Colombia regulates use of trade mark symbol

Writing in the subscription-based World Trademark Report, Colombian lawyer Margarita Castellanos (Castellanos & Co, Bogota) discusses a 12 March 2008 opinion issued by the Colombian Trade Mark Office on the use of the ® symbol. Andean Community Decision 486 contains no specific rules on the use of the ® symbol. However, in keeping with the terms of Colombia's Constitutional commitments, the Trademark Office all information provided to consumers with regard to goods and services - including the use of the ® symbol - must be true, demonstrable and appropriate and non-misleading. Use of that symbol in respect of goods or services for which a mark bearing that symbol has not been registered will be rendered unlawful and any party will be able to initiate proceedings in respect of that wrongful use.

Gilberto Gil answers questions on copyright and Creative Commons

In Democracy Now! there is an interview with legendary musician Gilberto Gil, presently a cabinet official in the Brazilian government. In this interview with Amy Goodman, he is asked about some copyright issues:

"AMY GOODMAN: Can you talk about the Creative Commons movement, what it means, what it means in Brazil, what it means for your music, what you’re trying to do?

GILBERTO GIL: Yeah. The author laws, the author rights, I mean, they belong to—the way they are set and the laws are written and applied and everything, that all belongs to a previous period, you know, previous time, an analog, so to speak, an analog time. Now, the digital area, the digital era enable us to extend and expand cultural products and cultural goods and cultural possibilities to a level that we—we have to also rewrite and reshape the legal framework and the regulatory framework, so that it can adjust to the new possibilities. That’s what Creative Commons is about, bringing possibilities to manage their own work, you know, to the creators, so that the songwriters, the theater play writers, the book writers, and so and so, can have the possibilities to manage their own work and say—and determine what their work will serve for.

AMY GOODMAN: We are here in the Time Warner building in New York, where the Personal Democracy Forum is taking place. Can you talk about your experience with Time Warner?

GILBERTO GIL: Well, when I decided to open one of—some of my songs, you know, so that recommendation and sharing and everything would be possible, made possible for other people, I had a “no” from my company—then my company; I am not Time Warner anymore, then I was—and they wouldn’t allow me to use the songs that they had recorded. And I wanted—

AMY GOODMAN: You wanted them to be able to be downloaded for free?

GILBERTO GIL: Not necessarily to be downloaded for free, but to be open for different uses, you know, cultural uses by different people, the way the licenses, the Creative Commons licenses allow people to, so that they could recombine, they could share, they could redo parts or wholes of the songs for the cultural purposes, you know? And I couldn’t use the pieces that I had recorded for Time Warner. And then I used some of the pieces that I had already recorded for myself, because my contract with them was ending by then, and I had started doing my own recordings and owning my own recordings and some of them. And then I used some of that.

AMY GOODMAN: Gilberto Gil, do you see the way the music companies are cracking down on musicians and cracking down on access to music, calling it piracy, similar to the food companies like Monsanto cracking down on farmers, because they’re claiming they’re using their seeds in an unauthorized way?

GILBERTO GIL: Yeah, this is one of the things that we have to reconsider—I mean, the whole of the society, as I say, politicizing the new technology, so that we can discuss the uses, you know, and the restrictions and how far the restrictions should go and should stay and how open we should sort of get the whole system, you know, going, because we need that. I mean, there are several social uses that we can have, from pharmaceuticals and from intellectual goods and everything, that need openness to be considered, you know, so that the sharing, the access and everything, could be permitted. So we have to reshape them and the whole legal framework, you know, internationally and locally, you know, country by country and internationally.

And we are doing that. I mean, the Creative Commons project, for instance, helps a lot this kind of advancement, so that the individuals, the creators themselves, they can start establishing which kind of use they want their works to have, and which they allow, which they don’t allow the other people to do their works. But in Brazil, for instance, we are now launching a whole project of changing the authoral law in Brazil, discussing—

AMY GOODMAN: You’re working with Lawrence Lessig?

GILBERTO GIL: With Lawrence?

AMY GOODMAN: With Lawrence Lessig?

GILBERTO GIL: Oh, definitely. Yes, we are partners. He brought the Creative Commons project to Brazil. We helped them—we helped him and the whole group to find their ways in Brazil, to find the right people, to find the universities and institutions that back them in Brazil. So we became close friends. We are working together, yeah".

Weak dollar leads to higher filing fees in Brazil

IP Tango has heard that, in order to counter the significant weakening of the value of the US dollar in recent years, Brazil's Industrial Property Office (INPI) announced that it would be raising its patent and trade mark fees by at least 50%, some time in the next couple of weeks. It is said, however, that INPI has taken the opportunity to raise some fees (filing fees, for example) by over 100%. Patent practitioners have been warned that the examination fee (which is determined in accordance with the number of claims pending when examination is requested, like Japan) will be approximately doubled. Foreign practitioners with upcoming Brazilian filings (or a due date for paying an exam fee in the next week or two) are thus advised to obtain definite instructions and to send these to their Brazilian associates as soon as they can in order to rely upon the present, lower fees before they go up. The actual date upon which the fee increase will take effect is not yet known [IP Tango thanks Birgit Clark for this information].

Chilean head for WIPO patents committee

Maximiliano Santa Cruz, a member of Chile's mission to the United Nations in Geneva, has been elected chair of the World Intellectual Property Organization's Standing Committee on the Law of Patents (SCP), which is in session in Geneva this week. Santa Cruz is reported to have received the support of Brazil [Source KEI].

Reforma a la legislación andina sobre propiedad intelectual

Perú busca realizar cambios Decisión 486 (régimen de propiedad intelectual) de la Comunidad Andina de Naciones (CAN), para poder implementar el Tratado de Libre Comercio (TLC) firmado con Estados Unidos y facilitar la firma de uno con Unión Europea (UE). El gobierno boliviano ales se niega terminantemente a consentir la reforma de ese instrumento de integración referido a la propiedad intelectual porque, de esa manera, frena todo el proceso de entendimiento entre los dos bloques de países. Perú cuenta con el apoyo de Colombia y Ecuador para avanzar en el acuerdo con la UE, pero no puede hacer nada si se mantiene firme la oposición boliviana. El pacto entre los dos bloques debe tener el apoyo de todos sus miembros, por lo que la oposición boliviana es insalvable. La Decisión 486 de la CAN comprende definiciones sobre compensación por uso de patentes no farmacéuticas y el derecho de usar patentes protegidas en actos preparatorios, entre otros puntos de los que Perú necesita desligarse para implementar su TLC.

Predictive report shows good signs for pharma patenting

Research and Markets has reported that Research and Markets has published its "Outlook for Pharmaceuticals in Latin America to 2013" (click here for details). According to this report, the eight leading Latin American pharmaceutical markets -- currently worth US$50bn -- are expected to grow by 9.9% between 2008 and 2013, outpacing the slowing North American markets. These markets cover some 474 million people with a GDP of US$3.4 trillion in 2008.

According to the report, access to medicines in the public sector has increased, with governments using their bargaining power to negotiate and centralise drug purchases in an effort to contain costs. At a regional level, MERCOSUR members have agreed to establish a drug price database to compare and monitor drug prices.

From an intellectual property perspective the report mentions that in Mexico the government has started a renewal process for drug registrations, it being predicted that there will only be patented and bioequivalent generics by 2010. For the time being, however, Mexico remains on the 2008 USTR Watch List. The region is also facing a growing incidence of drug counterfeiting, but initiatives are in place to control it.

Battle of the Virgins

In Virgin Enterprises Ltd v Café La Virginia SA , the Argentine Federal Court of Appeals in Civil and Commercial Matters held that Virgin Enterprises had no legitimate interest in registering the mark VIRGIN for goods in Classes 32 and 33 of the Nice Classification.

In 1991 Virgin, seeking to register a figurative mark containing the word VIRGIN for goods in Classes 9, 16 and 25. In order to do so, Virgin entered into an agreement with Café La Virginia SA, the owner of registered trade marks LA VIRGINIA, VIRGINIA GOLD and VIRGIN ISLANDS for goods in Classes 32 and 33 (beverages). Under the terms of this coexistence agreement, Virgin agreed that it not apply its trade mark to foodstuffs at any time. Virgin subsequently applied to register VIRGIN for drinks in Classes 32 and 33. La Virginia opposed and the applications were abandoned. Virgin later re-applied to register the same mark in the same classes. Once again, La Virginia opposed. At this point, Virgin filed suit for "undue opposition", alleging that the VIRGIN mark and La Virginia’s earlier marks were not confusingly similar. The Federal Court of Appeals upheld the terms of the coexistence agreement, concluding that Virgin’s behaviour was contrary to good faith. Also, Virgin’s past conduct was aimed at testing out the extent to which La Virginia would seek to enforce its rights.

Virgin's also argued that the agreement applied only to foodstuffs in Classes 29, 30 and 31, but not beverages in Classes 32 and 33. The court said that trade mark law provides no definition of ‘foodstuffs’, nor is that term limited by the Food Code. The two marks were clearly confusingly similar too, as Virgin must have conceded when it opposed Café La Virginia's application to register its own mark in Class 32 [Source: Case 13921/02, 7 February 2008, noted by Fernando Noetinger, Noetinger & Armando, Buenos Aires, in World Trademark Report].

Brazil plans to plunder US patents if cotton subsidy is held unlawful

Carlos Caminada (Bloomberg) reports that cotton-grower Brazil is to pursue $4 billion in sanctions against US patents and business services in retaliation against subsidies paid to US cotton farmers in the event that the World Trade Organization (WTO) supports the Brazilian government's proposal. Although it might seem premature, given that no decision has yet been taken, Brazilian officials from several ministries are reportedly already deciding which patent payments to suspend.

Last year the WTO gave Antigua and Barbuda free rein to infringe US IP rights to the value of $21 million after upholding the islands' complaint against US trading policies regarding online casino websites (see here).

Bolivia bloquea la reforma de la Decisión 486 en Comunidad Andina

Gracias a Alfonso Rivera (Tobar y Bustamante, Ecuador), en IP-Tango hemos tenido conocimiento de los problemas que están apareciendo en el seno de Comunidad Andina para reformar la Decisión 486 de régimen común sobre propiedad intelectual. Esta reforma ha sido solicitada por Perú para así poder cumplir con el Tratado de Libre comercio celebrado con Estados Unidos. No obstante, a pesar de que Ecuador y Colombia están de acuerdo con la modificación, Bolivia se niega a admitirla. Esto ha provocado que en el consejo Ampliado de Ministros de Relaciones Exteriores y de Comercio de la CAN celebrado el lunes y martes en Lima no pudiera aprobar dicha reforma puesto que se requiere unanimidad de los Estados parte. El gobierno peruano ha indicado que seguirán trabajando para que se aprueba la modificación.
Más información sobre la cuestión aquí.
La Propuesta de reforma de la Decisión 486 puede encontrarse aquí (SG/dt411/Rev2)

Proyecto de Ley peruana sobre sistemas nacionales de normalización

The "spanish version of IP-Tango" se estrena con una noticia relacionada con Perú. El INDECOPI (Instituto nacional de defensa de la competencia y de la protección de la propiedad intelectual) acaba de publicar el Proyecto de Ley sobre sistemas nacionales de normalización y acreditación. Esta ley, referida a uno de los temas más actuales en el mundo de la propiedad intelectual - standards - gracias al señor Bill Gates y su OOXML, "está destinada a fomentar la competitividad económica del país y así aprovechar los beneficios del Acuerdo de Promoción Comercial firmado entre el Perú y Estados Unidos de América".
Más sobre Perú, aquí.
Más sobre "standards and IP", aquí.

INPI in Argentina shifts stance on coexistence agreements

The current issue of the International Trademark Association's INTA Bulletin (Vol. 63, No. 11) carries a short feature entitled "INPI Signals More Flexible Approach to Trademark Coexistence". Written by Raquel Flanzbaum and Manuel Alonso (Mitrani, Caballero & Ojam Abogados, Buenos Aires), it summarises the current position under the Argentine trade mark law. Till now, no mark may be registered if an identical or almost identical mark has already been applied for or registered for the same goods or services by someone else. While INPI, the national rights administration bureau, has applied this rule irrespective of whether the applicant and the earlier rights holder/applicant have entered into a coexistence agreement -- but recent cases indicate that INPI has softened its position, taking such agreements into account.

Paraguay fakes in the spotlight

Writing in Gadling.com, Jeremy Kressmann ("Ciudad del Este - South America's black market hotspot") reports on the sale of counterfeit goods in Ciudad del Este, which he describes as "Paraguay's smuggling capital". He explains:

"The city is conveniently located at the convergence of the borders of three countries (Brazil, Argentina and Paraguay), making it the ideal transit point for tax free and often illegal goods headed to all points beyond. ...

As long as the Paraguayan and Brazilian authorities continue to turn a blind eye to the thriving smuggling practice, Paraguay's black markets will continue to thrive. For a country that doesn't see much tourism (or other industry for that matter) it seems to be as much an economic necessity as it is a fact of life".

Whatever the position of the state agencies, the fact remains that civil enforcement, policed by the IP owners whose rights are infringed by fake products, is particularly difficult to achieve when IP rights are abused in geographically remote areas and where each owner has to enforce its rights at its own expense.

Hard Rock brand for Costa Rica resort

Rainforest Resort & Casino S.A. is in the process of acquiring and developing several properties which will be turned into a 24-hour resort complex, “Rainforest Resort & Casino”. This resort, in the heart San José (Costa Rica), will offer a destination for individuals, families and corporations seeking 5-star accommodation, live entertainment, gaming, and lavish facilities. The developers are currently negotiating with the Seminole Tribe in Hollywood, Florida, for a licence to use the Hard Rock brand name for the project (the Seminole Tribe of Florida purchased the well-known Hard Rock Cafe business for $965 million deal from its former British owners) [source: Newswire Today].

Chile, Uruguay top tech index

Latin Business Chronicle (LBC) records that Uruguay was challenging Chile as the top technology nation in Latin America, while Cuba languishes at the foot of the list. These are the findings of LBC's third annual Latin Technology Index. Covering 20 countries, the Index compares the penetration rates of dial-up and broadband internet, personal computers, wireless subscribers and fixed telephone lines. All countries improved their score over 2006, though at different levels. El Salvador was the fastest riser, while Honduras and Nicaragua showed the lowest gains. Venezuela replaced Costa Rica as the Latin American nation with the fourth-highest technology level.

Hypertension? Too much cholesterol? Then try a trade mark licence

PR Newswire reports that Merck Serono, a division of the German pharma giant Merck KGaA, has signed a distribution agreement with Bristol-Myers Squibb for a portfolio of established pharmaceutical brands in Latin America.

This agreement gives Merck Serono the exclusive marketing and distribution rights to more than 30 prescription medicines, particularly in the cardio-metabolic field, in Argentina, Chile, Colombia, Ecuador, Panama, Peru and Venezuela. Sales of these medicines last year topped US$90 million. Products featured in the deal include well-established brands such as Pravachol for the treatment of high cholesterol levels and Monopril, an ACE-inhibitor used in the field of hypertension.

IP included in Chile-Australia trade package

Stock & Land reports that Chile and Australia have concluded negotiations for a free trade agreement (FTA), which should be signed in late July. The FTA, which will enter into force on 1 January 2009, will liberalise all existing goods trade by 2015. Key aspects of the Agreement include elimination of tariffs on virtually all trade between the two countries. In addition,

"transparent, high-standard protection has been locked in for intellectual property rights including patents, trademarks, geographical indications and copyright".

This is the first FTA between any country within Latin America and Australia.

Paraguay set to cash in on stevia

A news item in yesterday's Times Online ("Tate & Lyle under attack from Paraguay and India") reports that a herb used by the Guarani tribe of Paraguay has wiped 7p off the value of shares in Tate & Lyle, which fell to 445¼p. The share drop is a response to the news that US-based Wisdom Natural Brands is ready to distribute its SweetLeaf sweetener based on the stevia leaf to table-tops across America, cutting into already weak sales of Tate’s Splenda sweetener. The market potential of stevia has been noted in Paraguay, where the National Agronomy Institute has developed a new variety, 'ireté', which contains twice the amount of the sweetener compound in the same quantity of leaves.

Uruguay commits to WPPT in late August

By WPPT Notification No. 70 (WIPO Performances and Phonograms Treaty) the Government of the Eastern Republic of Uruguay has notified the World Intellectual Property Organization of its deposit of an instrument of ratification of the WIPO Performances and Phonograms Treaty 1996 (WPPT). This Treaty enters into force, with respect to Uruguay, on 28 August 2008.

Uruguay signed the WIPO Copyright Treaty 1996 -- the sister treaty to the WPPT -- in 1997 but has yet to ratify it.

The new Brazil ruling on embryo stem cell research

The IP Watch weblog reported yesterday that the Brazilian Supreme Court has finally given the go-ahead to research involving embryonic stem cells. The ruling follows a challenge to Article 5 of the 2005 Biosafety Law by the then Attorney General, who maintained that it was unconstitutional because it violated the right to life of the embryo. This article discusses the impact of this ruling on patent filing practice, noting:

"In Brazil, the stem cell cannot be patented, as Articles 10 and 18 from the Industrial Property Law (Law 9.279/06) state that the country does not recognise patents on life. But the country accepts patents on processes for obtaining stem cells and other things such as proliferation, differentiation, and patient treatment, with INPI requiring novelty, inventive step, industrial application and other tests".

[Source: "Brazil Approval Of Embryonic Stem Cell Research Could Boost Patenting", posted by Catherine Saez].

"Smart" to buy defective goods, so long as they're cheap?

The American Chamber of Commerce in El Salvador has released the results of a survey on the perception of counterfeiting and piracy there, according to an item by Jose Roberto Romero (Romero Pineda & Asociados) in the World Trademark Report. The survey, conducted in December 2007, covered urban respondents ages from 18 to 50+.

Clothes, CDs and DVDs were the goods that respondents most identified with counterfeiting, the recordings in particular being easy to copy. The survey concluded that Salvadorans were most likely to buy fake clothing (53%), shoes (34%) and perfume (26%), followed by counterfeit CDs, DVDs, food products, sport shoes, medicines, jewellery, toys, watches and books. Consumers in general believes that that “buying counterfeit products is smart, even if they are deficient with regard to their quality, safety features and durability”.

Brazil opens up com.br domains to ordinary folk

A circular from the Brazil law firm of Di Blasi, Parente, Vaz e Dias e Associados explains that the Administrative Committee of the Internet in Brazil (CGI.br - Comitê Gestor da Internet no Brasil), the committee that has authority to regulate domain name registration, has recently given a decision authorizing not only companies and legal entities to register domains with the suffix com.br but also physical persons. This decision, effective from 1 May 2008, has been welcomed as it allows any person to register a domain.

Welcome to IP Tango

This weblog proposes to provide free, reliable and - if possible - entertaining information about IP law, practice and business matters in the sphere of Latin America. If you'd like to get involved in this, as a blogger or as a supplier of information, please email me here. I hope that this blog will evolve into a collaborative weblog like the IPKat, Class 46, Afro-IP and IP Finance, with a good flow of information, the chance for readers to post comments, and NO ADVERTISEMENTS.