or FIFA. Any Ticket used in such unauthorized manner will be cancelled once identified and FIFA reserves the right to refuse entry to the stadium to any holder of such Tickets. Furthermore, the Russian Code of Administrative offenses specifies the use of tickets for advertising, sales or promotional purposes without authorization by FIFA to be an offense punishable with fines up to 30 times the face value of the Ticket or suspension of business license in Russia for up to 90 days. For the tournament period of June 14 to July 15, 2018 we of course expect to see attempts of ambushes and illegitimate third party product promotions on the ground, i.e. in and around the 12 stadiums in which games are going to take place in Russia. We are in the final stages of preparation for our onsite brand protection programme which operates patrol teams consisting of FIFA legal team members, Host City representatives and
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local law enforcement officers that are able to enforce the special anti-ambush provisions of the Russian FIFA World Cup specific legislation. What are the main activities or merchandizing strategies of FIFA for the 2018 World Cup? From a Brand perspective the objective is to deliver a unique and attractive event identity /brand that reflects Russia and its cultural heritage. The Official Look of the tournament integrates various visual elements that are representative of Russian culture and artwork developed to allow versatility and creativity, e.g. cityspecific graphic elements. Since the presence and activation of the brand online and on social media has taken an even more important role for this edition of the World Cup, the importance to protect our properties in the everchanging online space including dealing with new platforms, etc. is bigger than ever. From a Licensing & Retail perspective it is FIFA's goal to translate the visuals into a tangible form through official licensed products (OLP), creating physical memories that last for years after the respective edition of the FIFA World Cup. To ensure that the fan receives authentic, quality products we have further enhanced our security and authentication features in connection with OLP. We share information on how to detect counterfeits by providing educational material and/or
trainings to the relevant authorities in core territories that we have beforehand identified. What is the projected revenue of FIFA for the 2015-2018 cycle? We expect a revenue of 5,656 million USD dollars in this FIFA World Cup cycle. This revenue stems from TV broadcasting rights (53%), Marketing rights/sponsorship and Licensing (31%), Hospitality and Ticketing rights (10%) and various other streams (6%). With the vast majority of revenue being generated through intangible assets, an effective enforcement programme is of vital importance to the organization. M
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EVENT
From left to right: Vanessa Cure, Catalina Gómez, Martin Torres, Juan Pablo Cadena, María Fernanda Castellanos, Maria Paula Vargas, Catalina Fula, Giovanna Alejandra Castaño, Laura Ángel, José Zuluaga, Mónica Corredor, María Juliana Pacheco and Gustavo León (Brigard Castro, Colombia)
Brigard Castro, for all
THE COLOMBIAN FIRM WELCOMED COLLEAGUES, CLIENTS AND FRIENDS IN ITS SPECTACULAR OFFICE BUILDING IN BOGOTA. Brigard Castro is recognized as one of the leading Colombian firms in the field of intellectual property, with an excellent reputation in the industry for its quality of service. On occasion of ASIPI's Seminar in Bogota, the firm received colleagues, clients and friends in its spectacular office building located in the Rosales neighborhood, to celebrate its more than 80 years of existence and the distinction of international awards for their work. With a magnificent view of the hills and Bogota's city lights, Brigard Castro delighted the guests at the terrace where they enjoyed the capital's landscape, in a rainy climate but with a warm welcome from the hosts: table of cold cuts, sandwiches, music offered by a DJ and a show of typical dances that included the bambuco, one of the maximum Martin Torres (Brigard Castro, Colombia)
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Luis Henríquez (Marquez- Henriquez-Ortin-Valedon, Venezuela) & María Fernanda Castellanos (Brigard Castro, Colombia)
Manuel Polanco (Bolet & Terrero, Venezuela) & Enrique Cheang (ECV & Asociados, Venezuela)
Ricardo Aníbal Mejía (Bufete Mejía y Asociados, Honduras) & Claudio Szabas (Dennemeyer & Associates Propriedade Intelectual Ltda., Brazil)
Morena Zavaleta (Arias Law, El Salvador), Eleonora Carrillo (Jacobacci & Partners, Spain) & Elena Puente (Espino Nieto & Asociados, El Salvador)
expressions of the Colombian Andean folklore, a choreography that stole the attention and a huge applause for the performers. Words from partners Juan Pablo Cadena, Martín Torres Cardozo and María Fernanda Castellanos highlighted the need to impose challenges as the firm has been doing since 1934. An event that reflected Brigard Castro's helpful spirit, value and evolution. Congratulations!
María Paula Vargas (Brigard Castro, Colombia), María Fernanda Castellanos, Juan Pablo Cadena (Brigard Castro, Colombia) & Cecilia Falconí (Falconi Puig Abogados, Ecuador)
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ASIPI SEMINAR // BOGOTA
MatÃas Noetinger (Noetinger & Armando, Argentina), Luis Henriquez (Marquez- HenriquezOrtin- Valedon, Venezuela), Elisabeth Siemsen (Dannemann Siemsen, Brazil), Juan Vanrell (Vanrell IP, Uruguay), Rafael Covarrubias (PCM Abogados, Chile) and Juan Berton (Berton Moreno + Ojam, Argentina)
In this beautiful city in which the orchid was adopted by the authorities as its floral emblem, more than 200 professionals mostly from Latin America, specialists in IP, attended this 3-day event. The first day, two workshops were held on AntiCounterfeiting and Administration of Law Firms, and the next day the meetings of the Board of Directors and Work Committees were held. On Monday 9 and Tuesday 10, issues related to pharmaceutical patents and drug brands were discussed, with presentations by specialists. The panels analyzed the regulations of the different countries, the roles of the public administration, local and regional jurisprudence and novelties in the commercialization of drugs.
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IP in the city of the orchids THE SEMINAR "INTELLECTUAL PROPERTY IN THE PHARMACEUTICAL INDUSTRY OF THE XXI CENTURY", ORGANIZED BY THE INTERAMERICAN ASSOCIATION OF INDUSTRIAL PROPERTY (ASIPI) TOOK PLACE BETWEEN APRIL 8 AND 10, IN THE CITY OF BOGOTA.
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Red & Black. Juli Gutiérrez (Diez Canseco, Peru), Raquel Toñánez (Toñánez, Ortiz & Asociados, Paraguay) & Alicia Alvarez (Berken IP, Argentina)
The world is a small place. Francisco Pérez (Perez Bustamante & Ponce, Ecuador) & Fernando Triana (Triana, Uribe & Michelsen, Colombia)
Round table. Samuel Pamias (Hoglund & Pamias, Puerto Rico), Ninoshka Urrutia (Consortium, Guatemala) & Melanie Avea (Asensio Andrade Flores Abogados, Guatemala) Paola Laurini (Gordó Llobell & Asociados, Argentina) & Alejandra Morgade (Marval, O`Farrell & Mairal, Argentina)
Luis José Diez Canseco (Diez Canseco, Peru) & Joseph Morales (The Morales Law Firm, USA) www.marcasur.com
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Under nighlight. Karina Daiha (Kasznar Leonardos, Brazil), Monique Rodrigues Teixeira (Dannemann Siemsen, Brazil), Maria Carmen de Souza Brito (Dannemann Siemsen, Brazil) & Consuelo Benjumea (Consuelo Benjumea & Asociados, Colombia)
Carolina Romero (General Manager of the National Copyright Directorate, Colombia) and Irene de Sola (De Sola Pate & Brown, Venezuela)
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Luis Guinard (Guinard & Noriega, Panama) and Karina Carmona (David do Nascimento Advogados, Brazil)
Happy Hour, Yolianna Arosemena (Benedetti Cl Abogados, Panama), Juli Gutiérrez (Díez Canesco, Peru), Edy Portal (Portal & Asociados, El Salvador), Vianney Gutiérrez (Calderón & De La Sierra, Mexico), Irina Terra (E.C.V & Asociados, Venezuela) & Analucía Carrillo (Carrillo & Asociados, Guatemala). www.marcasur.com
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Luiz Henrique do Amaral (Dannemann Siemsen, Brazil), Jaime Durand (García Sayan Abogados, Peru), Ricardo Fischer (Arent Fox, USA), Juan Carlos Cuesta (Cuesta & Asociados, Colombia), Guillermo Sosa (Goodrich, Riquelme y Asociados, Mexico), Enrique Díaz (Goodrich, Riquelme y Asociados, Mexico), Rafael Covarrubias (PCM Abogados, Chile), Alberto Guerra (Guerra IP, Brazil), Jacqueline Moreau (Moreau González & Asociados, Venezuela), Elisabeth Siemsen (Dannemann Siemsen, Brazil) & Diana Romero (Cuesta & Asociados, Colombia)
Jaime Durand (García Sayan Abogados, Peru) & Ricardo Fischer (Arent Fox, USA)
Yordanka Ramírez (Claim S.A., Cuba), María Amparo Calderín (Bufete Internacional, Cuba), Pedro Olivares, Reynol Sampedro, María Teresa Camejo & Raúl Sancho Valladares (Habanos S.A., Cuba) 28
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INTERVIEW
INTA's new strategic plan in the region of communication between trademark owners and custom officials to fight illicit trade. All this done from my position or through INTA's different committees, its experts and volunteers. INTA continues to focus globally on the issue of legislative restrictions on brand packaging. Is Latin America on the same page? Yes, that is the case, because the problem of trademark restrictions is occurring mainly in this region. We are concerned that the discussion is coming to the point that trademarks can attempt the right of people's health, when that is not the case. However, many speeches confirm that. We also see the adverse effect of the overregulation on the owner of the trade-
Background
JOSÉ LUIS LONDOÑO, INTA's NEW CHIEF REPRESENTATIVE OFFICER FOR LATIN AMERICA AND THE CARIBBEAN, SINCE JULY 2017, SPEAKS WITH MARCASUR
Of Colombian nationality, José Luis Londoño moved to Santiago de Chile when he accepted the position of Chief Executive Officer of the International Trademark Association (INTA) for the region, with the main function of taking the strategic plans of the organization to this part the world. What are the functions of this new position? My challenge is to take INTA's strategic plan for the period 2018-2021 to the region. That is, to promote the Associa 30
tion and support the development of its members, to communicate the importance of trademarks and their contribution from an economic and social point of view, to contribute in harmonizing the legislations of the different countries, which would mean lower transactions costs in the protection of trademarks. I must also contribute in the development of a better compliance in the protection of intellectual property rights in the region, that processes are fair and effective, to combat piracy through training workshops, to serve as a bridge
José Luis Londoño holds a doctorate in Jurisprudence, specializing in Intellectual Property, graduated from the Externado University of Colombia. He started his career as a Trademark Examiner at the Colombian Trademark Office. He then was an associate at a Colombian law firm in the trademark prosecution and litigation division. Then he worked in the Legal Division of the National Federation of Coffee Growers of Colombia (FNC), where he was responsible for managing FNC's worldwide IP portfolio. Before joining INTA in July 2017, he was the Deputy Superintendent for Industrial Property Matters at the Superintendence of Industry and Commerce of Colombia (SIC), where he was responsible for the administration of the Colombian Industrial Property Office. He was also a professor at the Externado University of Colombia for the past eight years, before moving to Chile. www.marcasur.com
trademark can be used or not, companies are being affected and also the consumer's freedom to choose products. Why do you say that the issue of trademark restrictions is occurring mainly in this region? Legislations on this matter have recently been approved. For example, in Chile there is a regulation on food advertising aimed at children, and some trademarks were forced to withdraw advertising from the packaging, because the messages were considered harmful to minors. Peru adopted the same legislation, although decisions have not yet been implemented. In Colombia there is a discussion in Congress around that point. We do not question that the issue must be addressed, but we do not agree with the fact that traditional trademarks cannot communicate with their natural markets or their consumers, or that they are classified as harmful. What is happening recently with counterfeiting? The growth of counterfeit products is a great challenge. The authorities work hard against this issue, but they end up feeling discouraged because illicit trade seems unstoppable. This brings terrible consequences for the economy. In addition, each day more relations are established between piracy and other serious crimes. Which countries in the region are developing successful initiatives against counterfeit? It is difficult to know, but I was pleasantly surprised by what Chile is doing,
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where they have gone a step further by starting to make joint efforts with the authorities in Mexico. In December 2017, for example, the authorities stopped a shipment of counterfeit tequila at the border, thanks to the exchange of information between customs entities, industrial property offices, trademark holders and the same Tequila Regulatory Council. The Chilean Customs Office is a good example of properly channeled efforts. As an organization, we have also been present at trainings on anticounterfeiting procedures in Panama. We have also seen there how the officials are committed to attacking the scourge. INTA has focused in the Latin American fashion industry, why is this? In the last ten years, 50 million people in Latin America improved their socioeconomic situation and became middle class. This means that the fashion industry has many more consumers. It is a demand that is growing, and everyone will want something fashionable: a perfume, a tie, a dress, shoes, necklaces. The spectrum of products and services is very broad. Great names of designers have emerged. Carolina Herrera is an exponent and others of prestige are appearing. INTA has a committee on fashion industry and its relationship with trademarks, that work on these issues. Are the new designers in the fashion industry aware of the importance of registering their trademarks and protecting their rights? Some are, and others aren't. Unfortunately, in Latin America intellectual property becomes important to someone when they are losing their rights. It is not
only a problem of the designers, but also of the small and medium companies, who think about the protection of their intangibles when they have already started the business venture, or when they have already been imitated and there is nothing to do. How do you see the future of Latin America in terms of intellectual property? I see it very well. There are new legislations with positive impact and politico-economic changes in important countries in the region. Several of them are involved in negotiation processes for international treaties, they are promoting the creation of industries and the generation of innovation and entrepreneurship. There are also fewer intermediaries in the purchase of basic services in the region, which means progress. In which countries do you see legislative improvements or initiatives in favor of IP that you refer to? Mexico is introducing a bill to include the protection of non-traditional trademarks. Argentina issued a decree that opens the possibility to administrative opposition procedures to make procedures more expeditious. There are also proposals for legislative changes in Brazil, and in the field of patents, a creative proposal to solve the backlog problem. In the Andean Community countries (Colombia, Peru, Ecuador, Bolivia) discussions are taking place around geographical indications, to promote legislative changes in this area. These are some examples. M Fabiana Culshaw
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AMPPI IN MEXICO
Between streaming and social media José Juan Méndez (National Vice-President of AMPPI), Hao Ma (President of AIPPI) and Martín Michaus (Basham, Ringe y Correa, Mexico).
The Mexican Association for the Protection of Intellectual Property (AMPPI) held its seventh AMPPI International Meeting, AIPPI's Mexican Group, from February 28 to March 2, promoting the knowledge and dissemination of intellectual property. Hao Ma, President of AIPPI, accompanied throughout the event, acted as speaker at a lecture and extended an invitation to attend the upcoming Annual International Congress of AIPPI to be held in Cancun, Mexico, from September 23 to 26.
Concentrated and participating.
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Consuelo González (Uhthoff, Gómez Vega & Uhthoff, Mexico), Laura Collada (Dumont, Mexico), Fernando Becerril President of AMPPI) & Natalia Castro (Raisbeck & Castro, Colombia)
President of AIPPI, Hao Ma
The event was organized by the members of the Board of Directors and led by Martín Pereyra, representative of that committee. The panels included exhibitors from the host country, from Canada, Colombia, Ecuador and the United States, who shared their views on cutting-edge intellectual property and copyright issues, such as: the impact of streaming on copyright; different approaches and contentious implications of the opposition procedure; brands on social networks; artificial intelligence; analysis of the Mexican jurisprudence regarding IP in the digital environment in the light of comparative law; advances and setbacks: overview of Mexican and US IP cases; geographical indications.
Alejandro Varela Espinoza (GPI Te Agradece, Mexico), Daniel Legaspi Jaime (Santamarina & Steta, Mexico), Lourdes Chamorro Tax, Manuel Duarte Barrera and Hilda Monterroso (Palacios & Asociados, Guatemala) www.marcasur.com
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Carlos Trujillo (moderator), Gerardo Muñoz De Cote (Televisa, Mexico), Clara Luz Álvarez (Universidad Panamericana, Mexico), Octavio Saldaña-Villanueva (América Móvil, Mexico)
Juan Carlos Hernández (President of the Trademark Committee of AMPPI, Mexico) Cecilia Romoleroux (Corral & Rosales, Ecuador) & Matthew Boyd (Gowling WLG, Canada)
The 142 attendees had the opportunity to get together with their colleagues and exchange experiences. The president of AMPPI, Fernando Becerril, in his closing words thanked the directors and representatives of the work committees for the organization of the event. He also announced the 8th AMPPI International Meeting, scheduled for 2019. M
Octavio Espejo (moderator), Aída Huerta (UNAM, Mexico), Adrián Santuario (UNAM, Mexico), León Felipe Sánchez (Fulton & Fulton, S.C., Mexico)
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