MARCASUR
FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE - Nยบ70 JULY-SEPTEMBER 2018
LATIN AMERICA SPECIAL EDITION 2018
LATIN
AMERICA
CONTENT
9
Latinstatistics Ups and downs in IP
Latin America in numbrers
61
4
6.
Editorial
7.
Marcasurworld
8.
Latin America Map
9.
Latinstatistics Ups and downs in IP
17.
PCT ISA/IPEA in Latin America
18.
Mexico IP NEWS
21.
Interview to Miguel Angel Margain, IMPI Director
24.
Interview to Martin Michaus, President of the Organizing Committee
26.
Asepro Ecologia. Gilberto Sánchez, Specific IP, Mexico
28.
Preparing for the future. Nuria Becerrill, Becerril, Coca, Becerril SC., Mexico
31.
Constructing a renewed Trademark System in Mexico.
José Juan Méndez, Méndez + Cortes SC., Mexico
32.
Concerning Distinctive Signs. Carolina Ponce, Uhthoff, Gómez Vega & Uhthoff, SC., Mexico
34.
Road Travelled and Perspectives. Teresa Espinosa, Basham ,Ringe y Correa SC., Mexico
36.
Interview to Luiz Henrique do Amaral, Second Vice President of AIPPI
38.
Fashion and Traditional Knowledge. Maria Elena Terrero, Bolet & Terrero, Venezuela
40.
The Intellectual Property of Indigenous People.
Alexander E. Garcia Lopez ,Cambra La Duke & Co, Panama
42.
Parallel Imports in Costa Rica. Marianella Arias, Divimark Abogados, Costa Rica
44.
Amended IP Law in Argentina. Claudia Serritelli y Paula Galvan, Estudio Chaloupka, Argentina
46.
Artificial Intelligence. Gabriela Bodden, Eproint, Costa Rica
48.
The 10 most valuable brands in Latin America
50.
Oil States v. Green’s Energy. Victor Rodriguez- Reyes, Ferraiouli LLC, Puerto Rico
52.
Costa Rica a Green Fashion Country.
Maricruz Villanea, Ideas Trademarks and Patents, Costa Rica
54.
IP in Bolivia. Wolfgang L. Ohnes, Orpan Sociedad Civil, Bolivia
56.
Colombia becomes an OECD member. Carolina Vera Matiz, Vera Abogados Asociados, Colombia
58.
The Hague Conference on Private International Law. Rafael Atab, Danneman Siemsen, Brazil
60.
Venezuela: Ayala & Asociados renews its strength and bets on excellence
61.
Latin America in Numbers
66.
Personal Information Databases in Uruguay. Gabriel Pittaluga, Pittaluga abogados, Uruguay
68.
Marcas News
70.
Customs Violation in LA. Virginia Cervieri
73.
Travelling: Machu Picchu
76.
Travelling: Garden of Patagonia. Villa La Angostura www.marcasur.com
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LATIN AMERICA SPECIAL EDITION 2 0 1 8
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staff
Director and Editor-in-chief: Juan Pittaluga juan@marcasur.com Executive Editor: Fabiana Culshaw fculshaw@marcasur.com Media Department: Juan Francisco Pittaluga francisco@marcasur.com Commercial Department: Mei-lin Che mche@marcasur.com Communications: Claudia Azambulla cazambulla@marcasur.com Contributors: Daniel Lamas dlamas@lamasgrimaldi.com.uy Teresa Pereira tere@marcasur.com Victoria Pereira victoria@pereiramarketing.com Design: LP Arte Visual Printing: VOX- MĂŠxico
editorial MARCASUR LATIN AMERICA Special Edition 2018 Cont. Echevarriarza 3535 C, 511 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 Fax: (598) 2623 2957 info@marcasur.com ISSN 1688-2121 D.L. 354.155 ComisiĂłn del Papel. Publication protected by Decree 218/96
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Editor de Marcasur, Juan Pittaluga, dibujado por Rob Smith Jr.
We present this special English edition of MARCASUR magazine with extensive information on what is happening in IP in Latin America. MARCASUR has consolidated its leading position as a mass media exclusively informing for over 25 years the latest IP news of Latin America, also reaching USA, Europe and Asia through different digital media. Our information goes beyond the strictly academic, also referring to issues regarding the social life of the Latin American professionals that work in IP. Therefore, in its pages you will also find photos of events, interviews to people whose opinion is important, places that should be visited and many other topics. We invite you to read this edition and learn more about Latin America.
MARCASUR is LATIN AMERICA
Juan Antonio Pittaluga
www.marcasur.com
www.marcasur.com
LATIN AMERICA SPECIAL EDITION 2 0 1 8
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LATIN AMERICA MAP Mexico DF
Havana Puerto Principe
Santo Domingo
San Juan
Tegucigalpa
Guatemala San Salvador
San JosĂŠ
Managua Panama City
Caracas
Bogota Quito
624,51
Population: million of people live in Latin America.
Lima
Brasilia
La Paz
Brazil (207,6 million) Mexico (123,5 million) Colombia (50,3 million)
Asuncion
Argentina (44,7 million) Peru (32,1 million) Venezuela (31,5 million) Chile (17,5 million) Guatemala (16,9 million) Ecuador (16,7 million)
Santiago de Chile
Montevideo Buenos Aires
Cuba (11,2 million) Bolivia (11,2 million) Haiti (10,8 million) Dominican Republic (10,2 million) Honduras (9,01 million) Paraguay (6,7 million) El Salvador (6,3 million) Nicaragua (6,2 million) Costa Rica (4,9 million) PanamĂĄ(4 million) Puerto Rico (3,3 million) Uruguay (3,2 million)
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Latinstatistics SPECIAL REPORT
Ups and downs in IP
Latinstatistics offers a complete study of trademark, patent and industrial design applications in Latin America in recent years, including updated data 2017.
In general terms, trademark and industrial designs applications have increased in the region, while those for patents show a negative balance. This reveals the challenges that this part of the world present, especially in terms of inventions. www.marcasur.com
LATIN AMERICA SPECIAL EDITION 2 0 1 8
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TRADEMARKS
Latin America had a 6% increase in trademark applications from 2016 to 2017. At least in the last four years there have been constant and continuous increases in this indicator. Peru, Argentina, Brazil and Mexico are the countries with the highest percentage increase in 2017, according to Latinstatistics.
The increase of trademark applications in the region in the 2016-2017 period was higher than in 2015-2016, where a rise of 3.2% was recorded. In 2017, it was a 6%. The total number of applications in Latin America in 2017 was 675,859, while in 2016 it was 637,388. Latinstatistics report clearly shows that, at least in the last four years, there has been a systematic growth of trademark applications in the region, which went from 579,451 (2014) to 617,287 (2015), they continued rising to 637,388 (2016) and 675,859 (2017). This could be interpreted as an awareness growth of institutions, companies and individuals about the importance of registering trademarks, and as a greater movement of activity at that level.
In any case, the indicator in Latin America is much lower than in Asia and Europe, although above United States, according to the World Intellectual Property Organization (WIPO). It is important to point out that the results of this study slightly differ from previous editions of Marcasur (for example, Latinstatistics in edition number 70), given that we have adjusted the historical data and, in some cases, added other countries.
Of the total, nine countries experienced a growth and another nine a downturn, resulting in the above mentioned regional positive balance of 6.89%. Paraguay, Puerto Rico, Costa Rica and Cuba were the countries with the greatest downturn in the last year; the latter with -24.4%.
Among the countries studied, Peru and Argentina experienced the largest growth in trademark applications in 2017, compared to 2016; these were 26.7% and 23.6%, respectively. They were followed by Brazil, Mexico and Uruguay, in that order.
Trademark applications in Latin America, 2014-2017
Country 2014 2015 2016
2017
Total of the four years
Fluctuaciรณn 2016-2017 (%)
Peru 25.258 26.354 25.577 32.399 109.588 26,7 Argentina 57.908 65.931 71.020 87.801 282.660 23,6 Brazil 157.016 158.709 166.368 186.103 668.196 11,9 Mexico 118.745 134.342 138.745 153.853 545.685 10,9 Uruguay 5.755 5.499 5.123 5.599 21.976 9,3 Venezuela 20.755 19.569 21.672 22.439 84.435 3,5 Ecuador 15.589 17.932 15.491 16.024 65.036 3,4 Colombia 40.383 44.262 42.295 42.725 169.665 1,0 Dominican Republic 9.838 10.214 11.170 11.248 42.470 0,7 Chile 42.360 43.181 45.284 45.008 175.833 -0,6 Bolivia* 7.072 6.523 6.478 6.300 20.073 -2,7 Nicaragua n/d 4.200 5.057 4.865 9.257 -3,8 Guatemala 12.140 10.203 12.687 11.703 46.733 -7,8 Panama 8.924 9.180 8.930 7.797 34.831 -12,7 El Salvador 7.109 7.631 7.184 5.918 27.842 -17,6 Paraguay 24.735 22.146 23.485 18.414 88.780 -21,6 Puerto Rico 4.121 4.398 4.899 3.761 17.179 -23,2 Costa Rica 12.346 13.150 13.844 10.478 49.818 -24,3 Cuba 2.491 6.108 4.532 3.424 16.555 -24,4 Honduras** 6.906 7.755 7.547 n/d 22.208 n/d Total 579.451 617.287 637.388 675.859 2.498.820 6% *** * The data from Bolivia comes from reliable sources, but it is not official, only an estimate. ** The total number corresponds to the period 2014-2016. *** In Marcasur No. 70 the results were slightly different, given that the we did not include Bolivia.
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Top five
TRADEMARKS
Country
Trademark applications
Brazil Mexico Argentina Chile Colombia
186.103 153.853 87.801 45.008 42.725
In absolute terms, the leaders of the region are Brazil and Mexico, followed far behind by Argentina; then come Chile and Colombia, with similar values. This top five is consistent to previous years and it is due to the correlation of the indicator with the size of those countries. Although Brazil and Mexico had an important increase in trademark applications in the 2016-2017 period -of 11% and 12%, respectively-, they were not the highest in the region, led by Peru and Argentina.
Most of the trademark applications filed in the countries studied were filed by residents (73.5%), compared to 26.5% of non-resident applications. These percentages represent a slight increase in trademark applications filed by residents in relation to 2016, when they reached 69.4%. The only countries where applications were filed mostly by non-residents in 2017, were Cuba (79.5%) and Uruguay (59,5%)
Resident and non-resident applications 2017 Country Residents % residents Argentina 72611 82,7 Boliva n/d n/d Brazil 159.192 85,5 Chile 31.494 69,9 Colombia 23.762 55,6 Costa Rica 6.047 57,7 Cuba 703 20,5 Ecuador n/d n/d El Salvador 3.662 61,8 Guatemala 6020 51,4 Mexico 106.309 60,1 Nicaragua 1.105 22,7 Panama n/d n/d Paraguay 12.697 68,9 Peru 21040 64,9 Puerto Rico n/d n/d Dominican Republic 6.646 59,1 Uruguay 2.269 40,5 Venezuela 18414 82,1 Total 471.971 73,5%
Non-residents 15190 n/d 26.911 13.514 18.963 4.431 2721 n/d 2.319 5683 47.544 3.760 n/d 5.717 11359 n/d 4.524 3.330 4025 169.991
% Non-residents 17,3 n/d 14,5 30,1 44,4 42,3 79,5 n/d 38,2 48,6 30,9 77,3 n/d 31,1 35,1 n/d 40,9 59,5 17,9 26,5%
Total 2017 87.801 6.300 186.103 45.008 42.725 10.478 3424 16.024 5.918 11.703 153.853 4.865 7.797 18.414 32.399 3.761 11.248 5.599 22.439 675859 (*)
(*) The total number corresponds to all the countries, although the percentage of residents and non-residents is missing in some cases.
Percentage of residents and non-residents
IN NUMBERS
6%
was the growth of trademark registrations in Latin America between 2016 and 2017.
73,5 %
675.859
trademark registrations were filed in Latin America in 2017.
186.103
26,5 %
applications were filed in Brazil, leader in the region in that indicator.
26,7 %
is the highest increase of trademark applications in 2017, in Peru.
24,4 %
is the greatest downturn in 2017, in Cuba www.marcasur.com
LATIN AMERICA SPECIAL EDITION 2 0 1 8
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PATENTS Unfortunately, inventions and innovations are not the strong point in this part of the world; quite the contrary. The potential of the region however, is large, especially considering Brazil and Mexico, countries with the most developed economy than the rest, with more people and resources to invest in this area. Chile, little by little, is one of the promises in this area. There are outstanding cases of inventions in the region, for example in the areas of agricultural technology, which are a clear indicator of what could be done. For this, it is necessary to invest more and to generate incentives so that researchers do not emigrate to other latitudes in search of greater opportunities. An interesting phenomenon has been taking place in Latin America in recent years: there is a strong growth of entrepreneurs and universities take the lead when it comes to patents. These two market niches are a concrete hope for the development of the region.
In comparison with the rest of the world According to WIPO, 2016 was a record for international patent applications, with a total of 233,000 with the United States in the lead (24.3% of the total), while in
Latin America has the peculiarity of not standing out for the number of patent registrations. On the contrary, it is far behind compared to other continents, such as Europe, or the United States. Latin America there were only 62,839. The difference is huge. The Global Innovation Index 2017 is led by Switzerland, Sweden, Netherlands, United States and United Kingdom, in that order. It is interesting to point out that India is becoming a new pole of innovation on the global stage. And Latin America is still behind. To date, a large gap remains in the innovative capacity between high developed and non-developed countries. WIPO also points out that the progression in research and development activities in the latter is mediocre.
Numbers dropping According to Latinstatistics studies, applications for patent registrations in Latin America in 2017 fell 4.8% in relation to the previous year. It does not sound good, but it was lower than the drop suffered in 2016 (-8.2%). All the countries received less applications, except for El Salvador, Colombia, Costa Rica and Dominican Republic.
In 2017, the countries of the region totaled 58,931 patent applications, while the previous year, the total was 62,839. This represents a drop of 4.8%. The drop of applications from 2015 to 2016 was 8.2%, so the 4.8% of 2017 represents a slight improvement compared to the previous period. With the data MARCASUR had at the time, in its 67th edition, we informed that patent applications of the region between 2015 and 2016 had dropped a 6%; however, if we add the information of Ecuador and Cuba today, that percentage reaches the 8.2% mentioned above. The truth is that reality does not change: patent applications in the region do not increase. In fact, most of the countries studied show a drop in this indicator, except for El Salvador (it jumped from 54 applications in 2016 to 233), Colombia (from 2,203 to 2,372), Costa Rica (from 505 to 523) and Dominican Republic (from 273 to 281). The countries that suffered the highest drops were Peru (-63.8%), Venezuela (-26.2%) and Uruguay (-25.5%). In the last four years (2014-2017), there were 256,501 patent applications
Invention patent applications in Latin America (2014-2017) Total of the four years Country 2014 2015 2016 2017 El Salvador Colombia Costa Rica D. Republic Chile Paraguay Mexico Guatemala Panama Argentina Nicaragua Brazil Uruguay Venezuela Peru Honduras Bolivia Ecuador Cuba 12
84 50 54 233 2.279 2.455 2.203 2.372 544 599 505 523 258 252 273 281 3.102 3.270 2.908 2.896 406 365 317 315 16.135 18.071 17.413 17.184 397 372 360 354 292 400 417 409 4.089 4.673 3.812 3.443 146 183 182 164 33.182 33.043 31.020 28.667 795 672 658 490 1.602 1.087 676 499 1.490 1.464 1.410 510 227 265 290 n/d 377 351 341 n/d 701 718 n/d 417 150 185 n/d 174
421 9.309 2.171 1.064 12.176 1.403 68.803 1.483 1.518 16.017 675 125.912 2.615 3.864 4.874 782 1.069 1.836 509
Variation (%) 2015-2016�
Variation (%) 2016-2017
8,0 -10,3 -15,7 8,3 -11,1 -13,2 -3,6 -3,2 4,3 -18,4 -0,5 -6,1 -2,1 -37,8 -3,7 9,4 -3,8 n/d n/d
331,5 7,7 3,6 2,9 -0,4 -0,6 -1,3 -1,7 -1,9 -9,7 -9,9 -7,6 -25,5 -26,2 -63,8 n/d n/d n/d n/d www.marcasur.com
Top five PATENTS Country
Patent applications
Brazil
26.911
Mexico
17.184
Argentina
3.443
Chile
2.896
Colombia
2.372
Total
52.806
throughout the region. Latin America continues having difficulties in terms of introducing inventions and there is still a long way to go in this area. Brazil leads the region (26,911 applications), followed by Mexico (17,184) and, far behind, Argentina, Chile and Colombia (3,443, 2,896 and 2,372, respectively). In total, the 2017 top 5 add 52,806 patent applications. In 2016, the sum amounted to 57,356 requests. The difference is mainly given by Brazil, which went from 31,020 (2016) to 28,667 (2017).
RESIDENTS AND NON-RESIDENTS: AN ABYSS In all the countries, patent applications are filed mostly by non-residents. The average shows 80.5%, versus 19.5% filed by residents. This huge difference stands out and shows the regional lag in matter of research and invention.
Resident and non-resident patent applications 2017 Country Residents % Residents Non-residents % Non-residents Total 2017 Brazil 8.404 29,3 20.263 70,7 28.667 Mexico 1.334 7,8 15.850 92,2 17.184 Argentina 392 11,4 3051 88,6 3.443 Chile 427 14,7 2.469 85,3 2.896 Colombia 595 25,1 1.777 74,9 2.372 Costa Rica 22 4,2 501 95,8 523 Peru 26 5,1 484 94,9 510 Venezuela 63 12,6 436 87,4 499 Uruguay 16 3,3 514 104,9 490 Panama 35 8,6 374 91,4 409 Guatemala 12 3,4 342 96,6 354 Paraguay 13 4,1 302 95,9 315 Dominican Republic 15 5,3 266 94,7 281 El Salvador 4 1,7 229 98,3 233 Cuba 29 16,7 145 83,3 174 Nicaragua 4 2,4 160 97,6 164 Total 11.358 19,5 46.858 80,5 58.931* * Corresponds to the total of the countries, but not to the sum of residents and non-residents given that Ecuador’s disaggregated data is missing.
Percentage of residents and non-residents
IN NUMBERS
80,5 %
58.931
patent applications were received in Latin America
256.501
patent applications were received in the last 4 years
4,8 %
was the registered drop in this indicator between 2016 and 2017
19,5 %
8,2 %
was the drop in 2016 compared to 2015
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LATIN AMERICA SPECIAL EDITION 2 0 1 8
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INDUSTRIAL DESIGN
THIS IS THE FIRST TIME THAT LATINSTATISTICS OFFERS A STATUS OF INDUSTRIAL DESIGN APPLICATIONS IN LATIN AMERICA. WE SELECTED THE COUNTRIES OF THE REGION WITH THE HIGHEST NUMBER OF APPLICATIONS: BRAZIL, MEXICO, ARGENTINA, COLOMBIA, CHILE AND PERU. DESPITE THE FACT THAT BRAZIL’S POLITICAL-ECONOMIC CRISIS HAS HAD AN IMPACT ON THE REGION, THERE HAS BEEN A SLIGHT GROWTH IN THE INDICATOR.
Slight increase in industrial design applications Brazil, Mexico, Argentina, Colombia, Chile and Peru, in that order, are the six countries in the region with the highest number of industrial design applications, a total of 56,130 in the last five years. In 2016, they sum up to 13213. Brazil leads by far, with 25,502 applications in the last five years, followed by Mexico with 16,394 and Argentina with 6,083. The other countries are far behind: Chile (1,863), Peru (1,480) and Colombia (3,241). Between 2014 and 2015, there was a global decrease of 1.98%, due to losses registered in Brazil and Mexico. Between 2015 and 2016 there was a slight recovery which led to a rise of 0.85% in the studied countries. In 2016, there were a total of 13,213 industrial design applications. Although Brazil leads the ranking of number of applications, it registered a fall of 8.4% in 2015 and 0.2% in 2016. This impact is probably due to the politicaleconomic crisis experienced by the South American power during the first months
of 2015 and that led to the worst recession in its history. It must be remembered that the Brazilian economy contracted close to 3.8% in 2015 and the unemployment rate reached 11.8% in September 2016; all the indicators of the country were affected. While Mexico and Argentina picked up in number of applications in 2016, the other countries showed a downturn. Colombia registered a decrease of 26% in 2016, the most pronounced in comparison with the rest of the countries. The decrease in applications in most of the countries of the region is due, generally, to the lack of economic incentive for the creation of national models, to the lack of investment in research and to the limitations of the Latin American markets. According to the most recent report of the World Intellectual Property Organization (WIPO), the global activity on drawings and industrial designs increased a 10.4% in 2016, reaching a total of 963,100 applications containing 1,200,000 drawings or models. These applications
were led by: China (650,344), the European Union (104,522), the Republic of Korea (69,120), Germany (56,188) and Turkey (46,305). This contrasts with the figures of the Latin American countries, which handle significantly lower scales.
INDUSTRIAL DESIGN APPLICATIONS Country Argentina Brazil Chile Colombia Mexico Peru Total
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2012 1.567 6.675 600 650 4.137 407 14.036
2013 1.465 6.847 648 761 4.011 500 14.232
2014 1.384 6.590 409 577 4.088 319 13.367
2015 1.581 6.038 405 720 3.999 358 13.101
2016 1.653 6.027 401 533 4.296 303 13.213
Total 7.650 25.502 1.863 3.241 16.394 1.480 56.130
Variation 2014-2015 14,2 -8,4 -1,0 24,8 -2,2 12,2 -1,98%
Variation 2015-2016 4,6 -0,2 -1,0 -26,0 7,4 -15,4 0,85
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Top 3 INDUSTRIAL DESIGN 2016 Country ID Applications Brazil
6.027
Mexico
4.296
Argentina
1.653
Total
11.976
Residents and non-residents Most of the countries studied show a similar number of applications filed by residents and by non-residents. In the total average, 50.5% of the presentations were filed by non-residents.
RESIDENT AND NON-RESIDENT APPLICATIONS IN 2016
Country Residents % residents Non-residents % non-residents Total Argentina 1063 64,3 590 35,7 1.653 Brazil 3.400 56,4 2.627 43,6 6.027 Colombia 227 42,6 306 57,4 533 Chile 58 14,4 343 85,6 401 Mexico 1.696 39,5 2.600 60,5 4.296 Peru 102 33,7 201 66,3 303 Total 6.546 49,5 6.667 50,5 13.213
Below we present the detail of Brazil and Mexico, with explanations provided by experts consulted by Marcasur. These countries are leading the Top 3 in Industrial Design
BRAZIL
The Latin American giant has been reporting a systematic drop in the indicator for industrial design applications in all the years studied (from 2012 to 2016), especially in 2015. We consulted Luiz Otavio Pimentel, President of the National Institute of Industrial Property (INPI), and he mentioned that “the economic crisis of 2014-2015 is one of the fundamental factors of the decrease observed, not only in
the number of applications for industrial design registrations, but in the utility modelsÂť. Even though 2016 has not shown visible improvements, Pimental pointed out that INPI detects some positive indicators. In fact, from September to December there was a slight increase in the number of applications compared to the previous months of that year. Most applications are filed by residents, followed
by North Americans, Japanese, French, Germans and Swedes, in that order. Regarding the areas of activity, in Brazil, design applications in matter of furniture, transportation, clothing and packaging stood out.
INDUSTRIAL DESIGN APPLICATIONS IN BRAZIL, 2012-2016 Year Residents % residents Non-residents % non-residents Total 2012 2013 2014 2015 2016 Total Source: INPI
3.826 3.818 3.693 3.288 3.400 18.025
57,3 55,7 56,0 54,4 56,4 56,0
2.849 3.029 2.897 2.750 2.627 14.152
42,7 44,3 44,0 45,6 43,6 44,0
6.675 6.847 6.590 6.038 6.027 32.177
New examination manual INPI is working on the consolidation of the First Examination Manual, a document that will compile and describe the procedures of the Brazilian autarchy in terms of industrial design. The manual will gather valuable information for the examiner and for those who wish to file applications. It will be published during the first months of 2018. www.marcasur.com
LATIN AMERICA SPECIAL EDITION 2 0 1 8
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MEXICO In a five-year period, Mexico reached its maximum number of industrial design applications (4,296) in 2016. It stands out in the region, after Brazil, with a total of 20,523 applications in the last five years. However, the Patent Office of the Mexican Institute of Industrial Property registers a downward trend in 2017, not significant. IMPI has made efforts to process and grant a greater number of applications in this matter. Between January-September 2017, it granted 2,300 applications, with which the year would be closing in about 3,070 applications; this is a 20% increase compared in
relation to 2016. Most of the applicants come from Mexico, followed closely by the United States. Then comes Japan, among others. Octavio Espejo Hinajosa, an engineer from the firm Coca & Becerril, told Marcasur that an initiative to reform the chapter on industrial designs within the Industrial Property Law is currently being studied in the Senate. «The proposal includes some definitions that will be useful to better evaluate the registrability of an industrial design. It also contemplates a change in the validity, from fifteen years that cannot be extended to five extendable years, up to five equal periods. Another
aspect that it promotes is to try to publish the design applications (and utility models) as soon as possible during the process, "he said. In his opinion, this initiative is an indication of the possible addition of Mexico to the Hague Agreement concerning the international registration of industrial designs. In terms of trends, IMPI has maintained the criterion of accepting graphical user interfaces (GUIs), both static and animated. "These type of applications, specific to industrial design, have experienced a general increase in recent months," Espejo Hinojosa added.
INDUSTRIAL DESIGN APPLICATIONS IN MEXICO
Year
Residents
% residents
Non-residents
2012 2013 2014 2015 2016 Total
1.954 1.749 1.769 1.729 1.651 8.852
47,2 43,6 43,4 43,2 38,4 43,1
2.183 2.262 2.311 2.270 2.645 11.671
% non- residents 52,8 56,4 56,6 56,8 61,6 56,9
Total 4.137 4.011 4.080 3.999 4.296 20.523
Source: IMPI
Fuentes: INPI Argentina Guevara &Gutiérrez S.C., Bolivia Orpan, Bolivia INPI Brazil INAPI Chile Claro y Cía, Chile SIC, Colombia Brigard & Castro Intellectual Property, Colombia Wolf Méndez Abogados, Colombia IP Registry, Costa Rica Ideas Trademarks & Patents, Costa Rica OCPI, Cuba Barzallo & Barzallo Abogados, Ecuador National Registry Center, El Salvador Central Law, Guatemala Jauregui & Asociados, Guatemala Comte & Font, Guatemala Becerril, Coca & Becerril, Mexico García & Bodán, Nicaragua Guy José Bendaña-Guerrero & Asociados, Nicaragua Directorate General of IP Registry, Panama Benedetti CL Abogados, Panama Directorate General of IP, Paraguay Mesán Abogados, Paraguay
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Indecopi, Peru State Department, Government of Puerto Rico Ferraiuoli, Puerto Rico ONAPI, Dominican Republic J. J. Roca & Asociados, Dominican Republic National IP Office, Uruguay ECV, Venezuela
Fabiana Culshaw Latinstatistics
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PCT
ISA / IPEA in LATIN AMERICA Chile consolidates as an International Searching Authority and International Preliminary Examining Authority (ISA / IPEA) under the Patent Cooperation Treaty (PCT). For three years now, the National Institute of Industrial Property (INAPI) has begun to carry out work as Authority in charge of international search and international preliminary examination (ISA / IPEA) under the Patent Cooperation Treaty (PCT). We clearly remember the moment in 2011 when we decided to apply to be ISA/ IPEA. It seemed like a dream, but we took on the challenge. On the one hand, it was a necessity, because we felt that INAPI could contribute to generating a favorable environment for innovation in the region. On the other, it was a matter of urgency. Chile had become a high-income country, and therefore, the rate reductions that certain ISA/IPEA granted to developing countries were no longer available to Chileans. This reflection led, almost naturally, to INAPI’s responsibility to promote the PCT as a tool that encourages innovation and the internationalization of inventions. In effect, for the Chilean and Latin American inventors the international patent system is unknown and therefore complex. It works mainly in a language other than Spanish, it has high costs and it is seen as something hard to reach. That is, it is difficult to promote the use of the patent system in Chile and Latin America. Therefore, under the idea of making life easier for inventors, bringing INAPI to the ISA/IPEA function was a responsibility, and today analyzing the numbers we confirm that it was the right decision. INAPI started operating as ISA/IPEA on October 22, 2014. A little over three years from that date, during 2017, 262 patent applications designated INAPI as ISA, which means an increase of almost
20% compared to 2016 and shows a significant increase in services as ISA for foreigners. In effect, in 2017, 51% of the applications came from other Latin American countries. In other words, applicants for Latin American patents are choosing INAPI to be the ISA responsible for carrying out the first patentability exams. There is a growing demand for this service from Chilean and Latin American inventors, which are increasingly joining the international patent system. In this sense, INAPI as ISA/IPEA of PCT provides services for applicants from 12 countries who have designated them to fulfill this task for their nationals: Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Mexico, Panama, Peru and the Dominican Republic, to which Trinidad and Tobago recently joined, in 2018. Since January this year, INAPI began to carry out its ISA/IPEA role in English, resulting in great savings for those who wish to subsequently enter national or regional phases that use that language, without having to translate their application. They are directly presented in English at INAPI. INAPI has also focused on electronic filing as another facilitating mechanism. In 2017, INAPI received 141 international applications as Receiving Office, of which 67% were filed electronically through the ePCT system. Finally, regarding the technical area of PCT presentations, 45% were mechanics, 20% chemistry, 15% biotechnology, 15% electrical and 5% pharmacy. This is all good news for the PCT system, for Latin America and for Chile, but mainly for all those companies, inventors and universities that see the international patent system as its window to the world and as the way of providing us with innovative solutions that improve our lives. INAPI
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MEXICO 18
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MEXICO IP NEWS Mexico is the second country in population of Latin America with almost 124 million inhabitants, third in size of the continent and second, after Brazil, in number of members of AIPPI. It is also member of the NAFTA Treaty together with the USA and Canada. Mexico’s importance in Latin America is undoubtedly an irrefutable fact and its constant modernization is necessary. Therefore, Intellectual Property issues are important for its development, which has led to the approval of important reforms by the authorities in recent months, positioning this country with the most modern legislations in this matter. An important detail to highlight was that the IP reforms in Mexico, following the Mexican President’s policy, were carried out consulting the national and international associations that have IP among their objectives and experience in these issues. Mexico will undergo changes under the presidency of Andrés Manuel López Obrador, who promises the “transformation” of the nation. Besides, new policies on intellectual property rights are anticipated. The Director of the Mexican Institute of Intellectual Property, Miguel Angel Margain, and also the most prestigious IP specialists of this country talk to MARCASUR about all these issues. We have also included an interesting article on data protection and its evolution in Mexico. The issue of energy and especially the latest developments in the production of biodiesel is discussed by a specialist in another article. We hope that these articles will help to give us an updated view of what is happening in Mexico and in Latin America.
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Interview
MEXICO
IMPI
Interview to Miguel Angel Margain, Director of the Instituto Mexicano de la Propiedad Intelectual (Mexican Institute of Intellectual Property) 1) Mexico today, after Brazil, is the Latin American country that receives more trademark and patent applications. Besides, they increased a 12% in 2017. In your opinion, what is the reason for this? Mexico has become a world leader in the field of industrial property, and this is related to the several changes, improvements and reforms in the IP law and in the services offered by the IMPI. In addition, the facilities to submit online applications for inventions or distinctive signs, events in order to increase the culture of protection (like workshops, seminars, etc.) and activities against counterfeit, carried out by the Intellectual Property Protection Department, which also offers legal certainty for holders of any IP right. A solid institution can be translated into greater confidence for the users of the IP system and that may result in increased national or foreign investment in Mexico. 2) The industrial designs presented in 2016 amount to 6,000. Do you think this number can be increased? Of course, creativity has no limits, so we will always have designers expressing themselves and creating an innovative product, which means we must be at the vanguard in legal matters and public policy. The recent reform of the IP law offers the greatest advantages for industrial designers. The most important changes include: the publication of industrial designs applications once the formality examination has concluded, the renewal of the register every 5 years and the extension of protection up to 25 years. Another important issue for the substantive examination, according to the reform, is the definition of what should be inter-
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preted by “independent creation” and “significant degree”; both, applicants and examiners can support their opinion or resolution of the administrative process. Also, the feasibility to be a Contracting Party of The Hague Agreement is being analyzed and conducted. So, every initiative may cause an increment in industrial designs applications. 3)Many changes to IP have been approved, which are listed in another article in this magazine. Can you briefly tell us which of these changes do you understand are the most important and why? For us, to be an Office with high levels standards is very important. We work every day in order to increase the efficiency, availability and capability to respond at people requirements and IP system users. For reasons of accessibility, for example, the online systems were a big challenge for the Institute, but we achieved the whole administrative process for distinctive sings and inventions applications. Now, people do not have to travel and waste time, also this is congruent with a paperless Office. Likewise, the Institute has a trademark and inventions database, online system for technological information service, online notifications and the appointment system. Today, the most important change for the IMPI is the modifications in the IP Law. The reforms are related with administrative process, but also it included non-traditional trademarks, certification marks, geographical indications, the extended time of protection in the industrial design register and the publications in the official gazette of the industrial design applications. This will bring several adjustments in all the activities inside and outside the IMPI. Nevertheless, the benefited are owners and applicants of any IP right and this will produce innovation and development.
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4) The Madrid Protocol is applied in Mexico since 2013. What have been the advantages for Mexico? The advantages of an international treaty such as the Madrid Protocol can be reflected in economic development and innovation. In Mexico, that represents the increasing of foreign investment and free competition with new products and services. But the biggest advantage has been for Mexicans that has exported and can be benefited by the IP system and the protection of their trademarks, this gives to Mexico a greater presence at international level and the global market with products and services with excellent quality.
MIGUEL ÁNGEL MARGÁIN DIRECTOR GENERAL MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY Mr. Margáin is a lawyer with more than 25 years of experience in Intellectual Property matters. He has been professor at various universities in Mexico, an active member of several Intellectual Property Associations, and has also been recognized as a top intellectual property attorney by specialized publications. In January 2nd, 2013, the Minister of Economy, IIdefonso Guajardo, instructed by the President of Mexico, Enrique Peña Nieto, appointed him as the Director General of the Mexican Institute of Industrial Property.
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Interview
AIPPI IN MEXICO Martin Michaus is a Mexican lawyer who presides the Organizing Committee of the AIPPI Congress. In interview with MARCASUR, he makes an update on Intellectual Property in MĂŠxico besides other subjects of interest related to AIPPI.
The AIPPI group in Mexico is the second largest in Latin America. What activities do these AIPPI members do in Mexico? The Mexican Group of AIPPI, AMPPI, is currently made up of 361 members, of which 87 are also members of AIPPI. In AMPPI there are 10 Work Committees in which the topics that impact on the practice of Intellectual Property are studied and for this purpose internal meetings are held, as well as working with the authorities. AMPPI has a close communication with the Managing Director of IMPI and its group of collaborators, holds regular meetings, as well as with the Magistrates of the Administrative Justice Tribunal, the Managing Director of the National Copyright Institute and with other professional Associations in legal matters. Which, in your opinion, is the greatest contribution of AIPPI to Mexico and Latin America? AIPPI is made up of National Groups, as AMPPI, and each of them carries out various activities in their countries. AIPPI has as one of its main functions, the study and harmonization of Intellectual
Property issues. The resolutions issued at the Congresses are sent to the authorities of various countries for a better understanding and, where appropriate, the improvement of the system or Legislative Reforms that strengthen it. AIPPI supports the National Groups when they request so. AIPPI has had an important presence in America and particularly in Latin America. Do you agree? In 2014 the Congress of AIPPI was held in the City of Toronto, Canada; in 2015 in Rio de Janeiro, Brazil; and now in 2018 in Cancun, Mexico. From 2014 to 2016 AIPPI was chaired by a Chilean, Felipe Claro, and currently the first Vice President is from Brazil, Luiz Henrique do Amaral. All of that reflects in some way the importance that the region has for AIPPI and how national groups can -and should- have a more active participation. The National Groups, in coordination with AIPPI, have conducted seminars in their countries, approaching authorities to discuss or review specific topics of the subject or that affect professional practice. What are the legal novelties in IP in Mexico? On March 13, 2018, the Industrial Property Law was reformed essentially regarding to the Industrial Designs Regime, as well as the inclusion and protection of National and Foreign Geographical Indications.
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It was also introduced a new offense? Yes, regarding enforcement, the new offense consists of “producing, storing, transporting, distributing or selling products of national origin that are not duly certified with an Denomination of Origen or Geographical Indications and the corresponding Official Mexican Standard in order to obtain economic benefit for yourself or for a third party. Any act of customs clearance before the competent authorities for the introduction or exit of the same is included. What do you think about these reforms? We believe that these reforms, both, those already in force and those pending publication, will strengthen the Intellectual Property System in our country and contribute to better protection. However, there are still pending issues, such as the digital environment, the enactment of a Law to Suppress Unfair Competition, the possibility of claiming damages without exhausting the administrative instance, as is already the case with copyright. How has Mexico developed in IP matters in the last years? Mexico is currently the fifteenth largest economy in the world, has 12 Free Trade Agreements with 46 countries, 32 Agreements for the Reciprocal Investment Promotion and Protection (RIPPAs) with 33 countries and 9 agreements within the framework of the www.marcasur.com
Latin American Integration Association, recently concluded the negotiations of the CPTPP and with the European Union, and is in the process of possibly doing so with the United States and Canada. In all these Treaties, intellectual property has a fundamental role. Indeed, in the economic development of the country in the last 30 years, the strengthening of the Intellectual Property System has been strategic. This has been understood, on the one hand, by the authorities in the implementation of public policies. Mexico has adhered to several international treaties, in order to improve the access to markets and offer a superior local protection. For their part, users of the system have developed a greater awareness of the protection of intangible assets, consumer awareness, as well as a culture of legality.
YOU SHOULD KNOW THAT‌ Mar tin Michaus is a lawyer graduated from the Law School at the University Iberoamericana in Mexico City. He is a Master of Laws at the University of Illinois at Urbana Champaign, in Chicago (USA), and Doctorate in Law at the University Panamericana in Mexico City, being a PhD candidate.
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ASEPRO ECOLOGIA
technology for the production of biofuel
Gilberto Sánchez SPECIFIC IP México The increase of energy demand in the world, the depletion of oil reserves and the increase in environmental damage caused by greenhouse gases demand alternative sources of energy based on sustainable, renewable and environmentally friendly processes. Currently there is a need to find friendly solutions with nature that not only halts the deterioration of the environment, but helps to rebuild it, improving the productivity and use of the land. The Mexican company ASEPRO ECOLOGIA, has developed advanced biofuels derived from microalgae that burns in a cleaner way and works better than fossil fuels. These fuels provide answers to complex problems such as future oil shortages, energy security and environmental impact. Some of the objectives of ASEPRO ECOLOGIA are: o Produce oil and its derivatives from continuous accelerated cultures of microalgae. o Provide quality biofuel at competitive prices. o Generate profits for all participants in the value chain. o Develop and consolidate parallel businesses with the byproducts generated in production and therefore generate wealth for shareholders. o Bring productive investment to 26
different regions of the country and contribute fiscally for their development. o Transfer sustainable technology to the areas where the production plants are installed and operate. o Promote the profitability of the Mexican biotechnology industry with finished products with high added value. o Contribute to Mexico’s energy self-sufficiency. After 14 years of of analysis and research, ASEPRO ECOLOGÍA obtained two patents and has several more secrets to protect the processes and innovative devices that allow them to extract oil to produce
biodiesel from microalgae. SPECIFC IP, a Mexican law firm specializing in intellectual property matters led by its founder, Gilberto Sánchez Escárcega, is in charge of dealing with all matters related to the intellectual property of the project. The technology developed by the company ASEPRO ECOLOGÍA enabled them to raise the mass of algae biomass that can be obtained per liter of water, and also increased the amount of oil for biodiesel that can be extracted from the biomass. With this technology it is possible to obtain, in a pilot plant, 23 times more oil for biodiesel from microalgae compared to other organisms used to generate biodiesel. www.marcasur.com
On February 13, 2017 in Cunduacán, Tabasco, the construction of the plant and its start-up began. Its completion is scheduled for June 2018. Through this innovative process, three groups of marketable products are generated: a) Oil extracted from microalgae which can be used as a base to produce turbosine, for airplanes and biodiesel for transport, heating and electricity generation. b) The residual biomass of the microalgae, what remains after removing the oil, can be used for forages, aquaculture feed, food supplements, fertilizers and also high protein biscuits. c) Glycerin, which is a sub product that is extracted from the separation of oil and biomass can be refined for use in the cosmetics, pharmaceutical industries and also soap production. Liquid biofuels are oils, alcohols and other chemical compounds produced from organic material such as herbaceous, oil and woody plants, agricultural residues and forestry, as well as a large amount of industrial biological waste, and the by-products of the food industry. The main way to use liquid biofuels is as ethanol or ethyl alcohol and biodiesel. Biodiesel can be used as a replacement or combined in any proportion with diesel, as well as bioethanol with gasoline. Some of the advantages of biodiesel are: a) Better air quality. 1. 80% less carcinogenic toxins. 2. 80% less greenhouse gas. 3. 47% less solid particles. b) Benefits for the engines 1. Greater lubrication. 2. Greater durability. c) More security 1. Management. 2. Storage. 3. Transportation. Worldwide, within the period from 2009 to 2016, biodiesel obtained an increase in its global production of 134% and it is estimated that from 2016 to 2020 production will grow to 37.9 billion liters and consumption to 38.1 billion liters, demand will exceed production. The main producer of biodiesel in the world is the United States, followed by Brazil, Germany and France. The www.marcasur.com
list continues to be formed by countries such as Argentina, Indonesia, Holland, Thailand, Malaysia, and Spain. Taking the case of the United States, the price of biodiesel has remained above conventional diesel and its monthly production in recent years grew 49%. As of a couple of months ago the United States had more than 170 biodiesel production plants. Unfortunately, Mexico is not on the list of countries producing biodiesel, however, the development of this industry in our country on an industrial scale has taken its first steps through the installation of 6 production plants. These plants were designed to produce first and second generation biodiesel. The Mexican government seeks to promote energy sustainability and reduce dependence on fossil fuels as the primary source. In Mexico, biodiesel is in very high demand and has experienced high growth in production and consumption, however, due to the space required and consumption of raw materials it has not been practical to exploit this fuel as required. ASEPRO ECOLOGIA’s technology produces third-generation biodiesel. Through its patents and trade secrets, it has managed to maximize oil production to a new level, from 60 thousand liters per average hectare to 467 thousand liters per hectare. Likewise, it has been possible to optimize the cost for the cultivation and accelerated growth of the microalga and has minimized the water consumption to only 2% of its evaporation. Derived from the development of its technology, ASEPRO ECOLOGIA has created a business with high added value, which will position Mexico as a country with its own and innovative technology, producer and marketer of biofuels and biomass byproducts. With the right technology for the development of biofuels, you can achieve various benefits, such as lowering the cost of fuel production and therefore reducing its price, as well as contributing to the care of the environment.
Gilberto Sánchez Escárcega. He is the founding partner of SPECIFIC IP, with 20 years experience as a lawyer specializing in intellectual property matters. He has an acute knowledge and integral vision in the field of intellectual property, thanks to his many years of work in the Mexican Institute of Industrial Property (IMPI) and, subsequently, as a consultant and lawyer of national and foreign companies. In 2016 he established SPECIFIC IP, a firm positioning itself solidly in Mexico. He is a member of the International Chamber of Commerce (ICC). @: gilberto@specificip.com
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Preparing for the future Nuria Becerril Becerril, Coca & Becerril, S.C. México
“Times they are a’changing…” The title of this Bob Dylan’s profound and realistic song brings the opportunity to state some interesting aspects of the current events in Mexico. People in our country were part of one of the most significant events in its history. A General Election process was held on the month of July, 2018. State and local elections took place on the same day among 3400 public service positions. The process itself represented a significant change. In the largest and most voted process since 1988, voters elected a new President, 128 members of the Senate and 500 members of the Chamber of Deputies among 3400 public service positions. The outcome of this process was the indicator that people is looking for a change. Proposals of a huge and beneficial transformation of the country pledged by Andrés Manuel Lopez Obrador (AMLO) were heard and welcome. His pledge to rule out corruption, reduce violence, stop actions initiated by the previous government regarding the energy sector, education, aeronautics, science and technology, to increase the economic growth to 4% among other actions he stated in his campaign made the work. AMLO’s plan sounds ambitious, and it really is. This circumstance is definitively decisive regarding the future of this country and its placement in the global economic, social and political scenario. Mexico is a great and complex country. Despite being the 15th economy of the world representing the 1.54% of the world gross domestic product, it presents 28
many competitive advantages. It is the preferred Latin American country to foreign investment. Its privileged geographical location makes it a bridge between North America and Latin America and facilitates commerce with Europe. Mexico constitutes 66% of the total exportation force in Latin America. It is a politically
and a macroeconomically stable country. It has an open and competitive economy. It counts with a great number of free trade instruments which allow preferential access to a consumer market of more than a hundred thousand million people. The NAFTA agreement between Canada, USA and Mexico; the free trade agreewww.marcasur.com
ment with Europe - TLCUEM -, The Pacific Alliance, with Chile, Colombia and Perú; and the TPP-11 are focused on contributing to the economic growth of the subscribed countries. Therefore, Mexico shapes as a safe harbor for productive investments to anchor and as an expansion platform and of economic growth for businesses to reach the common goal of welfare. However, there are drawbacks in education, security, health, production infrastructure and productivity that have hindered Mexico to take the maximum of these advantages. Trust in governmental institutions is low, since they are highly deteriorated. The transportation sector is highly unbalanced and very costly. Many countries from Asia, Latin America and Europe are making accelerated steps forward in the international market leaving Mexico behind. Development and technological research is deficient. Mexico is still a country that relies on its maquila and raw material and agricultural products exportation rather than on technological developments generated by a research and development system healthily connected with the government and the industry. The so called triple helix: the bonding of academy and research centers, private business and government is not yet a reality. Technological progress is still far away. In view of the self-imposed challenge to transform Mexico President Lopez Obrador gathered a team to work on the “Proyecto 18”, a plan for this presidential period that makes an assessment in different areas like Policy and Government; Education, Values and Culture; Economy and Growth; and Social Development in order to generate a different vision and therefore, different actions to take in pro of the positive transformation and growth of this country. This “Project of a Nation”, led by Alfonso Romo Garza, can be found at http://proyecto18.mx/ Within this environment of change, it is vital to focus on Intellectual Property (IP) matters. Where does Intellectual Property enter in the plot? What is the role that IP will play in this transformation period? Intellectual Property rights, as intangible assets, are important instruments of negotiation and commercial relations. Technological development highly depends on a healthy and effective Research and Development system that generates patentable technological developments www.marcasur.com
which, in turn, build a robust and strategically managed technology transfer structure that generates a virtuous circle of progress and economic growth. A fundamental issue of Project 2018 is to generate and modify the whole scientific and governmental generation of knowledge. CONACyT, the science and technology counsel in Mexico is going to be restructured to input new policies and to promote the formation of new industries according to our context as a country. Therefore, the allocation of public or governmental funds to private businesses will be suspended. Instead, it will be promoted that these businesses contribute to the technological development of the country by making non-repayable monetary contributions. CONACyT will only coadyuvate to make the approach between the scientists and businesses. Research, government and private industries interconnections will definitively have a different platform of development. Therefore, technology transfer will take a critical role in entering the virtuous circle of economic growth. The plan also proposes to change the way of assessing and valuating scientific work. The current system is based on evaluating “productivity”, which has caused that volume is privileged over quality of the scientific work, causing simulation practices. This is a major change that will have unprecedented effects on the scientific and the private sectors. The Mexican IP Law was reformed just before this period of elections. It was the most important reform of the Law in 25 years. There were significant modifications regarding industrial designs, the most significant being the modification of their validity. The term changed from a 15 year term to a 5 year term renewable up to a 25 year limit. The criteria of “independent creation” and “significant degree” were incorporated. These modifications were approved in order to harmonize Mexico’s criteria with the International standards on the basis that Mexico will very probably adhere to the Hague Agreement Concerning the International Registration of Industrial Designs. Geographical Indications were also incorporated, described and regulated in the new reforms of the IP Law. New types of trademarks were incorporated as well. Non-traditional trademarks – smell, sound and holographic-, Certification
Marks, and new criteria for Notorious and Famous trademarks were also included in the IP Law. Regarding plant varieties, Mexico is also evaluating its posture regarding UPOV ‘91. Mexico is up to date, a member of the UPOV ’78 agreement. All these modifications were made in order to provide Mexico with tools to take part in the global economic markets, that is to say, to give the country alternatives to negotiate in a better way with other countries by being aligned to a global structure. This year 2018 is decisive to our future. It is marking a new reality and a different way of life in the political, scientific, technological and economical and business context. We must prepare for this transformation being aware of the changes and assessing and taking decisions that give us drive to our own personal and professional growth which will be our instruments for collaborating to the growth and development of our country. As Bob Dylan’s song wisely teaches, we better start swimming, for the times they are a’changing.
Nuria Becerril joined Becerril, Coca & Becerril, S.C. in 1998. As par tner of the firm she focuses her practice in business development of the firm. She has professionally developed in Technical Patent Analysis and formalities, IP Management, Legal Marketing, Editorial and Social Media Management. She contributes in national and international publications specialized in the Intellectual Property area. She is an active member of AMPPI where she collaborates in the Communication Commission and an active member of INTA. @: rbecerril@bcb.com.mx
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Constructing a renewed Trademark System in Mexico Jose-Juan Méndez Méndez+Cortés SC México A strong trademark system is a key tool for boosting economic growth and Mexico knows it. We are on the move!!! Since 1994, our Mexican Trademark System has been constantly evolving; the implementation of an opposition system, the incorporation into Madrid, are some examples of the efforts made by the authorities to manage the challenges that the new trends and the technological evolution bring to the global market. However, if Mexico was looking for new opportunities for trade, deep changes were necessary, complying with international standards and commitments. Particularly, free trade agreements, [European Union, North America Free Trade Agreement (NAFTA), and Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP)] among others. Accordingly besides geographical indications and design patents reforms made at the beginning of the year, on trademark law, the following reforms were implemented. We are explaining those last changes hereto. This is how, on May 18, 2018, the deepest reforms during the last 25 years were implemented into the Mexican Trademark Law. This set of amendments that will enter into force on August 10, 2018, recognizes non-visible signs as trademarks and includes new improvents that will benefit the trademark prosecution process and will increase the protection of the owners rights. In short, this amendment establishes the following changes: •
Trademark are not limited to visible signs anymore. Thus, protection to smell marks, sound
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marks and holograms will be allowed. Even more, the law will recognize the protection of trade-dress as a trademark.
rights, is strengthened, avoiding the registration as trademark if the authorization of the owner of the rights is not granted.
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The acquired distinctiveness (or “secondary meaning”) is recognized too.
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Letters of consent and coexistence agreements will be accepted if the trademarks in conflict are not identical and covering identical products/ services.
Despite some additional changes to the Mexican Trademark Law are still pending, particularly for the enforcement of rights, these new implementations to the trademark law will reinforce the Mexican position as a player in the international trade arena, giving legal security to investors.
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The rules for the use of collective trademarks are specified.
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Certification trademarks are recognized, and geographical indications can be protected as certification trademarks too.
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The condition of registration will be required for those trademarks intending to obtain a declaration of fame or notoriety.
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The protection of the heading class will not be longer accepted. Instead, the clear specification of the products or services on which the trademark will apply, becomes mandatory.
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The current opposition system will become binding. Thus, the authority will be forced to issue resolutions considering the grounds of the opposition.
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Trademark owners will be required to declare the real and effective use of the trademark after the first three years of the granting date and once the registrations are renewed.
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Bad faith is incorporated as a ground for oppositions and invalidations.
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The protection of the image, appellative and voice as copy
We are on the right path and we expect to continue in this way, working for the better!
J-J MENDEZ, is the founding and managing partner of MENDEZ + CORTES, Mexican firm specialized in all aspects of IP law. With more than 25 years of experience, he is recognized by clients and peers as a leading lawyer in the field. He won the IP Client Choice Award in 2016 and legal directories praise him as a prominent and high recommendable lawyer. He is an active member of many national and international associations where is frequently invited as speaker and columnist. @: jjm@mencort.mx
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Reforms to the Mexican Industrial Property Law,
Concerning Distinctive Signs
Carolina Ponce Uhthoff, Gómez Vega & Uhthoff, S.C. México After months of meetings between the different Mexican Law Associations and the corresponding Authorities, on April 3rd, 2018, the Mexican Congress approved the amendments to the Mexican Industrial Property Law concerning distinctive signs, amendments that were published in the Mexican Official Gazette on May 18th, 2018. These amendments will come into effect on August 10th, 2018, i.e. after 60 working days of their publication. Within these amendments, Congress approved the inclusion in our law of some legal figures that where not previously contained, having our law reach a similar criterion of foreign countries and our IP law becoming more advanced vis-à-vis other developing countries. The amendments in comment include the following points: 1. The definition of “Trademark” was modified in order to include “Nontraditional trademarks”, such as scent, sound and holographic marks and is also including the protection of “trade dress”. 2. The “Secondary Meaning” doctrine has been introduced. As we know, secondary meaning arises when consumers can identify a descriptive trademark with a certain good or service over time. When this happens, a descriptive term not eligible to registration due to its lack of distinctiveness, can achieve trademark status after sufficient use has been made to prove secondary meaning. This will allow descriptive trademarks to be registered as long as they have acquired distinctiveness through use in commerce. 3. Concerning the formalities of trademark applications, broad descriptions of goods and/or services will no longer 32
4.
5.
6. 7.
be allowed and as a consequence, the goods and/or services to be covered by an application must be strictly specified. Applicants will be able to use “class headings”, but it will be understood that the application covering such description, will be protecting literally those goods/services included within the phrase; in order words, it should not be considered that by covering a “class heading” the trademark in comment will be protecting each and every single good/service covered within such class. The definition of “Bad Faith”, defined as when an application is filed contrary to good uses, commercial practices and obtaining an undue benefit in damage of its legitimate owner, has been introduced into our law and can be used as basis for cancellation. Coexistence Agreements and Letters of Consent will be accepted in an aim of permitting the coexistence in our country of similar marks, as long as their owners agree with the same. In the past, consents and coexistence agreements were rejected by the Mexican Trademark Office, by arguing a duty to protect consumers from being misled into confusion; however and due to this inclusion into our law, trademark holders will be able to coexist in our country, with similar marks. It is important to mention that the Authority has mentioned that it will depend on the Examiner’s subjective criteria whether these documents will be accepted or not, as long as they comply with the corresponding formalities, to be included in the regulations of our IP Law. Collective marks and Certification marks are now included and regulated. Before the amendment in comment, in order for a trademark owner to request the declaration of recognition of a well-known mark, it was an obligation for such owner to have a trademark
registration granted in Mexico, in order to base its action; however, such provision has been modified and once the reforms enter into effect, it will no longer be necessary to have a Mexican trademark registration in order to apply for a declaration of recognition of Well-Known marks. 8. For opposition procedures, the Authority has now included a period for filing evidences and final pleadings. All kind of evidences will be accepted, except for the confessional and testimonial. Once all proves have been offered and admitted, the Authority will open stage for filing of final pleadings, providing a 2-day term to both parties, after notification. 9. In the 80’s, the Mexican Law for Inventions and Trademarks included the obligation of a trademark holder to prove use of its mark and if no use was proven, the trademark registration was declared extinguished. In 1991 after such law was repealed and the inclusion of the actual Mexican Industrial Property Law happened, there was no longer an obligation for filing declarations of use and as a consequence, if a trademark registration was challenged for non-use, the same was cancelled by the Mexican Trademark Office. However, the new reforms include again the obligation to file a declaration of use, same that must be filed three years and three months after the trademark registration has been granted. The lack of such declaration will cause the automatic cancellation of the registration, without the need of a third party requesting the same. In this regard, it is important to mention that the obligation of filing declarations of use 3 years and 3 months after granting, will apply for those marks filed after the new reforms enter into force; i.e. if a trademark is granted after the reforms, but was filed before them, this use requirement will not apply to them. www.marcasur.com
10.
11.
I.
II.
III. IV.
V.
It is not possible for the aforesaid amendment to apply to those marks granted before the reforms take effect, as our laws can never be applied retroactively to the detriment of a rights holder. Due to the inclusion of declarations of use, trademark renewals will proceed only if a declaration of use is filed along with the renewal petition. For those marks granted before the amendments in comment, the declaration of use should be filed, but only at the time such registration has to be renewed. Nowadays, article 151 states as follows: “Art. 151. The registration of a mark shall be invalid when: It is granted in violation of the provisions of this Law or that which was in force at the time of registration. Notwithstanding the provisions of this subparagraph, the invalidation action may not be based on a challenge to the legal representation of the applicant for the registration of the mark; The mark is identical or confusingly similar to another that has been used in the country or abroad, prior to the filing date of the application in respect of the registered mark and has been applied to the same or similar goods or services, provided that the person who asserts the stronger right by virtue of prior-use, proves uninterrupted use of the mark in the country or abroad, prior to the filing date or, where applicable, prior to the date of first use declared by the person who has registered it; The registration was granted on the basis of particulars contained in the application that were false; The registration was granted in error, by mistake, or owing to a difference of judgment, there being another registration in force which is considered infringed because it is that of an identical or confusingly similar mark applied to identical or similar goods or services; The agent, representative, licensee or distributor of the owner of a mark registered abroad applies for and secures the registration of the said mark or of a confusingly similar mark in his own name without the express consent of the owner of the foreign mark, in which case the registration shall be regarded as having been ef-
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fected in bad faith. Invalidation proceedings under this Article may be instituted within a period of five years from the date on which the publication of the registration in the Gazette becomes effective, with the exception of actions under subparagraphs I and V, which may be instituted at any time and under subparagraph II, which may be exercised within a period of three years”. In this regard, amendments to the statutory terms for filing Nullity actions have been amended as follows: - A nullity action can be filed at any time, when: o A trademark was granted in violation of the provisions of applicable Law o When the agent, representative, user or distributor of the owner of a mark registered abroad applied for and secures the registration of the mark without consent of the owner of the trademark o When a trademark registration has been granted based on bad faith - A nullity action can be initiated within a 5-year term, when: o The mark is identical or confusingly similar to another than has been used in the country or abroad prior to the filing date of the application o The registration was granted on the basis of false information contained in the application o When the registration was granted in error, by mistake or owing to a difference of judgment. 12. The notifications issued by the Trademark Office will only be made through its Official Gazette. 13. The grounds of infringement were extended where it is now considered as infringement the nonauthorized use of names, pseudonyms, signatures and portraits of persons, without consent; the titles of intellectual, or artistic works and the titles of publications and periodicals distributed; the names of fictional, or symbolic characters, or real personages portrayed; artistic names and the names of performing groups. It is important to mention that as of today, the regulations to these new reforms have not been published; hence, we are not certain how these new figures will be operating. For example, we are not sure if at the time a registrant needs to prove use of its mark, it will have the obligation to file evidences, or if it would be sufficient to file a simple statement under oath. In addition, we are not sure how consent documents should be
drafted, in order for these to be accepted by the Authority, nor if documents should be filed, and at what stage, to prove that a descriptive mark has become distinctive, in order for the same to be eligible of registration. Notwithstanding the latter, we are sure that these new reforms will help us keep moving forward and evolve in a way that our country continues to be an attractive jurisdiction for the holders of trademarks, keeping us in the map as an important place to invest and do business, not only for foreign companies, but also for our co-nationals.
Carolina Ponce, began her legal practice as a Civil and Commercial litigator in 2006, and joined Uhthoff in 2008. With almost 10 years of experience in Intellectual Property, she collaborates with the trademark team advising clients in filing, prosecution, and litigation strategies in Mexico and globally. She manages several IP portfolios for some of Mexico’s most important companies. She is an active member of the Mexican Association for the Protection of Intellectual Property (AMPPI), serving on the Trade-
mark Committee and has contributed to shaping Mexican policy with a special focus on the preparation of the guidelines of the novelty exam, along with the recent amendment to the Mexican Industrial Property Law. She is also an actively involved member of the International Trademark Association (INTA), participating in events and moderating roundtables. Carolina is also the author of several articles on IP-related topics. She obtained her Law Degree in 2008 from Universidad Iberoamericana (UIA) at Mexico City. She is fluent in English and French. @: cponce@uhthoff.com.mx
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Data Protection in México
Road Travelled and Perspectives Teresa Espinosa Basham, Ringe y Correa, S.C. México It has been almost ten years since Mexico began its mainly steady journey, to providing an adequate protection of personal data in a strengthened and more solid way than in the past, when only an incipient right to privacy was protected and addressed in different ways in few pieces of legislation. Precisely in 2009, the Federal Constitution was amended to include the right to data protection as such, which protection and enforcement of applicable secondary laws was appointed to an Institute that afterwards obtained autonomy, and that now is known as the ‘National Institute of Transparency, Access to Information and Protection of Personal Data’ (“INAI” for its acronym in Spanish).
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As part of this data protection right, also at a Constitutional level, are the rights of every data subject to request access to his/her personal data, the rectification or update of personal data, to oppose to the processing of personal data for legitimate reasons and specific purposes, and to request deletion of personal data. These Constitutional amendments are key to the data protection regime as they are supreme law of the country, and are, in fact, what will guide data protection in the coming years; especially now that a new president whose political orientation is unprecedented in the country, has been elected, and whose ideas on data protection and privacy are still unknown, as during his candidacy he never seemed to consider data protection as a matter of relevance. On the contrary, the comments he made with regard to the INAI, as it is the Institute that is in charge of both, transparency and access to public information on the one side, and the protection of personal data, in private and public sectors, in the other, were directed at discrediting it, pointing out how costly it is to maintain it, and useful only to cover up corruption. In the coming months, and since the inauguration of the President will not take place until December 2018, it will be of vital importance to pay attention to any budgetary changes, mostly to INAI, that will be discussed in Congress prior to the mentioned date. Now, other factors that will intervene in what is to come for data protection in the country, are recent developments that will- hopefully- carry weight and will guide the future of data protection, allowing it to continue evolving. These
factors are the approval and deposit of the Convention for the Protection of Individuals with regard to Automatic Processing of Personal Data, also known as Convention 108, and its additional Protocol, which will come into force, for Mexico, in October 1, 2018, and the entry into force of the now well-known General Data Protection Regulation of the European Union, or GDPR. Accession to Convention 108 and its Protocol means that, as an International Treaty, it becomes supreme law of the country. Among the changes this Tretay is expected to bring, is the failitation of cooperation between Data Protection Authorities from the signatory States, as well as easing of trans-border data transfers, as States that ratified the Convention must not impose additional restrictions to data transfers to signatory States providing an adequate and similar level of protection of personal data. At this time, we cannot omit to mention GDPR, particularly its extraterritorial scope of application, which is the relevant part for this article. In one of its provisions, GDPR states that it will apply to non-EU established organisations, where they process personal data about EU data subjects in connection with: (i) the “offering of goods or services” (payment not required), or (ii) “monitoring” their behaviour within the EU. With this, companies in Mexico need to analyse if their activities fall in one of the grounds of applicability, and if so, assuming they are complying with the Mexican Data Protection legal framework they will still need to take further actions to be able to comply with GDPR requirements. Other companies, either with holding www.marcasur.com
companies in Europe or local companies, may choose to comply with the higher standards imposed by GDPR, instead of waiting for Mexican legislation to catch up with them. Going back to national legislation, following the amendments to the Federal Constitution, in 2010 the Federal law on Protection of Personal Data held by Private Parties was enacted, followed in 2011 by the Regulations of the Federal Law on Protection of Personal Data held by Private Parties, and in 2013 by the Guidelines of the Privacy Notice. These pieces of legislation compose the data protection legal framework for the private sector, and apply at a Federal- as oppose to state- level. Additionally, INAI has issued several not mandatory guides, covering various topics, such as security measures, drafting of the privacy notice, secure deletion of personal data and the processing of biometric personal data. This article is based on the abovementioned legislation, but note should be made to the fact that the Data Protection Law for the Public sector was enacted years after the former, and was therefore, based on - and to some extent improvedthe law for private parties. Since the entry into force of the mentioned law, it began an arduous process of adaptation and transformation for companies and individuals that were processing personal data into compliance, and for some it has been a bumpy road, as enforcement began soon after. The Data Protection Authority (“DPA�), INAI, may initiate procedures by its own or following a complaint from a data subject. Up until now, INAI has practically only initiated investigations when www.marcasur.com
a complaint is filed by a data subject. Focusing on the Procedure through which fines (or other penalties) are determined or imposed, it is relevant to note the sector with more fines through the years of enforcement has been, by far, the financial and insurance sector, which received up to 63% of the fines during 2015 and 2017, followed, with just a 12%, by the massive media sector. The rest of the percentage, is divided between all other sectors, which makes the types data controllers that have been fined very different. The fines that have been imposed, are due to four main reasons: (i) for processing personal data contravening the data protection principles of legality, consent, information, purpose limitation, data quality, loyalty and accountability, (ii) for collecting and/or transferring personal data without appropriate consent from data subjects, (iii) for not providing a privacy notice to data subjects, or for providing an incomplete privacy notice, and (iv) for obstructing the Verification Procedure carried out by the DPA, this is, for example, for not providing information requested by the DPA. As fines can be of up to approximately USD $1,200,000, or the double if sensitive personal data is involved in the infringement, and taking into consideration these are determined considering the economic capacity of the data controller, so far a majority of fines have been hefty, as they have been used, in part, for deterrence. From October 2015 to September 2016, approximately 60 procedures of imposition of penalties were carried out, and in the period from October 2016 to September 2017, the number of these procedures increased to little over 90. In total, from 2012 to date -one of the Commissionres of INAI recently stated- 263 million pesos have been imposed in fines; however, not all of them have been paid,
as resolutions may be appealed before Administrative Courts. Through this short narrative of facts, it is possible to notice that even when INAI has imposed some fines, the infringements that have been punished are very basic and limited mainly to complying with the information and consent principles. However, at same time, there have been important developments on data protection, especially if we consider the country started practically from zero ten years ago, and now it is even part of an International Treaty on Data Protection. Hopefully Mexico will continue the path it has chosen to guarantee the protection of personal data of individuals.
Teresa Espinosa is a senior associate at Basham, Ringe y Correa, S.C. in Mexico City. Teresa has most experience on Data Protection and Information Technology Law. Her practice is in consultancy and litigation. She has experience in practically all subject matters related to Data Protection, and she is an active member of the International Association of Privacy Professionals (IAPP), International Technology Law Association (ITechLaw) and Mexican Association for the Protection of Intellectual Property (AMPPI for its acronym in Spanish). @: tespinosa@basham.com.mx LATIN AMERICA SPECIAL EDITION 2 0 1 8
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Ip Changes Has there been an evolution in IP in Latin America in the last ten years? Absolutely, the IP has changed substantial in LA in the past decade. From the number of trademarks and patents filed annually to a more consistent treatment against counterfeiting, the market has changed enormously.
AIPPI IN LATIN AMERICA
Can we say that IP rights are properly protected in Latin America with the current legal regulations? I believe that, generally, the region has passed reasonable laws to meet the requirements of the innovation initiatives. There are countries lagging behind and still resisting viewing the IP as an important tool to assist their nationals to protect their ideas and innovation. But luckily these are exceptions. Of course, there is always room for improvements and we should not be entirely satisfied as there is potential for further modernization. Do you think that the time it takes to grant a trademark or patent in Latin America is reasonable? (Marcasur published in issue 69 a study regarding this subject). In some countries, the backlog of trademarks and patents is unacceptable. Brazil, for instance, has been a bad example until recently. The current administration of the patent and trademark office has been achieving surprising results without a major investment by the government. It is indeed a great result. The trademark examination, which used to take 7 years, has now reached 18 months from filing, according to the new director of trademarks. The goal is to decrease to 8 months in 2019. For patents, the number of opinions issued have raised tremendously and the applicants now see the effect of such push in examination. The regulations exist, but what is the effectiveness in their application? This is another problem inherent to our region. Sometimes the laws look adequate in the books, but for different reasons they are applied no so consistently. Again, we 36
Luiz Henrique do Amaral, Brazilian lawyer and Second Vice-President of AIPPI who has been on the Bureau of AIPPI for 4 years, informs us of AIPPI’s activities and IP improvements in Latin America.
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see that, despite the improvements in the laws, the countries should invest to train and educate the officers and the judges so that the laws are applied effectively. Are the Latin American judges prepared for IP issues? I believe that the level of the judges ruling on IP matters has been substantially better and we see more consistency and international standards. Some countries have even adopted IP specialized courts. In your opinion, what is the level of academic education in IP in Latin America? The universities and academic institutions are slowly altering their view of the IP system. A good example is Brazil, where the largest local patent filers are universities. The patents by professors and researchers in public institution are been valued for the purposes of the research funds and academic recognition. As for the education of IP in the graduation courses, this is another area of future improvement. The countries have to recognize that teaching IP laws and practices in the graduation grid of the engineering and business courses is an important motivational ingredient to foster IP activity in the future.
AIPPI and LATIN AMERICA AIPPI have anything programmed for Latin America in the coming years? The AIPPI World Congress will be in Cancun this year, from September 23 through 26. We expect more than 1,500 participants. The program is very comprehensive and interesting. There will be incredible networking opportunities. What would you want in your position of AIPPI for Latin America in the next years? As for AIPPI, we expect to increase our influence and participation in LA. We would promote more corporation interactions and membership. We believe that LA has all adequate conditions to rise the number of members and their activities in the region.
BRAZIL
LUIZ HENRIQUE O. DO AMARAL, Brazilian, Attorney-at-Law graduated in 1985 and Intellectual Property Agent; Senior Partner and Board Chair of the Law Firm Dannemann Siemsen Advogados and of the industrial property firm Dannemann, Siemsen, Bigler & Ipanema Moreira; Vice-President of AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) and Bureau member since 2013. Permanent member of the Board of Directors of the Brazilian Intellectual Property Association (ABPI) and former President. Member of the board of Director of LES Brasil (Licensing Executive Society);and former member of the Board of Directors of the International Trademark Association (INTA) 1999/2001.
Is Brazil the Latin America country with the highest number of members in AIPPI? During the AIPPI Congress in Rio in 2015, the number of members of AIPPI reached more than 400. Nowadays, there has been a decrease but Brazil continue to have around 350 members. What activities are carried out in in Brazil? Our activities are carried by the Brazilian Intellectual Property Association – ABPI which is the national group of AIPPI. Do you do them together with ABPI? There is indeed a very close interaction of AIPPI and ABPI. The work together to incentivize the review of laws and practice and to cooperate with the INPI, the court and the federal government.
What is AIPPI’s relationship with the authorities of the different Latin American countries? AIPPI tries to be active in the countries by the activities of its local national groups. The national groups are the backbone of AIPPI. They enlist and attract the members and organize their national groups with the view of promoting IP laws and practice in its own jurisdiction. The national groups organize events, meetings, conferences etc. in the respective countries and act in their jurisdictions to enhance the laws and to influence the changes. AIPPI International discusses the issues and attempts to harmonize the laws by passing resolutions which reflect the recommendation of the future of the laws and issues. But the national groups are responsible to translate such resolutions into practice by advocating such resolutions on a national level. The number of patent filings in many countries is still low What is AIPPI doing to make Latin America innovate more? AIPPI attempts to spread the word that the patent system assists the innovation and should be used by the local companies and inventors more often. They must trust that by mastering the patent system, the countries will enhance innovation and strengthen the local companies and inventors. AIPPI believes that LA should be the frontier of the future for innovation and has worked with the national groups in the region to promote the IP system. We encourage the national groups to be more pro-active in showing the benefits of the system and rising the number of corporations that are members and enjoy the rewards of the IP system.
Is there a relation with the authorities of Brazil? Yes, ABPI and AIPPI are very active with the INPI, the federal government, the Congress and the federal and state courts. www.marcasur.com
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Fashion and Traditional Knowledge Maria Elena Terrero Bolet & Terrero Venezuela New designs underlie the heart of fashion. The creative and imaginative design process is the engine that continuously pushes fashion to move forward, towards new frontiers. Since design is an outcome of the creative process, intellectual property becomes the tool capable of protecting these new designs. However, very often, the design industry stays short of effectively protecting them. Sometimes because they are short lived, others because those working in the industry lack the skill to properly choose the right IP tool to protect a specific design. In this process of producing new designs, and the increasing pressure for originality, moved by the markets; designers are looking to more remote sources in order to get inspiration. Fashion has thus turned to look into the vast heritage of traditional knowledge (TK). A reliable source of ideas and inspiration that is not new; because fashion has since ancient times drawn from it. TK encompasses practices as diverse as: the skills in embroidering Venetian lace, those to weave silk in Assam or the elaboration of headpieces by the American Indians. All of them are used as inspiration and may form part of designs and fashion pieces all around the world. Specific examples of the use of TK by fashion over the last one hundred years are: The harem pants and tunics of the 1910s by famous French designer 38
Paul Poiret, the beaded and feathered “African collection”, of 1967, by Yves Saint Laurent, and the stylized Indian saris and jodhpurs launched in 2007 by Hermes. More often than not, these other cultures (different from the Western culture) that work as source of inspiration are indigenous peoples. It seems obvious that the definition of a concept as TK, that comprises such a wide diversity of things raises a challenge. Although there is not yet an accepted definition of this concept at the international level, the World Intellectual Property Organization (WIPO) has proposed a pretty useful definition: Traditional knowledge (TK) is knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity. On the other hand, WIPO experts have made a distinction between TK in a general sense (when it embraces the content of knowledge itself as well as traditional cultural expressions, including distinctive signs and symbols associated with TK), and TK in a narrow sense (referred to knowledge as such, in particular the knowledge resulting from intellectual activity in a traditional context, and includes know-how, practices, skills, and innovations)1. 1
See http://www.wipo.int/tk/en/tk/
The decision of getting inspiration from a knowledge that belongs to indigenous peoples, could also be perceived (depending on a series of circumstances) as misappropriation of a knowledge (a corpus of ideas, practices, skills, techniques) that belongs to someone else. There is an implicit ethical dilemma underlying such a decision since, from the intellectual property point of view, the designer would be infringing property rights of an indigenous community. It is this dilemma what creates the opportunity for the IP attorney to act. Because the IP attorney, when is hired by the fashion industry, is the only capable of properly demarcating those cases that are an inspiration from those where there are risks of incurring in a misappropriation. It is in the latter, where the IP attorney should propose its client (the designer, the fashion industry), one or more strategies suitable to protect the specific TK of indigenous peoples in a way the client can get the desired inspiration without the risks of unknowingly incurring in the infringement of the indigenous people´s rights on TK. Regarding the distinction between inspiration and misappropriation—a task that is responsibility of the IP attorney, jointly working with the client—, it would be interesting to quote Wend Wendland, WIPO’s Director: Brand owners sometimes copy, draw on, or www.marcasur.com
Oskar Metsavaht, founder and creative director of Osklen, has created, for instance, a black dress with a printed image of an Asháninka person, coats and skirts based on the chusma traditional dress, a white dress with printed feathers and dresses and skirts with Asháninka’s black geometric patterns. The use of this traditional knowledge, image and name was authorized by the indigenous community. Osklen signed a contract with the indigenous community in accordance with their commercial uses and traditions.” Wendland´s quote provide a conceptual basis for the IP attorney to devise a strategy to protect the IP rights of indigenous peoples. Of course, previously the IP attorney would have the task of carefully appraising each case to decide whether those rights do indeed exist. Even when such an argument is weak, and the existence of referred rights is not convincing, the IP attorney, the designer and the fashion industry could develop a scheme of collaboration with indigenous peoples more based on social responsibility principles than on legal issues. Then, even if what is defined as traditional knowledge, is rather public domain that should not (cannot) be protected, IP attorneys (appealing more to ethical than to legal considerations) should encourage the fashion sector, and the designers, to support and collaborate with indigenous peoples in order to guarantee their TK is protected for the future.
are inspired by indigenous creativity when designing their brands or marketing goods and services. This is understandable, as indigenous art, designs, names, and symbols are often exquisitely attractive and distinctive. In addition, the use of indigenous words, imagery, and iconography (...) can lend a desirable air of “authenticity” and a powerful “local” feel to a product’s brand. However, there are risks for brand owners who do not involve the community in a respectful manner. (...) Second, an opportunity is missed for a win-win collaboration between the brand owner and the community, in which the community can benefit economically, socially, and culturally and the brand owner can enjoy the enthusiastic endorsement of the community and achieve a broader public relations benefit 2. There are several examples of the win-win collaborations suggested by Wendland already occurring. One that is worth mentioning is the successful protection of traditional knowledge in Brazil. This is the story of the famous brand Osklen and the TK of the Ashaninka. A partnership was built between fashion brands and indigenous and local communities. This agreement shapes an alternative approach to the current fashion system, based on the respect of the local and indigenous community rights. In Brazil, the Asháninka live in the rainforests of the State of Acre. “The traditional dress, the chusma, a piece of fabric made from cotton and woven by Asháninka’s women on looms, with vertical lines for men and horizontal lines for women and can be ornamented with feathers and beads. It can take up to three months to be complete. Osklen, known for being the pioneer in the production of sustainable garments, has a collection named Asháninka composed by garments inspired by the Asháninka culture.
María Elena Terrero, Partner, Bolet & Terrero. Attorney at Law from Universidad Católica Andrés Bello (1997), with courses at the Franklin Pierce Law Center (2003). At the firm Terrero has held a variety of positions. She is both Head of the International Department and Head of Special Projects Coordinator with a practice that covers patent brokerage services. Terrero is member of INTA’s Harmonization of Trademark Law and Practice Committee for 2018-2019. She coordinates pro bono projects in the firm. @: mterrero@byt.com.ve
2 https://www.inta.org/INTABulletin/Pages/ Wend_Wendland_Interview_7306.aspx
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Panama and the Intellectual Property of Indigenous People Alexander E. GarcĂa LĂłpez CLD LEGAL PanamĂĄ For some time, and with ample justification, the topic of diversity is the subject of many debates at all levels of our society. There are different ways of seeing and understanding the world, a situation that, in the case at hand, causes and supports the existence of a type of specialized legal protection, that of indigenous peoples. These groups are culturally different from the society of which they are part and thanks to social and legal evolution, today they enjoy, to some extent, a series of rights whose concept is broader, precisely because of that recognition of its diversity. Today we bear witness to how these peoples have managed to maintain and preserve their traditions, customs and institutions, which are legally protected and recognized in each of their countries and internationally. We see how the identity of indigenous peoples has been reinforced collectively, since it is based on entire communities that, from generation to generation, have built that identity. A document crucial to our analysis is the Universal Declaration of the United Nations on the Rights of Indigenous Peoples, approved during its 107th plenary session on September 13, 2007. Within its broad spectrum, there is a vitally important article to our analysis: Article 31: Specifically mentions the right of peoples to maintain, control, protect and develop the intellectual property of their cultural heritage, which includes their traditional knowledge, their cultural, scientific and technological expressions, genetic resources, seeds, medicines, 40
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knowledge of flora and fauna, oral traditions, literature, sports, traditional games and visual and interpretive arts. INTELLECTUAL PROPERTY OF PANAMANIAN INDIGENOUS PEOPLES The legal framework of this piece is LAW No. 20 of June 26, 2000, which establishes the special intellectual property regime on the collective rights of indigenous peoples, for the protection and defense of their cultural identity and traditional knowledge. Purpose It is set forth by Article 1 of the Law, which establishes that its purpose is to “protect the collective rights of indigenous people on the intellectual property and traditional knowledge over their creations. In that sense, this legislation establishes what these protected rights are: • Inventions, models, drawings, designs, innovations contained in images, figures, symbols, graphics, petroglyphs and other details; • Cultural elements of their history, music, art, traditional artistic expressions, susceptible of commercial use. Additionally, it is established that in order to highlight the sociocultural values of indigenous cultures and to do them social justice, a special system for the registration, promotion and commercialization of the aforementioned rights is thereby created. From the contents of Article 2 of the Law, it is possible to determine what is to be considered “Cultural Heritage,” as it establishes that “Customs, traditions, beliefs, spirituality, religiosity, cosmic worldview, folklore expressions, artistic manifestations, traditional knowledge, and any other form of traditional expression are part of it.” A crucial element of this Law is the establishment of the prohibition of exclusivity by unauthorized third parties. Only indigenous peoples may request registrations of copyright, industrial models, trademarks and others, related to the collective rights established herein. Objects Susceptible to Protection Within the group of indigenous peoples whose traditional costumes are protected by law, we have the well-known Kuna, the Ngöbes and Bugle, and the lesser www.marcasur.com
known Embera and Wounaan, Naso and Bri-Bri. It is worth mentioning that the first collective rights registry was given in 2002, for the “Panamanian Kuna Mola”, known as “Morra” in the native language of said group. In the same way protection is provided to the dress of the Kuna woman, called “Dule Mor”. In that sense, in 2003, the Ngöbe Bugle community requested the registration of the “Naum” or “Nahua” (Guaymi robe), “Kra” or woven bags, and “Kade” or Chaquiras, as well as the Ngöbe hat. More recently, the Department of Collective Rights of the General Directorate of the Registry of Industrial Property has processed the granting of collective rights to the Embera and Wounaan community, specifically on wood carvings, “Laua” (sculptures with vegetable seed) and basket weaving. It is important to highlight that, by Law, the technical description of the rights granted must be contained in their respective registers. In addition to traditional costumes, the Law continues to detail other rights that are also protected, such as their musical instruments, music, dances, oral and written expressions; instruments of traditional work and art, as well as the technique for its preparation, expressed in local raw materials, through elements of nature, its processing and elaboration. Thus, the Law, through its sixth Article, ends up establishing broadly that collective rights are all those objects susceptible to protection that can be registered, with the purpose of protecting their originality and authenticity. Complementarily, we can say that Executive Decree No. 12 of March 20, 2001, whereby Law No. 20 of June 26, 2000 is regulated, determines the concept of Collective Indigenous Rights: “They are the indigenous cultural and intellectual property rights that refer to art, music, literature, biological, medical and environmental knowledge, and other aspects and expressions that have no known author or owner, nor date of origin and is the heritage of an entire indigenous people.” Registration of Collective Rights The regulation clearly establishes that the only ones authorized to request registration before the entity created by Law therefor, the Department of Collective Rights and Folkloric Expressions, will be the general congresses or indigenous traditional authorities.
These registrations will not have an expiration or end date, do not require the services of a lawyer and are exempt from any payment. Actions against these records must be notified personally to the general congresses. Prohibitions and Sanctions Law 20 establishes a series of amendments to existing legislation: first to the Tax Code, whose Article 439 establishes the prohibition of the importation of traditional costumes, musical instruments and artistic works as well as non-original products, engravings, embroideries or fabrics or others that imitate them. Based on what is stated in Article 439, it also amends Law 30 of 1984, with regard to the crime of contraband, by adding a subsection to Article 16 of said Law. Finally, it authorizes the Ministry of Trade and Industry to authorize the industrial reproduction of traditional costumes and other collective rights, but with the prior and express consent of the general congresses and indigenous councils.
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 (Internet Committee), ASIPI (Sports Law Committee), ALADDE (Latin American Sports Law Assoc.). Twitter: @AlexGarciaLopez Linkedin: www.linkedin.com/in/alexgarcia LATIN AMERICA SPECIAL EDITION 2 0 1 8
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Can a third party sell my brand without my authorization?
Regarding Parallel Imports in Costa Rica Marianella Arias Chacón Divimark Abogados Costa Rica Yes, in Costa Rica a third party can sell products with the trademark of another, even when there is no express authorization from the owner of the trademark. This statement, however, is not absolute. The purpose of the exhaustion of intellectual property rights is to limit the exclusive exercise that these rights confer on their holders. Thus, intellectual property rights are exhausted once the owner has placed the goods protected by the trademark in the marketplace or has authorized a third party to do so, as a licensee or distributor. The international exhaustion system is applied in Costa Rica, which is materialized in article 27 of the Law of Trademarks and other Distinctive Signs that states: “The registration of the trademark does not confer on its owner the right to prohibit a third party from using the trademark, in legitimately marked products that have been introduced in commerce, in the country or abroad, by said owner or another person who has the consent of the owner, provided that those products and the containers or packaging that are in immediate contact with them has not suffered any modification, alteration or deterioration and that does not cause damage to the owner or right-holder “. This provision legitimizes the figure of parallel imports in our country under the conditions indicated in the article cited www.marcasur.com
above. If the products are sold in their original form, without altering their presentation or brand and have entered the country legitimately and observing all customs regulations, they may be sold by third parties. Understanding the rights granted through parallel imports, it is important to point out a major limitation on parallel imports of products in Costa Rica, which is essential in order not to infringe on the exclusive rights granted by the brand to its owner. Although third parties, unrelated to the owner, can sell the products freely by fulfilling the requirements indicated above, they cannot promote or advertise any type of products and their brand, as this right is exclusively reserved to the owner of the brand . All advertising, promotion, publicity, its forms and communication channels, in short, the commercial positioning of the product in the market, is the sole right of the owner of the brand, despite parallel imports. Another limitation relates to the marketing of foodstuffs, cosmetics and medicines, for which health registration is required, and our health authorities regulate parallel imports by providing that whoever wants to import a product, other than the registered owner, must register as an importer. In this sense, jurisprudence from the Constitutional Court of our country has resolved the dilemma regarding the confrontation of pharmaceutical products placed in local commerce by its manufacturer or owner, and on the other hand, those imported by a third party, indicating that imports are
lawful if they have observed the provisions of law previously mentioned for this type of products. We conclude by confirming that both by legal provision as well as judicial jurisprudence, parallel imports are allowed in Costa Rica, as long as the above mentioned provisions have been observed. Management of the brand’s commercial image and its dissemination and advertising promotion in the marketplace remains the owner’s sole and exclusive right. Whoever may import a product adheres in practice to the brand’s market conditions, fully respecting the image of the product and its brand, and ultimately becoming a non-exclusive selling agent for the brand.
Marianella Arias Chacón, Par tner 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. Distinguished partner Band 1 Chambers and Partners Latin America. @:marias@divimark.com LATIN AMERICA SPECIAL EDITION 2 0 1 8
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Claudia Serritelli Paula Galván Estudio Chaloupka Argentina
Amended IP Law in Argentina Requires Changes in TM Strategy
The beginning of year 2018 shook Argentine IP practitioners with the enactment of Emergency Decree No. 27/2018. While it seeks to streamline the procedures carried out by the public administration, this Decree has a tremendous impact on IP legislation, with a particular emphasis on the trademark application process, as this article will describe. Argentine Trademark Law No. 22.362 was substantially amended by the new Decree. The most significant change is that the Argentine Trademark Office will now have the authority to decide administratively most of those conflicts that, up to this date, had to be brought to the courts for decision. Indeed, according to these recent amendments, the applicant and opponent will have a term of 90 days as of official notification of the opposition to reach an amicable settlement resulting in the withdrawal of the complaint. In the absence of an amicable agreement, it will be the Trademark Office -after reviewing the arguments of the opponent and the defense of the applicant-, which will decide on the merits of an opposition, and will dismiss it, or otherwise decide the rejection of the opposed mark. This is a complete change of the opposition proceeding, because –prior to this new regulation- an opposition automatically blocked the progress of the opposed mark –regardless of the grounds used to sustain the complaint-, and it was a burden on the applicant to privately negotiate with the opponent to unblock his trademark application, or to bring the matter to the court for decision, vis-à-vis the inability to reach a settlement. Prior to this amendment, the term to negotiate a settlement between the parties was of 365 days, and hence this reduction to 90 days is a major feature of the overall change. 44
Emergency Decree turned into new Law will become operative as regards opposition cases as of September 17, 2018. The changes introduced by Emergency Decree No. 27/2018 were ratified and reaffirmed by the enactment, in midJune 2018, of Law No. 27.444. The administrative regulation required to implement the amendment was issued on July 18, 2018, and will enter into full force and effect as of September 17, 2018. Under these circumstances, and further to the enactment of Law No. 27.444, opposition cases where no settlement is reached between the parties, can no
longer be taken to the courts for decision. Instead, such cases will be decided by the ARPTO, following this new procedure. Moreover, additional internal regulation issued by the ARPTO in this connection also reaffirms that, as of June 18, 2018, the ARPTO no longer receives undue opposition lawsuits, which were formerly received by such Office, and then submitted to the Federal Courts. This relevant news of course requires adjustments on the strategy to be followed in each matter. Indeed, a practitioner representing the applicant may notice as of the filing of the opposition if it is convenient for a given matter to be left for decision by the Trademark Office, or www.marcasur.com
if all efforts should be endeavored to attempt reaching a private agreement with the opponent, because the Trademark Office will likely decide in favor of the opponent. Similarly, in the absence of an agreement, the opponent will need to re-evaluate the opposition, for he will be required by the Trademark Office to ratify his interest in the opposition, by paying an additional fee, expanding the grounds of the opposition, and offering all evidence supporting his position. This action should be completed within a final term of 15 working days, through a procedure that is nearly identical to the former lawsuit on undue opposition, which had to be submitted to Federal courts, though it now has to be submitted to the Argentine Trademark Office. The applicant is then served notice of the arguments filed by the opponent, and is given a chance to file a substantial defense thereto, also within another term of 15 working days. The decision of such Office can only be contested through an appeal, to be submitted to the Federal Court of Appeals. Broader scope of authority of the Argentine PTO demands thorough strategy New rules as set forth in recent Law 27.444 further provide for the ARPTO deciding on cancellations based on nonuse, and even nullity of trademarks in the case of trademarks granted against the provisions of the TM law, which up to now have always been decided by the Federal Courts of Law. The ARPTO will be empowered to even ex officio declare the cancellation or nullity of a trademark whenever deciding on a given matter. This again will be a circumstance to take into consideration when deciding upon filing an opposition. Prospective opponent should seriously take into account whether filing the opposition could entail putting at risk an unused trademark, or an otherwise weak trademark registration. This potential risk should also be assessed considering that new trademark rules allow for partial cancellation of a trademark as regards those products or services on which same has not been used in the country within 5 (five) years prior to cancellation claim. This is another relevant change of scenario regarding necessary use for preventing a cancellation action. Previously, no partial cancellations were allowed, and any (non-fake) use on any product or service –regardless of the www.marcasur.com
class where the mark was registered- was sufficient to repel a cancellation action. Now it is expressly established that a trademark registered for -though not used on- a specific class or specific products or services, will not be cancelled if same has been used in the marketing of a product or rendering of a service associated or similar to those for which the mark is effectively registered, even if pertaining to other classes, or if the mark forms part of the designation of an activity related to such products/services. This clearly puts a restriction to defensive trademarks, which have been so far openly and widely accepted in our system. It is further set forth that after the fifth year as of grant of a trademark and before the expiration of the sixth, the trademark owner should file a sworn statement on the use of the mark. This rule still lacks further regulation regarding consequences for failing to comply with the filing of the statement and/or with the use requisite, but same will surely be issued in brief. However, at the time of writing this article by mid-July, 2018, none of these substantial changes (nullity and cancellations to be decided by the Trademark Office, and the filing of a mid-term sworn statement of use) has become fully operative. Indeed, the recent regulatory decree does not refer to them, and instead states that if any of the parties files for the cancellation or nullity of a trademark in the conflict, such request should be submitted to the Federal Courts until the ARPTO issues the administrative regulation to decide on requests of this sort. The new rules are aimed in theory at accelerating registration proceedings, but it is still to be seen how the new “decision making process” now in the hands of the ARPTO is implemented and if in practice it effectively works to the benefit of trademark owners, as planned. For the time being -and whilst further rulings are still to be issued-, transition stage is causing delays in proceedings and of course, uncertainty as to the criteria to be followed by the ARPTO, and actual time involved for resolution of pending and future matters. It is furthermore still uncertain who will decide the pending lawsuits filed in opposition cases, and also when they will be decided. Once the system starts operating, we shall be able to judge on its merits. Let´s hope for the best or at least for a shortened TM registration process.
Claudia Serritelli, is Head of the Legal and Patent Depar tments. She is an attorney and English public translator with extensive experience as IP Counsel, advising domestic and foreign clients on trademark, patent and legal matters, as well as litigation. She is also a regular contributor of various articles related to IP matters. Claudia is fluent in Spanish, English and Italian, and heads and coordinates the Patent Department and the litigation of the firm. @: cs@chaloupka.com.ar Paula Galván, is Head of the Foreign Trademark Department. She is a lawyer with over twenty years of experience in the firm, and is fluent in Spanish, English and French. Even though her practice focuses on trademark matters, she is also a member of the Legal Department, and therefore has the chance to regularly advise client on general IP-related matters, and to participate in litigation. She also is a regular contributor of various articles related to IP matters. @: pgalvan@chaloupka.com.ar
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Riding the wave of Artificial Intelligence
Gabriela Bodden Eproint Costa Rica A step ahead in time It´s no news that a brand encompasses it all, and that there is a constant battle to ensure its adequate protection within the intellectual property field. It is also pretty accurate to state that many companies depend heavily on their social media reputation both online and offline. This goes hand in hand with the ability that artificial intellegence (AI) can provide when faced with conducting 46
IP searchs both online or within certain systems that are utilised by governments in order to ensure robust protection. The merging of cloud based computing, big data analytics and machine learning are playing a big role in powering AI which is now available in many areas of technology such as facial recognition, which has totally impressed me in the last years, because Apple may very well pose the largest database of faces and finger prints, and this makes one think. A select group of companies including Samsung, Apple, IBM, Google, Amazon, Microsoft, Samsung, AT&T,
amongst others, are pioneers in patenting fundamental AI technology directed to machine learning, neural networks, natural language processing, speech processing, expert systems, facial recognition, robotic and machine vision. In turn, this fundamental AI technology is being adapted and utilized within a wide variety of industries including health care (human and animal), genetics, biotechnology, manufacturing, and transportation to create AI-based products that are better, more useable and intuitive than before (e.g. machine-based interlocutors, vehicle production, smart surgical tools, www.marcasur.com
warehouse robots, self-driving cars, etc.). A Chilean company is the creator of a system capable of reading and ranking CVs, conducting examinations, interview via video. This is simply incredible! Many companies are investing millions of dollars in innovation research focusing on AI, others develop and sell AI based technology and are creating strategies to adequately protect their findings in the form of patents, copyright and trade secret protection and others. No doubt Latin America and the Caribbean is attractive but we are well behing other economies and there is no time to be lost! Whilst patent protection is the natural route, the likelihood of patentability is a factor to be considered. For instance in the US and Canada AI technology can be protected by means of a patent, whislt in some Latin American and Caribbean jurisdictions this is a challenge and not yet possible or viable. AI protection via trade secret rout may not be the most secure protection as it is dependable on whether the parties involved can keep the confidentiality involved, however, when used it is aimed at diverse forms of compilated information, commercial methods, designs, patterns, source codes of all sorts, certain techniques, contents of AI training sets that cannot be protected via the traditonal patent route. This sort of protection is readily available in Latin America and the Caribbean via strictly redacted contracts (unlimited in space and time) and in some jurisidictions specific legislation has been put in place. Copyright is feasable to protect literary works, compilations of data, computer source codes, user guides and product related documents involved within the AI based technology and is widely utilised www.marcasur.com
in the Caribbean and Latin America, however, it is worth noting that Copyright legislation in the Caribbean in general is aged. It is important to note that the data in itself is not protected via copyright, but that in some jurisdictions Data Proctection Acts have been enacted, whilst this possibility is null in others. Many years ago entire legal teams were conducting manually intensive tasks, which were prone to high levels of errors. With the introduction of AI the possbility of incurring into errors has been tremendously reduced as it is utilised in complex cognitive tasks such as IP searches, IP watching services in an efficient and speedy manner! No doubt AI is in vogue today along with its many advantages such as machine learning, the capability of searching algorythms, data-driven applications capable of recognising certain patterns, and we
are benefiting from it in our region of the world! AI has evolved to a stage where robots, non-human beings, and the likes are capable of developing new inventions and sometimes where the intervention of the human mind is minimal. The question here is: are we prepared in Latin America and the Caribbean to afford Ipright protection to the creations of machines and are these machines subject of ownership at the Registries? Are we prepared for this?
Gabriela Bodden, with 20 years of experience in the management of complex intellectual proper ty portfolios in the Caribbean and Latin America, Gabriela is a seasoned expert in international IP law. Her practice focuses primarily on all prosecution and litigation IP law matters, as well as advertising and legal disputes in anti-counterfeiting and infringement actions in the region. Ms. Bodden counsels and devises suitables strategies for clients in the selection and registration process of IP rights and their enforcement adding a significant competitive advantage to their portfolios. @:gbodden@eproint.com LATIN AMERICA SPECIAL EDITION 2 0 1 8
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The 10 most valuable Top 10 A rich continent. Latin America exhibits a variety of resources unique in the world, from the diversity of its natural ecosystems, the warmth of its people, as well as to an increasingly powerful universe of brands and companies, expanding both in the region itself and towards the rest of the world. In this last section, the figures are eloquent: the 50 most valuable brands in Latin America are equivalent to a total value of US $ 130,800 million, 18% more than in 2017. This is the conclusion of BrandZ’s annual ranking: The Top 50 Most Valuable Latin American Brands 2018”, a detailed study prepared by the global communication group WPP and its consultant Kantar Millward Brown. The list is built through a methodology that combines the public financial information of the companies and consumer opinion surveys. The study shows that beer, foods and personal care brands are the most valuable within the context of the region (37% of the total value). They were followed by financial institutions (21%), service companies (20%), retail (17%) and companies dedicated to business to business represented by the acronym B2B (5%). Below, a detail of the most noted brands.
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2. Corona Extra (Mexico). Beer
3. Skol (Brazil). Beer
Belonging to the Mexican giant Grupo Modelo, Corona is synonymous with beer since its creation in 1925. Its name transcended the Aztec market to conquer the gondolas of over 180 countries around the world. Corona is the bestselling Mexican beer in the world and the best-selling import beer in almost 50 of the countries in which it is present, including the United States. The brand gained first place in the ranking with an 8% growth in its value. This result is explained by its sales supported by the weight of the brand, but also by the impact achieved by its effective communication strategy. With the advertising campaign titled “Desfronterízate” (remove your borders) Corona positioned its brand uniting not only Mexicans but speaking to the entire continent, removing borders and engaging to a feeling of Latin American unity. The campaign “Desfronterízate” achieved the “highest levels of advertising effectiveness of any brand in 2017. Corona has become a “lovemark” by consumers, with whom it has achieved a loyal and lasting engagement. No wonder then that this 90-year-old beer has become “one of the most iconic products of Mexico globally,” the report concludes.
Beer is high valued in the region. Following Corona’s leadership, Skol is the second most valuable Latin American brand. It is part of the portfolio of the international group AB Inbev. This position is due to its leadership in a competitive market like the Brazilian, where it became available in 1967, just three years after its creation in Europe. Skol is one of the favorite brands among young consumers, connecting with them not only through advertising campaigns but also by sponsoring musical events throughout the country. Skol’s messages focus on the idea of enjoying life and celebrating diversity, leaving behind preconceived ideas. One of Skol’s distinguishing feature is its innovative character throughout its more than 50 years of history. In 1971 it became the first canned beer in the Brazilian market; in 1989 it was the first in Brazil to sell in aluminum cans and, in 1993, launched longnecked bottles. Its communication and its logo has also evolved over time, the circular arrow, which has been recently incorporated into the letter “O” in the Skol name. By the way, the name comes from the Swedish word skål, used to give a toast and which means” to your health”.
Brand Value: US$8.292 million (+ 8% in relation to 2017)
Brand Value: US$ 8.263 million (+1% in relation to 2017)
4. Bradesco (Brazil). Bank Brand Value: US$ 7.018 million (+ 58%).
One of the novelties of the new edition of the ranking is the entry of Bradesco bank, from Brazil. The year 2017, marked a turning point in the company’s history by becoming the secondlargest private bank in the country, through the acquisition of HSBC’s operations in Brazil. At that time, HSBC had over 850 branches and 20,000 employees throughout Brazil. It is also among the top 40 banks in the world based on market capitalization. The institution has over 3,000 branches and is listed as the largest employer of the private branch in Brazil. Bradesco was established in 1943 in Marília, São Paulo, under the name of Banco Brasileiro de Descontos. “Its initial strategy was to attract the small businessman, the public servant and people of modest possessions, unlike the banks of the time.
5. Itaú (Brazil). Bank
Brand Value: US$ 6.198 million (+ 42%). Itaú is currently Brazil’s largest private bank in terms of total assets and the largest financial conglomerate in Latin America, and within the top
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brands in Latin America 30 largest banks in the world in terms of market value. The company started its activity in 1945, in São Paulo, but it was the 2008 merger of Banco Itaú and Unibanco that gave the brand its current scale. This giant of the financial sector operates in 19 countries in America, Europe and Asia, with 5,000 branches and 28,000 ATMs. Its tagline “Feito para Você” (“Made for you”) synthesizes its leitmotiv aligned to its building on its reputation for innovation, efficiency and personalization.
5. Telcel (Mexico)
Telecommunications Brand Value: US$6.048 million (+ 32%). Founded in Mexico in 1989, Telcel is the leading mobile phone company in the country. Currently, its services - in mobile telephony, fixed telephony and broadband - are used by more than 70 million users. The brand is part of the telecommunications giant América Móvil, the largest provider in this sector in Latin America and third in the world. The conglomerate serves more than 328 million customers in 18 countries in the region. The corporation is owned by the famous Mexican magnate Carlos Slim, one of the richest men in the world. His assets amount to US $ 67,000 million, according to Forbes.
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6. Falabella (Chile)
Retail Brand Value: US$5.373 million (+ 26%). Falabella is one of the most successful multinational companies of Latin origin (what is known as multilatinas) in the region. It is the leading department store retailer in its native country, Chile, where it has more than 40 branches. But its success transcended the limits of the Cordillera expanding to other countries such as Peru, Argentina and Colombia. The variety of products is not the only attraction of this brand. It has been an innovative and trendsetting brand in the market. It is the first Chilean retailer to develop an online platform offering a range of products. In fact, Falabella is a leader in e-commerce development in its country. Surely the company today far exceeded the expectations of Italian immigrant Salvatore Falabella, when he opened his tailor shop in 1889.
7. Brahma (Brazil),
Beer Brand Value: US$4.778 million (+ 2%). The second best-selling beer in Brazil was born by Joseph Villiger, a swiss native, who had settled in Rio de Janeiro and decided to begin brewing the beer he missed from home. The brand was created in 1888 by the brewery Manufactrura de Cerveja Brahma Villiger & Companhia. Today, Brahma is part of the portfolio of AB Inbev, the
world’s largest brewer and is marketed in 31 countries besides Brazil. The brand is recognized for its ingenious and fun advertising campaigns.
8. Globo (Brazil)
TV Station Brand Value: US$ 4.318 million (N/A). Globo debuts in the Brandz ranking. The most important channel in Brazil has grown from a single channel serving Rio de Janeiro - founded by Roberto Marinho in 1965 –then throughout the country and later, into the largest commercial TV network in South America and the fourth biggest in the world. The company “has expanded its reach through the gradual launch of more channels and the establishment of links with affiliates,” the report explains. “Its high production standards have become an industry benchmark around the world, it has a modern studio complex in Brazil. The signal has news, entertainment, sports and magazine programs, but it is their soap operas that have globally catapulted to fame captivating millions of spectators.
9. Águila (Colombia), Beer
Brand Value: US$3.924 million (+ 13%). Águila is synonymous with beer in Colombia, considered
a cultural icon. Its identification with the Colombian sentiment can be seen, for example, in its link with soccer, the country’s national sport. Águila has sponsored the Colombian national soccer team in every category for almost 20 years. In fact, the portfolio is made up of Águila Original (pilsener), Zero (non-alcoholic) and Light. Its origins go back to 1913 when it was created by Bavaria Brewery, in the city of Barranquilla. Currently, it is owned by the international group AB Inbev. Colombia is the country of coffee, but beer is another favorite drink of local consumers.
10. Bodega Aurrerá (Mexico), Wine Brand Value: US$3.757 million (+ 5%).
With focus on the lowerincome sector of consumers, Bodega Aurrerá stands out for its low prices, embodied in its brand cue “Mama Lucha”, a masked fighter who battles high prices and is constantly struggling to make it to the end of the month. Created in 1958, this supermarket chain - with almost 800 stores - has become one of the fastestgrowing business units of Walmart of México, in the Mexican market. Part of the success of the brand is based on the creation of more flexible store formats, such as the convenience store Mi Bodega, which operate in small cities.
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A Tale of Two Cities: the Supreme Court’s debate of over the public or private nature of patents in Oil States v. Greene’s Energy
Victor Rodriguez-Reyes Ferraiouli LLC Puerto Rico
next to Chief Justice Roberts, exposing his opposition of relinquishing judicial oversight over patent related cases.
INTRODUCTION
BACKGROUND
Imagine inventing something, going through the lengthy and expensive patenting process, just have it challenged and subsequently revoked by an administrative council – overseen by a presidential appointee – in a quasi-judicial administrative process. That, in a nutshell, tells the story of the landmark case Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373, 200 L. Ed. 2d 671 (2018), which came through the judicial pipeline on April 24, 2018. The Majority Opinion, authored by Justice Clarence Thomas, validates the constitutionality of the administrative procedure known as Inter Partes Review (IPR), rejecting Oil States Energy Services claims that the process violates both Article III and the 7th Amendment of the U.S. Constitution, which galvanize the principle of having an independent and sovereign Judicial Branch. Justices Breyer, Ginsburg, and Sotomayor filed the concurring opinion. Justice Neil Gorsuch voiced his dissent,
It all started when Greene’s Energy Group challenged the validity of a patent issued in favor of Oil States Energy Services by United States Patent and Trademark Office (PTO). The PTO review Board (PTAB) gave the green light to pass to the second stage of the process, the IPR, after consideration of its merits. At the conclusion of the process, Greene’s Energy Group won its claim against Oil States, accepting the argument that the patent was invalid. After loosing the appeal, Oil States subsequently presented a motion of Certiorari, which brings us to the case at hand.
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THE MAJORITY OPINION The constitutional controversy presented by Oil States is whether the legislative delegation in an executive official (a political appointee) of the power to invalidate granted patents violates the requirement of an independent judiciary. The answer to this question turns on the different nature of public and private
rights. In summary, the Supreme Court’s constitutional caselaw has established that the legislature has discretion to decide how pubIic rights are regulated, but in most private right cases, it must be decided by an article III judge. Judges who’s positions are created under article III of the constitution, have life tenure and their compensation cannot be altered by the President. Such guarantees ensure, under the constitutional theory, independence from the executive branch. In his Majority Opinion, Justice Thomas wrote: Inter partes review falls squarely within the public-rights doctrine. This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights— specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III. Oil States Energy Services, Id., at 1373.
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“Public-rights doctrine applies to matters arising between the government and others, which by their nature do not require judicial determination and yet are susceptible to it.” Oil States Energy Services, Id., at 1374. In his opinion, Justice Thomas, confirmed that patents are to be scrutinized under the public rights doctrine, and the power expressly vested by Congress on the PTO, legitimizes its power to revoke a patent. “Additionally, granting patents is one of “the constitutional functions” that can be carried out by “the executive or legislative departments” without “‘judicial determination.’” Oil States Energy Services, Id., at 1374. THE DISSENTING OPINION For Justice Gorsuch, shifting away from the private rights doctrine is a “retreat of the promise of judicial independence.” Oil States Energy Services, Id., at 1380. Judicial independence ensures that our nation’s judges are not tainted by special interests that might influence their decisions in favor of the highest bidder. As Justice Gorsuch’s dissent illustrates, in the past, patents could only be revoked by the “concurrence of independent judges” also known as Article III judges. Nowadays, that process has been delegated by Congress to the PTO as a way of streamlining all claims. To better grasp the dissent’s fears, it is vital to understand how the process itself works, and the amount of power it bestows upon the Director of PTO. The Director is the gatekeeper of the review process. He, and he alone, will decide whether a challenge to an existing patent will proceed to the IPR, and his decision is “final and unappealable.” Oil States Energy Services, Id., at 1373. Also, the Director is in direct supervision of the men and women who comprise the review process and, according Justice Gorsuch, can personally select the members of the panel, as well as add more members (including himself), if the need arises to gain a specific outcome. Congress’ delegation of this power to the PTO aimed to unclog an already overburdened judicial system. That, however, is not enough of a good reason for the government not to adhere to the protections provided by Article III. As Justice Gorsuch describes it “economy www.marcasur.com
supplies no license for ignoring these – often vitally inefficient – protections.” Oil States Energy Services, Id., at 1380.
the government granting a monopoly in patents for discoveries that were already public.
ANALYSIS
Both the majority and dissenting opinions fail to grasp this distinction. The dessenting opinion hints at it when arguing that patents have been treated as land grants,2 but fails to expressly recognize that the constitution recognizes the vesting of discoveries in the inventors.
The main problem in the decision lies in the flawed understanding of the nature of patents. Patents have a very different nature from other publicly granted rights, because, different from franchises, the constitution recognizes that patents are given to inventors for their discoveries. Article I, section 8 of the Constitution reads as follows: [The Congress shall have power] “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” {emphasis and underline added} In other words, inventions are the property of inventors. In contrast, a public franchise is a permission to use something that is the property of the state.1 This also follows from the quid pro quo that justifies the monopoly grant in a patent: the disclosure of something private known only by the inventor in exchange for limited protection of the commercial exploitation of the knowledge disclosed. In comparison, public franchises are just administrative concessions. The grantee gives nothing the public, instead, the franchisee may use some public property and incur in investment with the purpose of receiving a larger return. Of course, the public may (and should) benefit from the investment, but investment is not something that is the franchisee’s exclusive possession. That is why nowhere does the constitution recognize franchisee’s the right their concessions. Furthermore, there would be no logic in 1 See,FRANCHISE, Black’s Law Dictionary (10th ed. 2014): “government-conferred right or privilege to engage in a specific business or to exercise corporate powers. — Also termed corporate franchise; general franchise. “When referring to government grants (other than patents, trademarks, and copyrights), the term ‘franchise’ is often used to connote more substantial rights, whereas the term ‘license’ connotes lesser rights. Thus, the rights necessary for public utility companies to carry on their operations are generally designated as franchise rights. On the other hand, the rights to construct or to repair, the rights to practice certain professions, and the rights to use or to operate automobiles are generally referred to as licenses.” 1 Eckstrom’s Licensing in Foreign and Domestic Operations § 1.02[3], at 1–10 to 1–11 (David M. Epstein ed., 1998).”” Also, note that “Exclusive rights to public franchises are not favored.” Wright v. Nagle, 101 U.S. 791, 796, 25 L. Ed. 921, 11 Otto 791, 1879 WL 16631, at *5 (1879). There is no evidence of such a policy regarding patent grants.
CONCLUSION Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC changes the lense with which patents are revised. The shift from “private right” to “public right” shakes the very essence of patents for the benefit of simplifying the oftencumbersome processes that involve judicial review. Although important, the most worrisome part for this author is not who will determine the validity of patents, but the legal understanding of what a patent is. To the extent patents are understood to be something public that the government grants, the value and interest in patents is bound to decrease. If, on the contrary, patents are understood as the public disclosure of a private knowledge, their value and contribution will be more evident. Let’s hope the next case focuses on this aspect and we can eventually see patents in a different light. 2 Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1384-85, (2018).
Víctor M. Rodríguez-Reyes is a Member Attorney with our Intellectual Property and Health Law & Insurance practice groups. He counsels clients in all areas of intellectual property, is a Registered Patent Attorney before the United States Patent and Trademark Office, and does patent litigation and patent drafting and prosecution. Victor looks forward to a positive outlook for enterprises willing to embrace change. He firmly believes that by counseling clients on protecting their trade secrets and developing patent and trademark portfolios we help them achieve growth through innovation. @: vrodriguezreyes@ferraiuoli.com
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Costa Rica a Green Fashion Country Maricruz Villanea Ideas Trademarks and Patents Costa Rica
Costa Rica is a small country full of talent that includes incredible artisans, musicians, architects, writers and photographers, among others. There are also some noteworthy designers who have developed unique fashion brands, many of which are environmentally friendly and exude the true essence of the green Costa Rica. In 2017 Costa Rica hosted its first Fashion Summit reuniting different fashion experts from around the world. Their idea was focused on promoting a new market niche that can match the concept of a Green Costa Rica. The goal is to use Costa Rica´s well known name and launch a new fashion concept: sustainable fashion with purpose and a social justice. The summit highlighted 3 different projects: Project Hook, Bionic and Normadic Collector all of them based in sustainability. For example, Nomadic Collector is a project that produces handbags made of Costa Rican precious woods based on sustainable concepts and ideas and products in high end markets around the world. On the other hand, Bionic is a project that uses plastic that has disposed in the sea. Normally this plastic is very hard to recycle because the sand and salinity makes it hard to process, and usually most countries would just burn it to somehow 52
solve the situation. Bionic is using a unique technology to produce a fabric that they sell to high end designers and manufacturer such as Stella Mc Cartney, Adidas and H&M. Costa Rica also hosted recently the Mercedes Benz Fashion Week, which is one of the most important regional fashion events, where national and international designers participate, as well as media and public figures like influencers and bloggers. This platform has grown exponentially. The first edition of Mercedes Benz Fash-
ion Week San Jose was held in the parking lot of the Hotel Real Intercontinental. It only received national media coverage and only three national designers were invited. Today, the growth of such platform has been drastic, and San José, is positioned within the 5 most relevant cities for the Latin American fashion industry as recently published by Vogue. Under the concept of a “green fashion country”, The Mercedes Benz Fashion Event was declared the first carbon neutral global fashion expo in the positive carbon category, as endorsed by the Carwww.marcasur.com
bonfund of New York and Co2Balance of London. The coming edition will be the second time this certification will be granted, as well as an additional certificate for a plastic free zone. These events and recognitions are a positive way to promote and show local and regional talent to an international crowd and media that year after year cover international catwalks, seeking also a cultural, social and environmental offer to fashion lovers. As stated by the producer of such fashion event, “The maximum purpose of the project is to strengthen, invigorate and make visible the best of the national textile industry, as a way to generate cultural and economic contribution to the communities and the country, and in that sense international positioning is key to achieve maximum development”. The Ministry of Culture declared these events of cultural interest thanks to the growth and contribution to the fashion industry and the image of the country around the world. National designers founded a Fashion Cluster to join forces to export national designs around the world. In Costa Rica, the fashion industry has experienced an important growth that has gradually led to new jobs, international recognition and sustainability. The www.marcasur.com
importance of creative productions is increasingly growing at a very high rate. However, despite all these efforts there is not enough legal emphasis focused on providing the fashion industry the same protection that other creative industries already have and enjoy. Designs on clothing can be subject to copyright protection but this important doctrine isn´t necessarily applied correctly. Not only by the copyright office, but also by the same designers. It’s important to remind that not functional aspects of clothing may be protected by copyrights laws. There are other types of intellectual property rights that may be useful to protect fashion designs like trade dress and design patents. In an industry where counterfeits and the sale of imitation products are so common, it is essential for designers to legally safeguard their own creations. While symbols such as the Versace ellyfish or the hearts of Comme des Garçons are so well known, that no one would doubt their intellectual value due to their notoriety, there is a discrepancy, about the small and medium-sized companies that operate in this sector. How can they protect their intellectual assets? The first thing that local designers have to keep in mind is that they will never
be able to protect the design of basic garments, since these are considered as utilitarian -like a high-heeled shoe-, however, it´s possible to record and protect creative variation made by a designer on this common object. As Coco Chanel said, “to be irreplaceable, you have to be different.” The good news is that any new design is likely to be safeguarded by the different Intellectual Property rights. Copyrights protects “original work of authorships”, including pictorial, graphic, and sculptural works, not useful articles but the design of the useful article may be subject of copyright protection.
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 por tfolios 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 LATIN AMERICA SPECIAL EDITION 2 0 1 8
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A milestone in the battle for a better IP in Bolivia Wolfgang L. Ohnes ORPAN SOCIEDAD CIVIL Bolivia
“Poor guy, he must obtain legalization of his document within the next 30 days or loose his trademark”. I remember saying this after a long conversation over the phone with a desperate client in the past year, when I attempted to explain as clearly as possible, how he could obtain the feared chain of legalization in his country. While the entire world is aiming to eliminate unnecessary formalities in the registration procedures for IP, Bolivia is known for the strict and complicated requirements. Whoever wishes to protect and maintain his rights in Bolivia knows beforehand the considerable obstacles and costs related to this quest. This cold reality has discouraged numberless companies and individuals from making business in our jurisdiction. Despite the difficult panorama, those who dared protecting his trademarks or patents constantly faced the heavy task to obtain the chain of legalizations for crucial evidence in opposition procedures, cancellation claims, letters of coexistence, witihn often short non-extendable deadlines imposed by the authorities. Many times the diligent efforts for the local formalities failed or took too long, causing loss of rights, business oportunities and also money. In August 2017 the IP Community was surprised by a press release of the Min54
ister of Foreign Affairs, informing that Bolivia passed a law to join the Hague Convention for Apostilles. Many of us didn’t believe this would happen, remembering the previous experience with a similar announcement back in 2003, when Law No. 2498 ratifying the Patent Cooperation Treaty for Bolivia was passed. We haven’t deposited until the present date the required instrument of adherence to this treaty in Geneva at the World Intellectual Property Organization, thus Bolivia can’t benefit of the PCT yet. We thought these news about the Apositilles would be yet another empty promise for the local IP practitioners.
The possibility of sending apostilled documents to Bolivia quickly spread among the colleagues abroad. Dozens of corresponsals wanted to immediately start sending documents with apostilles, but we had to frustrate their hopes informing that the Bolivian authorities still needed to implement the necessary procedures and systems before admitting this simplified procedure. Finally on May 7th, 2018 the Apostilles officially started to work and the documents were directly sent to the Notary Public for their regular transcription on the official notarial paper, a surviving mandatory requirement before submitwww.marcasur.com
ting any document at the Bolivian Patent and Trademarks Office (SENAPI). A wonderful door of opportunities has been opened for companies aiming to make business in Bolivia. Suddenly the need to seek a nearby Bolivian Consulate to legalize the Powers of Attorney, the Affidavits, the License Agreements, and also the high costs for these proceedings disappeared. For those countries which are not yet part of the Hague Convention, it is regretfully still necesary to send legalized documents, legalized by the Bolivian Consulate and close the chain of legalization later at the Bolivian Ministry of Foreign Affairs. There is a specially critical procedure in Bolivia for which it is now easier to provide evidence, meaning the cancellation for non use. There are numerous stories on the difficulties for the plaintiffs in obtain legalized documents in support of the lawful use of their trademarks. There is one particular case, were the client was supposed to pay an insane amount of over USD. 40.000.- for legalizing a large bundle of bills evidencing the sales with the trademark. Another anecdote is related to the loss of almost USD. 7000.- in oficial fees, because the legalized document was signed by a Clerk at the Bolivian Consulate, who was not authorized to do so, and the corrected Power of Attorney did not arrive back in time before the expiring of the deadline for submitting this document. The only answer received from the Bolivian Trademarks Office upon the desperate attempt to save the situation was “we are sorry, it’s not our fault, the deadline expired.” These terrible scars in the Bolivian practice should remain in the past like bad memories and now we look into the future with a more enthusiastic and confident perspective. We hope the implementation of the Apostilles generates interest in protecting more IP matters in our country, we are curious to see the number of trademark and patent filings by the end of 2018 and 2019 in comparison to the last years. One of the other benefits to savour in the short term is the possibility to betwww.marcasur.com
ter protect the clients trademarks within opposition, nullity and infringement procedures, were we will be abe to swiftly submit relevant documents in support of the client’s rights. This will defintively contribute to a more solid IP System and practice in Bolivia. We also hope this tendency of simplifying things for the users of the Bolivian IP System continues on this good path, as we still face several unnecessary complications, such as the need to apostille the document of assignment of the invention rights, or submit the hardcopy of the Andean registration within an Andean opposition, while we could just provide in the first case a simple copy and in the second case the Internet Address for a direct verification of the existence of such document. In the meantime, the Apostilles are a milestone in the battle for a better IP in our country, which we will effectively make use of in all procedures in the best interest of our treasured clients.
Wolfgang L. Ohnes is Licensed Attorney of the Saint Paul Catholic University Bolivia, 2003 -Masters Degree Economic Law Simon Boliviar Andean University, 2016 -Alternative Dispute Resolution and Arbitration Diploma the La Salle University and Bolivian Bar Association, 1998-1999 National Director of the Bolivian Patents and Trademarks Office, 1999 WIPO and Canadian IP Office Training in Use of Technology IP Data Bases. 2006-2010 & 2015-2018 President of the Bolivian Intellectual Property Association. Partner at Orpan Sociedad Civil, invited speaker for ASIPI, INTA, AIPPI, WIPO, Secretary of the Andean Community, ABPI Bolivia. @: wolfgang.ohnes@orpan.com.bo
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Colombia Becomes an OECD Member Country
Carolina Vera Matiz Vera Abogados Asociados Colombia Last May 2018 the Commercial Issues Committee endorsed the Colombia affiliation to the Organization for Economic and Cooperation Development, which means that Colombia becomes Member No. 37 of the Organization, and it is the third Latin American country accepted as a member after Mexico and Chile. The path that Colombia covered to attain the access to the so called good practices club took about seven (7) years and one of the hardest tests to face with was the issue of patents protection. Finally, and after complying with several types of requirements, Colombian proved that its system of patentability is well robust and reliable, which grants an additional security to those who are interested in making investments in our country. The advantages to be a state member of OECD include: -The commitment of devising front line policies aimed at enhancing both the social welfare and the economical standing of its people. -Safety for the abroad origin investments 56
-Visibility within the international realm -Possibility of entering into agreements and strategic alliances at the inter-governmental and corporate levels towards the optimization of business within the country. -A stricter control over tax evasion. In coherence with the Ministry of Affairs data, “Colombia ranks in the third (3rd) spot of the principal Latin America countries to receive foreign investments, after Brazil”. In addition, the Ministry of Commerce, Industry and Tourism points out that: the general balance of the tourism sector in Colombia grew 28% in this mark, as compared to the worldwide general data which grew only 7%. The growth of investment necessarily increases competition resulting in a stimulus for the research and development of technology which positively affects the flow of patents within all the industry fields. Colombia has properly responded to that stimulus by strengthening the structure of the New Creations Management of the Superintendence of Industry and Trade. The examination and time spans required
for processing the applications set for granting a patent or for utility models and industrial design matters have been shortened to a large extent at the New Creations Agency. On the other hand, Colombia has since 2017 been a member of the Patent Prosecution Highway Global, which is an agreement signed by twenty two (22) countries, being the principal goal thereof to reduce the time spent in the patentability process. Besides Colombia, other countries like Spain, Finland, Great Britain, Hungary, Israel, Iceland, Japan, South Korea, Norway, Poland, Portugal, Russia, Sweden, Singapore, United States of America, Austria, Australia, Canada, Germany, Denmark, and Estonia make part of this agreement. Being a member of OECD is another proof of the interest that Colombia has of becoming a country for safe investments, which promotes new projects of technological development and innovation. All the above and mainly the affiliation of Colombia to the Good Practice Club allows us to hold that at present Colombia is now one of the safest and most attractive countries for the alien investments.
Carolina Vera Matiz, is a Lawyer with a degree from the Andes University in Bogotá, Colombia. She has a Master’s degree in Trademarks, Patents and Copyrights from the University of Alicante, Spain. Currently holds the position of General Director and Partner in Vera Abogados Asociados @: cvera@veraabogados.com www.marcasur.com
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The “Judgments Project” of the Hague Conference on Private International Law
The Issue of Intellectual and Industrial Property Author: Rafael Atab Verifier: Elisabeth Siemsen do Amaral. Dannemann Siemsen Brazil
In recent years, the Hague Conference on Private International Law (HCCH) has been devoted to the preparation of a new international convention, the Convention on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters (the Judgments Project). While it seeks to include as many subject matters as possible, discussions have been arising in heated disagreements about a very sensitive issue in the digital world: Intellectual Property. Given the importance of the issue, AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) has been invited to participate as an Observer at the meetings. In turn, ABPI (the Brazilian Intellectual Property Association) has been working with the Brazilian delegation at the Hague Conference, providing support for in-depth discussions. In a globalised and digital world, crossborder legal relationships have been gaining prominence. In this scenario, the effectiveness of the legal rules applicable to these transnational relationships depends, to a large extent, on International Judicial Cooperation. In the light of these challenges, HCCH, an intergovernmental organisation, has been devoting itself for 125 years to the development of international conventions and protocols that strengthen this International Judicial Cooperation. 58
Some examples are the Convention on Abolishing the Requirement of Legalisation for Foreign Public Documents (“The Hague Apostille Convention”), of 1961, the Convention on the Civil Aspects of International Abduction of Children, of 1980, the Convention on International Access to Justice, of 1988, and the Choice of Courts Convention, of 2005. In its most recent challenge, the HCCH is seeking to develop a Convention that allows the mutual recognition and enforcement of foreign court rulings, eliminating the great differences that the different States afford the subject in their national legislations: the Judgments Project. In the case of Intellectual Property (IP) Rights, one of the most sensitive issues is the recognition of the jurisdiction of one State to decide on rights granted in a different jurisdiction, such as a Trademark or a Patent. Delegations will also have to review the possibility of deciding upon the validity of Copyright or a Plant Variety in a certain jurisdiction ap-
plying the Law of different State. These questions stem, to a large extent, from the principle of territoriality, which is internationally recognised in relation to IP Rights. According to this principle, the protection of a particular IP right is restricted to the territory in which it is granted, in the case of those rights subject to registration (such as trademarks or patents), or at least it is governed by the Law of the place in which protection is requested, in the case of rights not subject to registration (e.g. Copyright). The principles of lex loci protectionis and lex loci registrationis are therefore recognised. In considering these issues, the Special Committee set up to propose a draft Convention established some conditions and filters applicable to possible judgments in order to circulate in other territories. According to the May 2018 draft1, the Special Committee proposes limiting, pursuant to Article 5.3, the recognition 1 Available at https://assets.hcch.net/docs/23b6dac3-7900-49f39a94-aa0ffbe0d0dd.pdf www.marcasur.com
and enforcement of a foreign judgment on an IP right to specific situations. In particular, only those foreign judgments on infringements of rights, when handed down by a Court of the State in which the violation occurred and based on a right granted or claimed in that State, would be recognised under the Convention. With respect to the validity of a right subject to registration, Article 6(a) proposes that the granting State would have exclusive jurisdiction to decide on the matter. In this case, even if the national legislation of a Contracting State does not forbid the recognition of foreign judgments on the validity of IP Rights, the member countries of the Convention would undertake not to enforce judgments regarding the validity of rights granted by other member countries that have been handed down by States other than the one that originally granted it. Moreover, as an exception to the principle that precludes any review on the merits of a foreign judgment that is to be enforced (a central point of the Convention), Article 7(g) would make an exception in the case of IP Rights. Recognition or enforcement of foreign judgments could be refused if, in deciding a case of infringement of IP rights,
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it failed to apply the Law of the State of origin of the violated right. However, in contractual disputes, such as those involving licensing and transfer of technology, the Special Committee proposes, in Article 8, creating an exception to the exclusive jurisdiction of the States of origin, when the validity of an IP Right is examined only as a preliminary question to the merits of the contractual discussion. In that case, it is understood that any decision on validity would have merely inter partes effects. Nevertheless, under Article 8 itself, recognition of a foreign judgment may be refused, if incompatible with a foreign judgment already handed down in the State of origin of the right or even merely in the pendency of legal action in that State,. However, faced with the possible difficulty of reaching a consensus, the Commission already proposes an additional limitation. Article 11 proposes allowing only the monetary effects of foreign judgments in IP matters to circulate, and provided that they have been rendered in the State where the damage occurs, reinforcing the territorial nature of IP Rights. The issues are still, therefore, open. Heated discussions are predicted when the
first Diplomatic Session to discuss the draft proposed by the Special Commission takes place, probably in mid-2019. Elisabeth Siemsen do Amaral is partner of Dannemann Siemsen, where she leads the trademark department. She is also VicePresident of Asociación Interamericana de la Propiedad Intelectual (ASIPI), member of the Board of Directors of the Brazilian Association of Intellectual Property (ABPI) and member of the Trademark Committee of the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI). @: esiemsen@dannemann.com.br Rafael Atab is partner of Dannemann Siemsen. He is also Chair of the Standing Committee on ADR of Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) and Coordinator of the Standing Committee on Trademarks of Associação Brasileira da Propriedade Intelectual (ABPI). He has a master degree on International Law from the University of the State of Rio de Janeiro and is a Professor at the Post-Graduation Course on Intellectual Property Law of Pontífice Universidade Católica do Rio de Janeiro (PUC-Rio). @: atab@dannemann.com.br
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Venezuela: Ayala & Asociados renews its strength and bets on excellence Ayala & Asociados is a prestigious Venezuelan firm led by Beatriz Ayala Cherubini, a specialist in intellectual property with more than 20 years of experience. This knowledgeable team of lawyers, both in the area of intellectual property and entertainment law, works with international standards of service, commitment and loyalty to our clients. They have internationally recognized by Chambers & Partners Latin America 2015-2016, as one of the leading firms in Venezuela. Our main focus is the full and timely satisfaction of our clients through a customized service supported by extensive network of international correspondents, working from our main office in Caracas because we keep betting on the future of country, Venezuela. @: bayala@ayalayasociadosip.com W: www.ayalayasociadosip.com
The team of Ayala & Asociados in their office, under the framework of the imposing landscape of El Ávila. Diana París Porrúa, Mariana Franco Paoli, Beatriz Ayala Cherubini and Bárbara Rivero Pérez.
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Beatriz Ayala Cherubini, founding partner. With an outgoing legal background and an extensive experience in providing services in the area of intellectual property in Venezuela, Beatriz holds a Master’s Degree in Intellectual Property, Honorable Mention. She is also member of INTA. During several periods, Beatriz has been delegated by Venezuela to ASIPI and for two decades she has been a very active member of the Association. Chambers & Partners has highlighted her name in successive editions as a leading lawyer in her specialty. She was the winner of the first Marcasur Excellence Award 2013 and more recently, she was awarded as one of 2018 Best Lawyers. www.marcasur.com
Latin America in Numbers
Bogotรก, Colombia.
The most populated cities San Pablo, Brazil: 12.106.920 inhabitants (2017, IBGE) Mexico City, Mexico: 8.918.653 inhabitants (2015, INEGI) Lima, Peru: 8.894.412 inhabitants (2015, INEI) Bogota, Colombia: 8.181.047 inhabitants (2015, DANE)
Rio de Janeiro, Brazil.
Rio de Janeiro, Brazil: 6.520.266 inhabitants (2017, IGBE) Santiago de Chile, Chile: 6.209.755 inhabitants (2017, INE) Brasilia, Brazil: 3.039.444 inhabitants (2017, IBGE)
San Pablo, Brazil.
Salvador, Brazil: 2.953.986 inhabitants (2017, IBGE) Buenos Aires, Argentina: 2.890.151 inhabitants (2010, INDEC) Caracas, Venezuela: 2.082.000 inhabitants (2015, World Bank) Lima, Peru.
Area: SOUTH AMERICA and MEXICO
CENTRAL AMERICA
Brazil: 8.515.770 km2.
Nicaragua: 130.373 km2
Argentina: 2.780.400 km2.
Honduras: 112.492 km2
Mexico: 1.964.375 km2.
Cuba: 109.884 km2
Peru: 1.285.216 km2
Guatemala: 108.889 km2
Colombia: 1.141.748 km2
Panama: 75.420 km2
Bolivia: 1.098.581 km2
Costa Rica: 51.100 km2
Venezuela: 916.445 km2
Dominican Republic: 48.442 km2
Chile: 756.102 km2
Haiti: 27.750 km2
Paraguay: 406.757 km2
El Salvador: 21.041 km2
Ecuador: 283.561 km2
Puerto Rico: 9.104 km2
Uruguay: 176.215 km2 www.marcasur.com
Buenos Aires, Argentina.
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Transparency
Economic Freedom “Economic freedom directly impacts the growth and increase of prosperity” of the countries, according to the Index of Economic Freedom 2018 report, prepared by the Heritage Foundation. To measure economic freedom, four broad categories are considered: Rule of Law, Government Size, Regulatory Efficiency and Open Markets. Although in this edition the researchers concluded that more than 100 of the 180 countries reached “higher levels of economic freedom” in the last year, they observed that the countries of the Americas continue showing difficulties in this regard. “Unfortunately (with a few notable exceptions), stagnant or eroding scores on economic freedom in the Americas reflect a continuous failure by many countries to commit fully to the pursuit of economic and structural reforms”. The report mentions that the well-functioning free market remain shallow with a “widespread corruption” and a “weak protection” of property rights, aggravating “systemic shortcomings” such as “regulatory inefficiency” and “monetary instability”. Among the countries of South America, Central America and the Caribbean region, Chile is the one that holds the highest position in the ranking, occupying position 20. According to the study’s categorization, Chile is rated “mostly free” in economic terms. It is followed by Uruguay (38), Colombia (42), Peru (43), Panama (54), Costa Rica (57), Mexico (63), Guatemala (73), El Salvador (75), Paraguay (82), Dominican Republic (89) and Honduras (94). The group is rated “moderately free”. In contrast, the South American giants Argentina and Brazil are in positions 144 and 153 respectively, ranking among the nations with the least economic freedom, the same situation as Nicaragua (100) and Haiti (124). (Table. Map. page 31. PDF “Index of Economic Freedom”)
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Uruguay is consistently positioned as the Latin American country with the best performance in the combat against economic crimes, according to the international ranking of NGO Transparency International. With a score of 70 out of 100, Uruguay ranks 23 out of 180 countries. Chile (67 points out of 100) is another of the leading nations in this matter, and it is ranked second in the region and 26 in the world. Venezuela (169) is the country with the lowest performance among Latin American nations. The researchers point out that while Latin America and the Caribbean have made “great progress” in the combat against corruption through the adoption of laws and setting-up specialized agencies on transparency issues, “there are still no general policies to address the historical and structural causes of corruption throughout the region. “The repor t cites scandals such as the Odebrecht case involving prominent politicians and businessmen of Brazil, Ecuador and Peru. (Infohttps://www.transparency. org/news/feature/corruption_ perceptions_index_2017)
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Languages It is estimated that in Latin America 66% of the population speak Spanish, 33% speak Portuguese and 1% French as their official language. However, other native American languages are spoken in the region, such as Quechua (8.5 million), Mayan dialects (6 million), Guarani (4.6 million), Aymara (2.8 million) and Huatl (1.6 million), according to information on the Statista.com site. From another perspective, the English Proficiency Index, of Education First, an international language education company, concluded that Argentina has the highest English standards of Latin America. Despite this, and having ranked 25th among 80 countries, Argentina fell 10 positions compared to 2014. This fall implies a decline in the English knowledge among its inhabitants, going from a “high” level to an “average” level. This same category describes other countries such as Dominican Republic (26) and Costa Rica (35), which ranked second and third in Latin America. According to the index, Venezuela (68) and El Salvador (69) exhibit a “very low” English level. The group of countries integrated by Brazil (41), Uruguay (43), Mexico (44), Chile (45), Cuba (48), Panama (49), Peru (50), Colombia (50), Guatemala (54) and Ecuador (55) shows a “low” English level, according to the survey.
Connectivity
“The number of households with access to the internet in the region grew an annual average of 14.1% between 2010 and 2015 to reach 43.4% of all households, nearly twice as five years earlier,” shows the study “State of Broadband in Latin America and the Caribbean”, prepared by the Economic Commission for Latin America and the Caribbean (ECLAC). “In 2015, of the 24 analyzed countries, three had a broadband penetration of less than 15% (Cuba, Haiti and Nicaragua), fifteen between 15% and 45% (Bolivia, Paraguay, Peru, Colombia, Ecuador, Venezuela, Guyana, Suriname, Mexico, Guatemala, El Salvador, Jamaica, Belize, Honduras, Dominican Republic), three between 45% and 56% (Argentina, Brazil and Panama) and three (Chile, Costa Rica and Uruguay) were near to 60%”, concludes the document.
(Info: www.ef.com.uy)
(Table. Map page 9 of PDF “Internet”) www.marcasur.com
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National GDP Brazil: US$ 1.796.200 million Mexico: US$ 1.046.000 million Argentina: US$ 545.866 million Venezuela: US$ 371.000 million Colombia: US$ 282.462 million Chile: US$ 247.027 million Peru: US$ 192.093 million Puerto Rico: US$ 103.134 million Ecuador: US$ 97.802 million Cuba: US$ 87.132 million Dominican Republic: US$ 71.583 million Guatemala: US$ 68.763 million Costa Rica: US$ 57.435 million Panama: US$ 55.187 million Uruguay: US$ 52.419 million Bolivia: US$ 33.806 million Paraguay: US$ 27.440 million El Salvador: US$ 26.797 million Honduras: US$ 21.516 million Nicaragua: US$ 13.230 million Haiti: US$ 8.022 million (Source: World Bank, 2016)
GNI per capita Puerto Rico: US$ 19.430 Uruguay: US$ 15.230 Chile: US$ 13.540 Panama: US$ 12.140 Argentina: US$ 11.970 Costa Rica: US$ 10.840 Mexico: US$ 9.040 Brazil: US$ 8.840 Dominican Republic: US$ 6.390 Colombia: US$ 6.310 Peru: US$ 5.950 Ecuador: US$ 5.800 Paraguay: US$ 4.060 El Salvador: US$ 3.920 Guatemala: US$ 3.790 Bolivia: US$ 3.070 Honduras: US$ 2.150 Nicaragua: US$ 2.100 Haiti: US$ 780 Cuba: -Venezuela: -(Source: World Bank, 2016)
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Population Composition
Ecuador: mestizo (mixed Amerindian and white) 71.9%, Montubio 7.4%, Amerindian 7%, white 6.1%, Afroecuadorian 4.3%, mulatto 1.9%, black 1%, other 0.4% El Salvador: mestizo 86.3%, white 12.7%, Amerindian 0.2% (includes Lenca, Kakawira, Nahua-Pipil), black 0.1%, other 0.6% Guatemala: mestizo and European 60,1%; Maya 39,3%; non-Maya, non-mestizo 0,15%, Garifuna (mixed West and Central African, Island Carib, and Arawak), other 0.5%
European emigration settled mainly in Latin America. Different historians agree that the European diaspora, headed by Spaniards, Italians and Portuguese, was concentrated in Argentina, Chile, Brazil, Uruguay, Venezuela, Cuba and Mexico. Their arrival and interaction with the native populations of the so-called New Continent generated a melting pot of races that is reflected in the demographic composition of the countries of the region.
Haiti: black 95%; mestizo and white 5% Honduras: mestizo 90%; Amerindian 7%; black 2%; white 1%. Mexico: mestizo 62%; predominantly Amerindian 21%; Amerindian 7%; other 10% (mostly European). Nicaragua: mestizo 69%; white 17%; black 9%; Amerindian 5%.
Argentina: European (mostly Spanish and Italian descent) and mestizo (mixed European and Amerindian ancestry) 97,2%; Amerindian 2.4%, African 0.4%
Panama: mestizo 65%; Native Americans 12,3%; African descent 9,2%; mulatto 6,8%; white 6,7%.
Bolivia: mestizo 68%; indigenous 20%; white 5%; cholo/chola 2%; black 1%; other 1%; unspecified 3%.
Paraguay: mestizo 95%; other 5%. Peru: Amerindian 45%; mestizo 37%; white 15%; black, Japanese, Chinese, and other 3%
Brazil: white 47,7%; mulatto (mixed white and black) 43,1%; black 7,6%; Asia 1,1%; indigenous 0,4%.
Puerto Rico: white 75,8%; African descent 12,4%, other 8,5%; mestizo 3,3%.
Chile: white and non-indigenous 88,9%; Mapuche 9,1%; Aymara 0,7%; other indigenous groups 1% (includes Rapa Nui, Likan Antai, Quechua, Colla, Diaguita, Kawesqar, Yagan or Yamana), unspecified 0.3%
Dominican Republic: mestizo 70,4%; black 15,8%; white 13,5%; other 0,3%. Uruguay: white 88%; mestizo 8%; black 4%; Amerindian (practically nonexistent).
Colombia: mestizo and white 84.2%, Afro-Colombian (includes mulatto, Raizal, and Palenquero) 10.4%, Amerindian 3.4%, Romani <.01, unspecified 2.1%
Venezuela: Spanish, Italian, Portuguese, Arab, German, African and indigenous people (there is no disintegrated data). (Source: The World Factbook of the CIA, EE.UU.)
Costa Rica: white or mestizo 83.6%, mulatto 6.7%, indigenous 2.4%, black of African descent 1.1%, other 1.1%, none 2.9%, unspecified 2.2% Cuba: white 64.1%, mulatto or mixed 26.6%, black 9.3%
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Personal Information Databases in Uruguay
Gabriel Pittaluga Rossi Pittaluga abogados Uruguay BACKGROUND There is no doubt that the twenty-first century has brought with it a great number of developments, spanning fields as diverse as science, health, and even sports, for example with the video assistant referee that is applied in several disciplines and was introduced in soccer, 66
not without controversy, in the last FIFA World Cup in Russia. One of the most remarkable developments that have changed everyday life is that today we can practically conduct all our daily activities from our smartphone, tablet, laptop, or device of choice. We used to have to go out on the street to catch a cab and now we have applications that find one for us and debit the fare from our credit card; we used to have to call a restaurant to order food to be delivered to our house and pay the delivery man at
the door, but now we have applications that process our orders for us and allow us to pay without having to use cash; we buy our clothes in stores from around the world without setting foot in an airport thanks to the Internet and online shopping; and we even read global newspapers without having to leave the house. This undoubtedly makes our lives much easier, but as is often the case with good things, there’s a catch, or as the popular Uruguayan rock song says, “Nothing in life is free.” With each purchase we make www.marcasur.com
online, with each cab we call through an app, with each prepaid order delivered at home, and with each news article we read, we are leaving a digital footprint. What many people are unaware of is that there are companies specialized in tracking our footprints, collecting information to build databases that they later sell to other companies, which in turn use our information for a range of product promotions and marketing schemes. LAW No. 18,331 In Uruguay, this data cycle is regulated by the Personal Data Protection and Habeas Data Act (Law No. 18,331). This law regulates, among other things, how these databases operate, allowing for the treatment of data suitable for creating certain profiles for promotional, commercial, or advertising purposes, as well as data used with the purpose of determining consumption habits. This means that in order to be legal, databases must be duly registered in the Personal Information Database Register. PRIOR CONSENT Holders of personal information contained in databases must give their consent to use their information, and that consent must be given in advance, freely, and expressly in writing. This is why it is important to always read the â&#x20AC;&#x153;Terms and Conditionsâ&#x20AC;? we accept when we download an application or sign up as a user on a website, as it is generally through them that a company requests and obtains consent to use our information. It should be noted that consent is not required when the information comes from public sources or for lists containing only first and last name, identity document number, nationality, home address, and date of birth, in the case of individuals. In the case of companies, no prior consent is required for the following data: company name, fantasy name, sole register of taxpayers number, company address and telephone number, and identity of company officers.
On the one hand, the right to be forgotten is a right we all have as individuals to request that any information we consider inappropriate, not relevant, or no longer relevant as a result of the passage of time be deleted from databases, that is, forgotten. On the other hand, we must bear in mind that the holder of the information is authorized to request that the corresponding information be removed or blocked, and, at the same time, the holder must be entitled to access such information at no cost and without limitations. Furthermore, the holder of the information has the right to be expressly, precisely, and clearly informed in advance of the following: - The purpose for which their information will be used and the target audience; -
The existence of the database, electronic or otherwise, as well as the identity and address of the person in charge of the database;
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The legal repercussions of providing the information or refusing to do so, or of providing inaccurate information;
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The possibility users have of accessing, rectifying, or eliminating their information.
RIGHT TO BE FORGOTTEN AND TO PRIVACY It is also interesting to know what rights individuals have over the personal information that has been collected about them. www.marcasur.com
CONCLUSIONS While today it is practically impossible not to leave a digital footprint, as in order to do that we would have to stop using applications, abandon our devices, and not go online, all of which have become essential in our lives (because that is how we have wanted it), it is also crucial for us to know and understand the tools provided by law to duly control the data we generate and which is contained in a given database.
Gabriel Pittaluga was born in Montevideo, Uruguay, on November 24, 1984. He holds a law degree from the School of Law, Universidad CatĂłlica del Uruguay. He is currently pursuing an LL.M. degree at Universidad de Montevideo, having focused on business consulting. In the law firm Pittaluga Abogados he provides advisory services for various companies in matters concerning intellectual property, labor, and commercial law. @:gpittaluga@pittaluga.com LATIN AMERICA SPECIAL EDITION 2 0 1 8
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M A R C A S news COLOMBIA
PERU
CHILE
Samsung
Suspension of Fox-musicagratis.com
APPLE iWatch
Textron S.A., owner of the Colombian store chain Villa Romana VR, opposed registration of Samsung’s brand VR before the Superintendence of Industry and Commerce (SIC) of Colombia. It claims that consumers could be misled due to the similarity of the brands covering similar products related to leather and leather imitations, trunks, suitcases, briefcases, backpacks and cases for mobile phones. The SIC decided to grant the brand requested by Samsung, alleging that it is aimed at different consumers and to a public specialized in its consumption.
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The National Institute for the Defense of Free Competition and the Protection of Intellectual Property (Indecopi) of Peru ordered GoDaddy. com, the domain name registrar, to suspend the Fox-musicagratis.com domain. The measure was taken by motion of the Peruvian Union of Phonographic Producers (UNIMPRO), who alleged copyright infringement of its clients, since musical phonograms were broadcasted without authorization through the internet from that suspended domain.
The Supreme Court of Chile denied registration of trademark iWatch, requested by Apple in 2014 before the National Institute of Industrial Property (INAPI). Swiss watchmaker Swatch had opposed claiming that “iWatch” could create confusion in the market with its already registered iSwatch. INAPI denied the registration in 2015 but the decision was revoked in 2016 by the Industrial Property Tribunal, stating that “the existence of the Apple brand and how it has adopted the use of the letter ‘i’ to identify its technological products is a public and notorious fact”. Finally, the Supreme Court agreed with Swatch.
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M A R C A S news ARGENTINA
MÉXICO
La Dolfina Polo
Puebla Futbol Club
The Argentine brand La Dolfina succeeded to cancel registration of trademark Dolfina in the European Union. The case began in 2007 when the Spanish company Sipral World registered community trademark Dolfina for products in classes 3, 18 and 25. In 2012, La Dolfina, a polo team and Argentine clothing brand, filed an application for revocation before the European Intellectual Property Office (Euipo) against trademark Dolfina claiming lack of genuine use. Euipo canceled the trademark in 2013 but revoked its decision in 2015 after Sipral World requested that its rights to challenge the application for revocation filed be re-established. It then allowed the use of Dolfina for t-shirts and hats in class 25, which was appealed by La Dolfina. In 2016, the Euipo canceled the trademark once again, decision that was supported in June this year by the EU General Court, which held that Dolfina did not demonstrate genuine use of the trademark. www.marcasur.com
BRAZIL Exclusivity for Kaiser
In June, Club Puebla, which competes in the Liga MX of the Mexican football league system, announced that it recovered the name Puebla F.C. and its badge which the institution used during a good part of its history. Businessman Ricardo Henaine, who in 2013 sold the club Puebla F.C. kept ownership of the brand and badge of the institution, which was ratified in 2015 by the Mexican Institute of Intellectual Property (IMPI) after Henanine sued Puebla for the improper use of both brands, which led to the change of the badge and its name to Club Puebla. However, the current authorities of the Club informed that IMPI finally understood that Henaine acted in bad faith by selling the club but keeping the brands, so they were finally granted back to the club.
The National Institute of Industrial Property (INPI) of Brazil granted exclusivity to brand Kaiser, a Brazilian beer launched in the 1980s and today owned by the Dutch Heineken, on the understanding that it has “a proven public recognition in the market”. The exclusive nature prevents third parties to use or register name equal or even similar to any order. With that, Kaiser becomes part of a select group of 74 renowned brands that have received this protection in Brazil.
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CUSTOM VIOLATIONS IN LATIN AMERICA
According to the report: “The economic impacts of counterfeiting and piracy”, published in 2017 by the International Trademark Association (INTA) and the International Chamber of Commerce, the trade in counterfeit and pirated goods represents 2.5% of the value of international trade. In addition, the study predicts an average annual growth rate of 9% in counterfeit and pirated products. In Latin America, the problem of counterfeiting and piracy is no stranger and there are even some issues that stand out, such as seizures of goods in transit, Custom trademark recordal, copyright related procedures, storage of the infringing products and the destructions. 70
In addition, there are other issues that must be taken seriously, such as the urgent procedure of trademarks and the new regional problem of cancellations for lack of use. Important considerations: 1. SEIZURE OF GOODS IN TRANSIT
The “merchandise in transit” is the one that, being in the territory of the country, is exempt from import or export charges, notwithstanding the payment of the fees for the services rendered. The transit regime does not suppress the application of the local trademark law. The merchandise is circulating or being storage in a country, and the fact that it
does not pay tariffs, does not discriminate its submission to the trademark law. The countries with the most presence of merchandise in transit, for being logistic “hubs” are: Panama, Chile, Peru, Bolivia and Uruguay. The counterfeit merchandise is seized based on the laws in force in each jurisdiction and commercial laws such as the TRIPS agreement, which recognizes Intellectual Property rights to the member countries of the World Trade Organization (WTO). This allows the merchandise to be inspected by the Customs and seized once the counterfeit is verified. The general principle is, if a customs authority checks a container with counterfeit merchandise, it must stop it and prohibit www.marcasur.com
it from continuing to circulate. No matter where it was manufactured, destination does not matter, it does not matter if it does not come to the internal market of the apprehensive customs authority. It is a container with merchandise in violation and cannot continue circulating. Unfortunately, in some countries of Latin America, when there are counterfeit goods in transit to a third country, it continues to circulate. 2. CUSTOMS TRADEMARK RECORDAL The function of trademark registration in Customs is vital and the registration of trademarks, by the owner is very important for several reasons: a) Let the customs officials know who the owners of the brands are, which are current, which logos are registered, etc. In some countries, the least, there is an online system of the trademark office that customs officials can check, but for the most part this is not the case. It is important that Customs has its own base and that the information comes directly from the brand owner. b) The registration of trademarks in Customs allows the authorities to know who is the legal representative of each trademark to manage customs cases. Customs registration, institutionalized in several countries such as Paraguay, Argentina and Uruguay, and voluntary in others, such as Brazil, Bolivia, Chile, Panama, Ecuador, Mexico and Peru. For all countries must be done carefully, adding accurate data and updated at least once a year, if a proxy is changed, if a trademark is canceled, or even if a new trademark is granted. Work must be done to make this registration mandatory in all Customs of Latin America. 3. URGENT PROCEDURE OF TRADEMARKS
In all Latin American countries, to initiate actions for trademark infringement, it is a sine qua non condition that the trademark is registered. Therefore, the Trademark Offices of the region play a predominant role. Without a registered trademark there is no seizure of counterfeit merchandise (except for special cases). www.marcasur.com
It is happening that, brands not yet registered in Latin America because the business has not yet developed in the region, begin to find their counterfeit products before the originals arrive. The company immediately registers, but it takes a long time for the brand to be granted, and during that time, it cannot seize merchandise. Obviously, there are legal procedures that cannot be ignored, such as the publication of the brand, the period of opposition for third parties and the viability study of the office itself. But we should provide the trademark offices with an abbreviated procedure, for when it is proven that the product, whose trademark is in the process of being granted, is being counterfeit and thus can be granted quickly. The offender often knows this situation and that is why he chooses the countries where he knows that the brand will not be granted for a long time. 4. COPYRIGHT RELATED PROCEDURES
The copyright registration is playing a very important role in the fight against counterfeiting. Companies not only register their brands, but also protect their products through copyright. For the countries that are signatories to the Berne Convention, Copyrights are acquired from the moment the author creates the work, regardless of the registration of the work. Berne Convention says that registration is not necessary in each country where the right is exercised and, therefore, with the valid registry in a country, actions can already be initiated in any other where the laws authorize it. In Latin America this does not always happen, and as in some countries, the Customs, Judges or administrative authorities allow the seizure based on Copyrights whereas in others, they not, or if they authorize it, registration is required in the country where the seizure is carried out. Copyright is very important in companies that, for example, change their collections by season (toys), but the products are protected as a work, by the creator, and must be seized even without use of trademark. Soccer jerseys are another emblematic case of unmarked products in which confiscation must be carried out.
5. STORAGE OF THE INFRINGING PRODUCTS
This is an important subject for the holders of rights and for the apprehension authorities, for cost and responsibility Who should pay for the storage of the goods? Who is responsible in case of theft or loss? Does one have to pay insurance for it? And which is the price? In many legislations it is the apprehension authority that keeps the merchandise storage in its facilities. It is important that the procedure is accelerated, to reduce cost. First, because it is the apprehension authority that pays for the storage and is liable. And second, because it makes place for new apprehensions. But in other cases, the brand owner must assume the cost of storage and be responsible for the merchandise. This issue could be solved with measures such as accelerated destruction orders.
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6. DESTRUCTIONS
7. CANCELLATIONS FOR LACK OF USE
Several years ago, fake merchandise was destroyed almost entirely, in the cheapest way: incineration. This allowed in a few hours to destroy all the products and ensure the total destruction of it, but this system was disused. Why? The correct environmental standards in force in each country, which force the destruction to be carried out respecting ecological parameters, considering recycling and burial forms. This is already in place in most countries, and in those which not, it is the companies themselves that want to comply with this global regulation. However, now the destruction costs are much higher. Except for a few countries, such as Uruguay, where the merchandise can be donated by law (after withdrawal of the logos), the merchandise must be destroyed. And what previously represented a lower cost and was no more than the end of a procedure, today requires a prior process of analysis of samples, to see which are recyclable and which are not, and then a stage of destruction very expensive and slow. Therefore, now more than ever it should be tried to transfer this cost to the offender, in cases where possible, or to seek alternative solutions that allow the merchandise to be destroyed at a lower cost and in accordance with the environment.
Finally, it is important to mention a practice that has not yet been extended but has already been initiated in Latin America: cancellations for lack of use. Is the possibility that a third party has to request the cancellation of a trademark granted that was not used for a specific period of time. In Latin America trademarks can be canceled due to lack of use, except for Chile, where this form is not yet valid. What is happening? And what does this have to do with counterfeit? Many offenders, given a seizure of false merchandise, request the cancellation of the brand due to lack of use. If the trademark is not in use, the owner must be warned of the fact that, if he initiates actions for counterfeit, someone may request the cancellation. But the problem is not this. The problem is that, even when the brand is in use, the owner must prove it. For the offender, requesting the cancellation is a mere procedure. But for the brand, showing that it is being used becomes a long and expensive procedure, in which legalized proof must be added, translated, the written answer and everything that can happen in a procedure of this type must be added. Meanwhile, the process is suspended, until it resolves the cancellation of the trademark that gave rise to the seizure. This is something that must be resolved urgently. Prevent and enact to avoid harmful consequences.
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Dr. Virginia Cervieri Senior Partner at Cervieri Monsuรกrez & Asociados. President of the Uruguayan Chamber Against Smuggling and Piracy. INTA Anticounterfeiting Committee Chair.
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Journey to the past,
from Cuzco to Machu Picchu
We have chosen travel destinations in Latin America that MARCASUR suggests visiting. One is in the south of Argentina, Villa Angostura and another in Peru, Machu Pichu.
Florencia and Federico travel four days and three nights through the Inca Trail to get to Machu Picchu with a group of twelve people. Somewhere in that ancient adventure they experience something that none of them will ever forget.
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When I asked them about their experience in the Tahuantinsuyo network, the road system that link the important Inca cities, Florencia answered with three words: exhausting, shocking and magical. Why the Inca Trail? â&#x20AC;&#x153;It always caught my attention, because it means reaching one of the wonders of the world along the same path that its residents walked through centuries ago,â&#x20AC;? explained Federico. This is the story of their trip.
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The chosen date was at the end of April, a somewhat rainy time. We made the reservation a few months in advance through a specialized travel agency because the quota for accessing the trail are limited by the Peruvian government. Up to 400 people per day are allowed, of which 200 are tourists and the rest are guides and porters. The tour consists of four days and three nights in which 45 kilometers are travelled; it includes four daily meals, guides and porters (company personnel who carry tents, tables, chairs, food, gas cylinders, among other things.) Early in the morning, a company bus from Cusco picked us up and took us to the place of departure: Piscacucho, in the town of Chilca, at kilometer 82 of the route and 2,800 meters high. In our group, we were a total of twelve tourists, between 40 and 55 years old, which shows that there are no ages to do this, and that it only depends on what the body and mind of each one is used to and are willing to do. At two o’clock we started the journey, each carrying a backpack with whatever you wanted, although it was possible to pay extra for a porter to carry them. The weather was mild so we were wearing light clothes, trekking shoes and a rain jacket, but carrying more clothing because at night the temperature drops. We arrived at the first campsite after about five hours of hiking in an arid terrain and through small towns where they offered us chicha, a typical Peruvian fermented drink derived from corn. The camp was set up on the banks of a river and formed by numerous tents for two persons, a large dining tent and another one that served as kitchen. We had a delicious dinner that would be continuously repeated, prepared by a specialist in Peruvian/ Cuzqueña food based on potatoes, avocados, rice with herbs, bell peppers, soup. We were awakened a little before dawn and had an energizing breakfast with the inevitable coca tea, to begin a long and exhausting walk that would take us to the highest point of the journey: 4,200 meters above sea level. Along the walk you can see spectacular landscapes, from areas with vast and exotic vegetation to dangerous and amazing cliffs surrounded by clouds and snowy 74
peaks of the Andes mountains. They were six hours of steady climbing, where the group separates according to each one’s pace, finally we reach the 4.212 meters of the Warmiwañusca pass. There is no oxygen but there is a lot of excitement and admiration for the view of the place. Entranced, we undertook the descent to 3,400 meters, which is difficult because we had to avoid skidding on the slippery path of large stones. Unharmed, happy but tired, nine hours later we arrived at the second and most spectacular campsite on a mountainside. The third day is the longest and most picturesque journey: you come across unseen species of animals (especially llamas), hanging bridges, tunnels and Inca ruins to reach the third and last campsite. The last day, we wake up at 3:30 am, and after almost two and a half hours of hiking, just before dawn we reached Intipunku or Puerta del Sol, the archaeological site that is the entrance to Machu Picchu from the Inca Trail. And there we www.marcasur.com
experienced an unforgettable moment, with the sun rising we sat down and, without warning, it appeared before our eyes, in the distance, a kind of immense ghost in the middle of the mountains. It was the wonder called Machu Picchu. They were seconds in which silence reigned and we only appreciated what was happening before our eyes. It hid in the clouds at the same speed it had appeared, making that moment even stranger. We loaded the backpack again and started to walk, exhausted but excited because in less than an hour and a half we would enter the historical Machu Picchu, the Inca citadel. The arrival was another exciting moment: not only because we observed that phenomenon under our feet, but because we realized that we had just finished the same path the Incas did in the 15th and 16th centuries. After touring Machu Picchu, we started the return by train, exhausted but immensely happy for having done a unique journey. Another way. For those who do not dare to venture on foot, they can get from Cuzco to Machu Picchu by hiring a van or train. The most sophisticated is the Belmond Hiram Bingham, with a fee of approximately USD 600 round trip.
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Travelling
Garden of Patagonia Vacations in Villa La Angostura, a gem in southern Argentina
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On the eastern border of the Andean Mountains, south of the Argentine province of NeuquĂŠn, a small isthmus connects the QuetrihuĂŠ peninsula with a city of 11,000 inhabitants. It is Villa La Angostura, originally occupied by the Mapuches, to which, at the end of the 19th century, European settlers were integrated. The fusion gives this place its very own special spirit that, due to its Andean characteristics and foreign influences, has made it one of the most beautiful, visited and exclusive tourist spots in Patagonia. How to get there? The distance from Buenos Aires is approximately 1,600 kilometers, a journey that many dare to do by car, for its landscapes and to carry all baggage that may be necessary in La Angostura with no limit. By plane, from Buenos Aires it takes about two hours to San MartĂn de los Andes (107 km away) or to Bariloche (87 km). Bariloche, besides being nearer, has a faster route because of its geography. However, the time-saving is a tourist disadvantage: the stretch of route no. 40 that connects San Martin de los Andes with Villa La Angostura has unique characteristics. www.marcasur.com
Known as the Seven Lakes Route, it goes up and down hills, crosses two national parks, is surrounded by extensive forests, allows you to see snowy peaks and it borders seven mirrored lakes of glacial origin. Along the way there are special spots to take photos and, although the drive by car is unforgettable, it is even more wonderful by foot or by bicycle, reason for which thousands of backpackers arrive every month to this worldwide famous road for this type of travelers who stay at campsites.
Where to stay? There are hostels, inns, cabins, hotels, campsites, resorts and houses (via Airbnb), so there are plenty of options depending on the price and the type of trip. The lodgings are in the city itself and in the different neighborhoods that stretch from a little bit before and past Villa La Angostura, which has a total area of 79.6 km2 and where it is very easy to move. In no case are they beyond 11 kilometers, 15 minutes away by car. Among those neighborhoods you will find Bahía Manzano, Calfuco or Cumelén, a private neighborhood where the Argentine President Mauricio Macri and Queen Máxima of the Netherlands have spent their vacations. www.marcasur.com
What to do? What not to do! Even
in its smallness and risking to sound like a slogan, Villa La Angostura offers possibilities for everyone. The only thing that it is missing is a more intense nightlife. In summer, autumn and spring there are obviously typical activities for family
tourism, such as walks through the city through Avenida Siete Lagos, artisan markets, boat trips, meals, shopping and beach life in the different bays that the area has. These tours allow you to admire the geography of the place (lakes, forests, LATIN AMERICA SPECIAL EDITION 2 0 1 8
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mountains) and its almost perfect urbanism and picturesque architecture, typical of the Swiss alpine style. The beaches are bathed by the Nahuel Huapi Lake, symbol of the city and which gives its name to the oldest national park in Argentina. In summer, with a dash of courage, you can take a dip in bare skin. The first contact will give you goosebumps but it’s worth it: the transparency, purity and lightness of the water make it an extraordinary bath. Besides the walks, Villa La Angostura is especially known and visited for its wide range of sports: cycling, trekking, horseback riding, water skiing, kayaking, rafting, diving and snorkeling, among others, all of which can be hired effectively and safely on spot. In winter, the whole province of Neuquén and its neighbor Río Negro, tourism is synonymous to ski mountaineering. In Altho Cerro Bayo, a mountain of the Andes Mountain, 9 km from the city, you can find a boutique ski resort with 24 tracks.
A must see? The Arrayanes National
Park occupies the 1,796 hectares of the Quetrihué peninsula. Legend says that Walt Disney was inspired there for the legendary film Bambi. It is a majestic forest, unique in the world because the myrtle plant grows as a tree and not as a bush. A 12-kilometer trail crosses the entire peninsula and allows you to explore the park on foot or by bicycle. Although the road has a medium difficulty, with some slopes, it is safe and well signposted, so, if you take the proper precautions (water, repellent, clothing to keep warm) and you do it with no hurry, it is highly recommended.
What to eat? Gastronomy is one of the high points of Villa La Angostura. There are many restaurants and the city pays tribute to the Patagonian cuisine: lamb, trout, rabbit, deer, fondue, craft beer, wine, chocolates, ice cream and waffles are part of the dishes that you must necessarily taste. Weaknesses? Those who visit in summer will have to get used to the continuous dust that raises from the dry land. There are plenty of bees and wasps. The telephone signal is scarce. If you rent a house, you will have to take the garbage out to the municipal garbage dump since there is no collection in many places and there are few containers. Francisco Pittaluga 78
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C OM I N G SOO N.... AIPPI World Congress â&#x20AC;&#x201C; London September 15 - 18, 2019
London, the worldâ&#x20AC;&#x2122;s most visited city has a deep history and rich culture
full with unforgettable landmarks, exciting things to do and extraordinary cuisine around every corner. Uniquely situated in the shadow of Big Ben, Westminster Abbey and the London Eye, The Queen Elizabeth II Centre is the ideal place for you to experience London, making it the perfect venue for the 2019 AIPPI World Congress!
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