Thursday, 27 November 2014

Registration of IP licences: good news from Argentina

Argentina's National Institute of Industrial Property (INPI) has established a new registry for patent, trade marks, utility model, industrial model and design licences, as well as for technology transfer agreements. The registry will be administered by INPI's Technology Transfer Department.

Under Resolution 117/2014 of 9 June 2014, registration of licence agreements is voluntary. However, registered licence agreement will be enforceable against third parties since the latter will be deemed to have notice of them.

The new registration facility is available for both domestic licence agreements and those between Argentine licensors and foreign licensees. Although it is not explicitly so provided in the Resolution, the authorities have indicated their understanding that it will also apply to licence agreements executed between foreign residents.

Source: "INPI Creates a New Registry of Licenses", contributed to the INTA Bulletin by Juan M. López Mañán (Marval, O’Farrell & Mairal, Buenos Aires)

Monday, 17 November 2014

Scientology Church, ‘Prosperity’ and the Washington Convention: what do they have in common?

For one reason or another, our society has become aware of the Scientology Church, which was founded in 1952 by L. Ron Hubbard, a writer of science fiction at the time. Some of us, in the legal arena, are perhaps more prompted to hear about the Scientology church. In the area of intellectual property we hear cases on copyright and trade secrets for example. The case that I read over the weekend in the newspaper La Republica caught my attention, since this time was about trade marks.

The party in question is the World Institute of Scientology Enterprises (WISE) which describes itself as ‘Uniting all organizations and professionals using L. Ron Hubbard’s management technology.’ Back in October 2013 WISE opposed to the registration of the mark ‘Prosperity’, requested by Jafer Limited (here) in class 16 (magazines and publications, promoting fashion, beauty and personal care, as well as selling cosmetics, makeup, perfume, among others). The arguments brought by WISE in both instances of the Colombian Superintendence of Industry and Commerce (SIC) were as follows:
• Lack of distinctiveness, and
• the existence of the registered mark ‘Prosperity’ belonging to Wise.

This latter argument was examined by SIC. According to WISE, the sign requested “fall within the grounds of non-registrability” as established in Article 7 of the General Inter-American Convention for Trademark and Commercial Protection (Washington Convention). Colombia is a member of such agreement (in force since 1936) as well as many other Latin American countries and the United States. The convention is hosted by the Organization of American States.

Legal background...to prosperity
Mr Camilo Suarez, IP lawyer and an associate at prietocarrizosa firm explained that "trademark oppositions based on different rules to the Decision 486 are not as common”. He continues to explain that opposition based in other legislative provisions “are reserved for cases like this where very particular characteristics of internationality are imposed and they are exceptions to the principle of territoriality in trademark law.” In the same line, it is clarified that not only Decision 486 (CAN Common Intellectual Property Regime) is applied to protect brands, but also other legal instruments such as the Paris Agreement and the Washington Convention.

Art 7 of the Washington Convention however requires that apart from demonstrating that the signs are similar, it must also prove that the applicant “had knowledge of the existence and continuous use in any of the Contracting States of the mark on which opposition is based upon goods of the same class”. WISE is the owner of the ‘Priority’ mark in the United States in class 16 of the Nice Classification.

Jafer Ltd appealed to the decision arguing that the mark was cancelled for non-use in Class 16 of the Nice International in Colombia in 2013 ( Resolution 78474-2011). It also argued that there was no evidence that it had prior knowledge of the existence of that sign. The superintendent disagreed and the first instance decision was upheld and thus, granting “extra- territorial protection to the foreign trademark."

Friday, 14 November 2014

Peru snubs TM coexistence agreement, rejects NP300 registration

Nissan Navara NP300
By Resolution No 2005-2014/TPI, INDECOPI -- which serves as an appellate administrative body -- rejected a coexistence agreement filed by Nissan Motor Co in connection with its application to register the alphanumeric mark NP300 for "motor vehicles and parts thereof" in Class 12.  General Motors owned an earlier registered trade mark, N300, for "vehicles and parts thereof" in the same class, but had not opposed Nissan's application.

Chevrolet Move N300
The Peruvian Trade Mark Office considered the two marks to be confusingly similar and rejected Nissan's application. Nissan then appealed to INDECOPI, arguing that several trade marks containing the number 300 already coexisted in Class 12 (these being L300, R-300, T-300 and CROSSMAX CR 300). What's more, Nissan filed a coexistence agreement it had made with General Motors, under which the two car-makers pledged to take all necessary measures to avoid any likelihood of confusion among consumers when using the trade marks N300 and NP300.

INDECOPI dismissed the appeal, referring to the Andean Community Decision 486 on a Common Industrial Property Regime, which requires trade mark law to protect the interests of consumers. Accordingly, even though the parties had entered into an agreement, consumers might be confused when seeing both trade marks since NP300 and N300 both looked and sounded pretty similar. Further, even though both parties said they would take all necessary measures to avoid any likelihood of confusion, they gave no clue as to what specific actions they had in mind.

Source: "Court rejects coexistence agreement between Nissan and GM" by Adriana Barrera (BARLAW - Barrera & Asociados, Lima, Peru), posted on World Trademark Review, 29 October 2014

Thursday, 13 November 2014

Registering numerals in Chile: there's safety in numbers ...

In a ruling earlier this year the Chilean Industrial Property Court overturned the decision of Chile's National Institute of Industrial Property (INAPI) and allowed the registration of the mark 1818 for products in Class 25.

The applicant, Brooks Brothers Group Inc., sought to register the trade mark "1818" -- the year in which the original Brooks Brothers business was founded. Although this application was unopposed, it was rejected ex officio by the head of INAPI on the ground that it was contrary to Articles 19 and 20e of the Industrial Property Law (Law No. 19,039) because the term “1818” was non-distinctive or descriptive of the products in question.

On appeal, the Industrial Property Court took the opposite view and explained:
“as previously resolved by this Court, numbers from 0 to 9 cannot be registered as word marks, since they allow the composition of the remaining numbers (infinite) of the system; in all other cases, numbers are perfectly registrable, and indeed, easily distinguishable from each other, because each of them represents a different amount. This reasoning justifies the registration of the figure ‘1818’ as a trade mark, given that it has its own distinctive characteristics and a particular appearance allowing it to obtain trade mark protection.”
This is good news -- except perhaps for anyone who wants to register the number "8181" for goods in Class 25, which is identical to "1818! when viewed upside down.

Source: "Court Rules on Registration of Numbers as Trademarks", by Francisco Silva, Silva & Cia., Santiago, Chile, INTA Bulletin vo.69 no.18

Monday, 10 November 2014

Leasing your business: trade mark management

From Bucaramanga, Colombia comes an interesting case regarding the use of the trade mark ‘El Bambuco’ for the production of strings for musical instruments.

In 1973, Mr Emiliano Navarro founded 'El Bambuco' a factory of strings for musical instruments. On 2011, before his death he leased the commercial property to one of his employees, Mr Salvador Suarez Gonzalez.  When Mr Emiliano Navarro's son  (Nelson Navarro Carreño) applied for the registration of the mark 'El Bambuco', Mr Gonzalez opposed to the application of the said trade mark on the grounds that the sign was identical to his and used for the same business. Mr Gonzales noted that for the last 3 years, he has sustained and built upon the reputation of the said mark. Additionally, Mr Gonzalez registered the company in the Chamber of Commerce of Bucaramanga.

A matter of ownership
In October 2014, the Colombian Superintendence of Industry and Commerce (SIC) the second instance, revoked the decision made by the Directorate of Distinctive Signs (first instance) in which it refused to register ‘El Bambuco’ as a trade mark.

SIC acknowledged that the sign has been used prior the application. However, such right of use was not evident in the lease contract. Mr Nelson Navarro argued that the lease was for the use of the premises rather than the mark. He also argued that the mark applied for has acquired a high level of recognition among consumers for the last 37 years (not the last 3 years).

Another turn on this event was that the sign 'EL Bambuco' in class 15 was previously registered by Mr Emilio Navarro but he did not renewed the mark - expired in November 1996 (see this dossier here). SIC reviewed the evidence provided and determined that it was evident from the lease contract that the sign was existent and that the owner of the sign did not transfer its ownership to the tenant. SIC also heard evidence from two former employees of the factory who recognized that the original owner of the sign was Mr Emiliano Navarro. It was therefore concluded that Mr Gonzales “has always been aware” that the brand belonged to the landlord and that on his death, ownership passed to his heirs.

Source La Republica (in Spanish).