IPTango
Hi! Welcome to our blog for intellectual property law and practice in Latin America
Hola, bienvenido a nuestro blog de Derecho y práctica de la propiedad intelectual en Latinoamérica
Olá! Boa vinda a nosso blog para a lei da propriedade intelectual e a prática na América Latina

Mexican GIs and the registry of foreign GIs and AOs

This post was first published on The IPKat blog:

Recently, the Mexican Industrial Property Law was significantly amended and on 27 April 2018, the first batch of amendments to the Law entered into force. These amendments modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Moreover, for the first time, geographical indications (GIs) are regulated under the Mexican Industrial Property Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property will be created.

In this post, this Kat summarizes the amendments that came into force on 27 April 2018, particularly with respect to GIs and AOs. More details about the amendments to the provisions related to industrial designs, patents, and utility models, as previously discussed by Kat friends, can be seen here.

A post by this Kat regarding the second batch of amendments, which will enter into force on 10 August 2018 and were published on 18 May 2018 in the Federal Official Gazette (DOF), will follow!

Geographical Indications and Appellations of Origin

Title V of the Mexican Industrial Property Law was thoroughly amended, inter alia to regulate GIs, provide for oppositions within the examination procedure for the declaration of protection and create a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI). Some of the highlights [amendments in red when the exact wording is included] are the following:

Definitions and the express provision that the common or generic name of a product can be included in a GI or AO. The definitions of GIs, AOs and geographical zone are provided in articles 156, 157 and 158 of the Mexican Industrial Property Law, respectively.
An AO refers to the “name of a geographical zone or the one containing such name, or another name known to refer to the aforementioned zone, used to designate a product originating therein, when its quality or characteristics are due exclusively or essentially to the geographical environment, including both natural and human factors, and which have given the product its reputation”.   A GI refers to “the quality, reputation or other characteristics of the product must derive fundamentally from the geographical origin”. A geographical zone is defined as “one consisting of the entire territory or a region, locality or place of a country”.
Article 162 expressly states that the common or generic name of a product can be part of a GI or AO, and as such it will not hinder the use of such name outside of the scope of protection of the GI or AO.

Declaration of protection and opposition procedureThe declaration of protection of GIs/AOs shall be made ex officio or at the request of “natural persons or legal entities directly involved in the extraction, production or manufacture of the product to be protected; by a chamber or association of manufacturers or producers linked to the product to be protected; federal government agencies or entities; or the governments of the federal entities in whose territory or geographical zone the extraction, production or manufacture of the product to be protected takes place”. The legal requirements for submitting the application, the examination carried out by IMPI (including an opposition proceeding and the possibility to change a GI application into an AO application and vice versa) and other relevant provisions relating to the declaration of protection procedure, are contained in Chapter II.

Grounds for refusal. The grounds for refusal for the protection of GIs/AOs are established in article 163, including that the name is identical or confusingly similar to a previous GI/AO, trademarks, slogans and trade names (registered/published or pending) applied to identical or similar products (or services); the name is descriptive; and that the name is “the technical, generic or commonly used name of the product to be protected, as well as those names that everyday language or business practice have become  the usual or generic designation of the said products”.

Authorization of useIMPI grants the authorization of use of a GI or AO for 10 years (renewable for additional periods of 10 years each) to those individual or legal entities that comply with the legal requirements established for such purpose. “[T]he user shall be bound to use [the GIs/AOs] in the form in which [they are] protected according to the declaration” and must apply the following notice or abbreviation on the protected product: “Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.
The grounds for invalidity are established in Chapter IV and include that the GI/AO was granted on the basis of false information. As well, the GI/AO may be cancelled, e.g., where the notice or abbreviation is omitted or has lapsed for non-use “during the three years immediately prior to the request for an administrative declaration…”.

Recognition of Mexican GIs and AOs abroad. IMPI shall request directly or through the competent authority that the protected GIS/AOs be recognized abroad in accordance with international treaties, commercial agreements or applicable legislation of the concerned country.

Recognition of foreign GIs and AOs in Mexico. A registry will be created by IMPI with the aim of recognizing GIs and AOs protected abroad, in accordance with the international treaties and the provisions established in Chapter V. Upon meeting the legal requirements, the foreign GI/AO will be registered and published in the Federal Official Gazette (DOF) and the holder of the foreign recognized GIs/AO will have “the power to exercise the legal actions of protection of the rights of the said [GIs/AOs]”, such as commencing proceedings based on administrative infringements and criminal offenses.
In addition, grounds for invalidity (e.g. the GI/AO was granted on the basis of false information) and cancellation (when the document in which the protection of the GI/AO was granted is not valid) of the recordal, are established in Chapter IV.

Administrative infringements and criminal offenses.
Administrative infringements are established in article 213 (XXII, XXX-XXXII), including  the use of a name or indication that is identical or confusingly similar to a protected or foreign recognized GI/AO applied to an identical or similar product; the translation  or transliteration of a protected or foreign recognized GI/AO applied to identical or similar products; and an act “to produce, store, transport, distribute or sell, identical or similar products to those protected by a GI/AO national or foreign recognized by the Institute [IMPI], using any indication or term that creates confusion in the mind of the consumer regarding the origin or quality, such as "kind," "type," "style," "imitation", “produced in”, “manufactured in” or other similar terms.
Article 223 (VII) provides that is a criminal offense “to produce, store, transport, distribute or sell products of national origin that lack the correspondent certification according to the GI/AO and the Official Mexican Standards [NOM], with the aim of obtaining an economic benefit for themselves or a third party.
There are fines for administrative infringements and imprisonment may be imposed for the commission of a criminal offense. For the “exercise of the civil and criminal actions … it shall be necessary for the owner of the rights to have affixed to the goods, containers or packaging of goods” the notices established in article 165 BIS 18 (“Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.)

Trademarks

Article 90 (X) was amended in order to establish as a ground for refusal for a trademark registration, “the common or proper names of geographical zones … as well as the populations when they indicate the origin of the products or services and can cause confusion or error regarding such origin; including those accompanied by indications such as "kind," "type," "style," "imitation" or other similar terms that create confusion in the mind of the consumer or imply unfair competition.”

Comments

The inclusion of GIs and the creation of a registry recognizing GIs and AOs protected abroad as part of the first batch of amendments to the Mexican Industrial Property Law, while long expected, are indeed major breakthroughs.

In addition, the provisions relating to the grounds for refusal for the protection of GIs/AOs, the establishment of administrative infringements and a criminal offense, as well as the legal consequences for not affixing to the goods, containers or packaging of goods the notices or abbreviations indicated in article 165 BIS 18 (the cancellation of the authorization of use and not being possible to exercise civil and criminal actions), strengthen the establishment of GIs and the regulation of AOs.

Moreover, the inclusion of a “standard” opposition proceeding, in which observations, evidence, and pleadings submitted by the applicant and third parties with a legal interest, will be taken into consideration by IMPI during the examination for grant of protection of a GI/AO, has been well received by IP professionals.

Furthermore, the amendments have resolved a controversy relating to AOs already protected in Mexico. Currently, there are 16 protected AOs in Mexico (Tequila, Mezcal, Olinalá, Talavera, Bacanora, Ámbar de Chiapas, Café Veracruz, Sotol, Café Chiapas, Charanda, Mango Ataulfo del Soconusco de Chiapas, Vainilla de Papantla, Chile Habanero de la Península de Yucatán, Arroz del Estado de Morelos, Cacao Grijalva and Yahualica) and before the amendments, there was a controversy regarding the [very strict and literal] interpretation of former articles 156 and 159 V. Thus, it was argued that AOs should be comprised only of the name of the geographical region by reference to the name of the political division (federal entities and municipalities); as well, an AO could not include the generic name of the product (habanero chili, mango, rice).

As to the first point, in Mexico, no federal entity or municipality is called Mezcal or Talavera; rather, they are regions that comprise a group of municipalities (Mezcal, Talavera, Soconusco de Chiapas) or federal entities (Península de Yucatán). Further, some of those AOs also include the generic name of the product.  Whatever the pros and cons of these issues, the disputes have now been resolved by virtue of the new amendments.

As to the second point, in  light of the Manchego cheese dispute during the negotiations of the Trade Agreement between the EU and Mexico (more details herehere and here) and considering that once a foreign GI/AO is recognized in the registry created for such purpose, the holder will have “the power to exercise the legal actions of protection of the rights of them [e.g. administrative infringement actions]”, IPKat readers might wonder whether these amendments might affect and if so, to what extent, the already announced recognition of the Spanish Manchego Cheese in Mexico.

On 21 April 2018, it was announced (more details herehere and here) that the EU and Mexico agreed to recognize the Spanish Manchego Cheese (made from sheep milk) in Mexico, so it will co-exist with the Mexican Manchego Cheese, as long as the labelling of such product specifies that it is made of cow milk and avoids any reference to the Spanish  -sourced product (e.g. the Spanish flag).

This Kat is eager to put her paws on the final text of the Trade Agreement, in which 340 European foods and drinks (including the disputed Manchego cheese) will be recognized in Mexico as geographical indications (GIs), this according to the press release published by the European Commission.  It is  expected that the Trade Agreement will contain some provisions regarding the co-existence of  GIs/AOs whose name has become  the usual or generic designation of some products in Mexico, considering that administrative infringement actions can be exercised by holders of foreign recognized GIs/AOs in Mexico according to the amendments to the Industrial Property Law.

Stay tuned for the amendments published on 18 May 2018 in the Federal Official Gazette (DOF)!

First, fourth and sixth pictures are courtesy of Dante Gbn. Third and fifth pictures are courtesy of Carlos Leyva.
Second picture of “Alipús San Baltazar” is from the official website of the social project Alipús, in words of this Kat “one of the best mezcals ever!”.

Brazil and the Madrid Protocol: are they nearly there?

 
In June 2017, the Brazilian Presidency sent to the National Congress Mensagem nº 201, to allow Brazil to adhere to the Madrid Protocol.

Therefore, building upon this, on May 10, 2018 the Brazilian National Institute of Industrial Property (INPI) and the World Intellectual Property Organization (WIPO)’s officials met at the headquarters of the INPI in Rio de Janeiro. At this stage, the WIPO exposed its experience in the management of this international trade mark registration system. INPI’s president noted the ‘efforts of the INPI team to reduce the time of examination of trade mark applications, in order to make possible the adhesion to the Agreement.’ The WIPO counterparts highlighted that Brazil is ‘well-structured to meet the requirements to participate in the Protocol, which will open up opportunities for domestic companies interested in the world market.’ On the same date, there was also a technical meeting with the INPI Trademark Board team, focusing on practical issues regarding the functioning of the system.

Additionally, on May 20, 2018, the General Coordinator of the Directorate of Trademarks, Industrial Designs and Geographical Indications (DIRMA), represented INPI at the "Meeting of Users of the Madrid System", organized by the WIPO in Seattle, United States. The INPI reported that the coordinator-general was as well to participate in the ‘IP Office Workshop’, which was organized by the Canadian, Hungarian and Mexico IPOs. It is also reported that one of the theme to be examined is ‘the registration of trade marks as part of an innovation strategy’.

Source the Brazilian National Institute of Industrial Property (INPI) here and  here.

Brazil in the Highway again!

 
The Patent Prosecution Highway (PPH) Pilot Project signed by the Brazilian National Institute of Industrial Property (INPI) and the US Patent and Trademark Office (USPTO) Phase I, was in force until May 10, 2018. The Pilot Project commenced on January 11, 2016, and was scheduled to end on January 10, 2018, but was later on extended until May 10, 2018.

Now the Pilot Project between these two offices have entered into Phase II, commencing on May 10 of this year and until April 30, 2020. By reading the Magazine of Industrial Property (RPI) nº 2470, published on 08 May, one can notice that another industry that will benefit from this project is the ‘information technology’ one – before, the Pilot Project Phase I was applicable to the ‘oil, gas and petrochemical industry’ only. Moreover, to be eligible, the invention needs to be classified with one of the symbols of the International Patent Classification - IPC.

According to INPI, 200 applications will be accepted among which up to 50 patent applications will obtain advantage from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT). Phase I was limited to the first 150 eligible applicants. INPI summarises the PPH stating that ‘Brazilians can use the result of the examination of the patent application in the INPI to accelerate the analysis in the United States and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average’. A PPH does not automatically grants a patent, since each national IPO will carry out its examination pursuant to their own legislation and procedures in force.

More information can be found in the Revista da Propriedade Industrial (RPI) nº 2470 (in Portuguese)

México – Reformas a la Ley de la Propiedad Industrial en materia de Marcas.


El pasado 18 de mayo se publicaron en el Diario Oficial de la Federación las Reformas y Adiciones a la Ley de la Propiedad Industrial, en materia de marcas.

En primer lugar, resulta destacable que se extiende la definición de marca, la cual, como en otras legislaciones, queda ahora definida como:

todo signo perceptible por los sentidos y susceptible de representarse de manera que permita determinar el objeto claro y preciso de la protección, que distinga productos o servicios de otros de su misma especie o clase en el mercado”.

Con este cambio, la legislación mexicana permitirá ahora la protección de marcas no tradicionales, dado que una marca puede estar conformada por denominaciones, letras, números, elementos figurativos y combinaciones de colores, así como por signos holográficos y formas tridimensionales.

Con la reforma, también se reconoce la distintividad adquirida o “secondary meaning”, es decir, se podrán registrar marcas que en principio no son registrables, por considerarse descriptivas o carentes de distintividad, cuando se demostrase su uso previo y efectivo en el comercio.

La reforma incorpora la figura del trade dress, es decir, se contempla ahora el registro como marca de elementos de imagen, tamaño, diseño, color, disposición de la forma, etiqueta, empaque, la decoración o cualquier otro que, al combinarse, distinga productos o servicios en el mercado.

En lo que respecta a la protección de Marcas Notoriamente Conocidas y Famosas, se elimina el requisito de que éstas se encuentren previamente registradas; además de que se establece como causal de nulidad de un registro de marca, cuando éste se haya obtenido de mala fe.

Otra importante reforma es la incorporación de las marcas de certificación, las cuales desde ahora podrán protegerse para distinguir productos y servicios con ciertas cualidades y reglas de uso establecidas, con el fin de agregar mayor valor a la marca y generar más productos y servicios de calidad.

Con esta nueva reforma, una marca puede ser caducada cuando la misma no haya sido objeto de uso por un periodo de 3 años consecutivos. Para evitar la caducidad, se tendrá que presentar una declaración de uso

El texto completo de las reformas puede consultarse aquí.

Pasuchaca: a known substance for a not so new use - will the JPO grant a patent?

 

From Peru, we hear about the work that the National Commission against Biopiracy does. This Commission, which is part of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), is unique in the world and its role is to search the patent offices of all countries, in order to identify patents and, applications for patents, in which either Peruvian biological resources or traditional knowledge are involved.


Image result for pasuchacaDoing their role, the Commission recently identified a potential case of biopiracy in Japan. Towa Corporation submitted an application for a patent to the Japanese Patent Office (JPO). The request was filed under the description ‘Agent to increase HDL cholesterol levels’, and referred to an extract from the Pasuchaca (Geranium dielsianum) which is of Peruvian origin. The Commission further argues that the application lacks ‘inventive step’ (it is obvious for a person skilled on the art).

Following this, the Foreign Ministry informed the Commission that it has received a communication from the JPO. This communication informs that the ‘patent application related to the Pasuchaca has not yet been examined and that it will take into account the observation submitted by Peru’.

Pasuchaca, is it novel and or obvious (inventive step)?

Typing the word ‘pasuchaca’ in the search engine Google, many hits appeared, referring to it as ‘medicinal plants’. The majority of sites noted that it is used for diabetes treatment and many others sites if not all, referred to it as a Peruvian plant. There are therefore, 2 issues to consider here:

  1. Access to Genetic Resources: Japan is a member of the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity. This legal instrument (soft law) is an international agreement that aims at sharing the benefits arising from the utilization of genetic resources in a fair and equitable way. Therefore it is expected that the authorities request the applicant to provide for the disclosure of origin of genetic resources as a requirement for patentability of such resources (and/or associated traditional knowledge); and
  2. Pasuchaca has been ‘used’ by ancient Peruvians for the diabetes treatment [novelty ruined, but can still be patentable: new use of a known substance]. Therefore potentially Pasuchaca may have that inventive step needed as it happen in the case of MACA for hair growth agent and also as an anti-age cream [both products patented by NATUREX, this is so because the use of MACA had nothing to do with previous knowledge - serendipitous]. Will Pasuchaca have the same fate? I then proceed to add to my search the word ‘cholesterol’ and… the site ‘peruherbals.com’ claims that Pasuchaca is an * Effective hipoglucemiant, * Excellent for diabetes and pancreas, * Reduce high cholesterol (more info click here). Is it then obvious that as Pasuchaca reduces the bad cholesterol, it increases the good cholesterol [as claimed in the Japanese application?]. We'll have to wait to see the JPO decision.

Source INDECOPI.

Copyright infringement by a sticker album: Stick that!

 
The Peruvian Copyright Commission, which is a sub-division of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI) has (ex-officio) dictated a precautionary measure of cessation against Capri Internacional SA [Resolution No. 00205-2018 / CDA-INDECOPI of 03 April 2018]

The measure suspends the commercialization of all the stickers of imagines corresponding to the album "World Cup Russia 2018", in which the denomination "3 Reyes" is shown.[Capri Internacional (formerly Navarrete - now 3 Reyes)]. The resolution comes after verifying that copyright law protects the photographs included in the album - the company did not have a licence.


In the same resolution, there was also a measure of cessation of the app "Virtual Stickers" - which is expressly referred to in the album "World Cup Russia 2018", in which the denomination "3 Reyes" was present. In addition, through the app access to recordings of football matches could be watched, and thus, the cessation order extended to the companies 3.0 Consulting Group SAC and Capri International S.A. The Resolution order the companies to ‘suspend all communication to the public of the aforementioned recordings, because these are protected as a related right within the framework of the legislation on copyright and related rights [secondary works], and must have the corresponding authorizations of each of the holders of the rights over these.’

Source INDECOPI.

Soft drinks and the right to freedom of expression

 
The right to freedom of information of consumers cannot be unduly limited, the Colombian Constitutional Court Says.

Through sentence T-543/17, the Colombian Constitutional Court held that the consumer’s right to freedom of information cannot be limited, and that any decision that could have a negative impact on it, only can be adopted after a due process, ensuring the protection of the fundamental rights of all actors involved.

The fact given rise to this decision is the request of the Colombian soft drink company Postobón to the Superintendence of Industry and Commerce (SIC)for the prohibition of displaying on TV of the education campaign on the health problems caused by the consumption of sugar-sweetened drinks that was developed by the Colombian Association of Consumer Education.

As a result, the Superintendence ordered to suspend the transmission of the campaign on TV while the validity of the information on it was checked. The decision was made on the argument that there was a risk that the advertisements might mislead the consumers since the information provided did not contain the scientific sources supporting them and, therefore, did not meet all the requirements of ‘clarity, truthfulness, adequacy, opportunity, accuracy, comprehensibility, precision, and competence.’

Arguing a violation of the rights of freedom of expression and due process, the Colombian Association of Consumer Education argued against the decision. Nonetheless, this was confirmed by the Bogotá Circuit Court No. 4 on the first instance, and by the Civil Chamber of the Tribunal Court of Bogotá on the second instance. In sum, these Courts affirmed that the acts of the Superintendence were directed towards consumer protection, given that the Association did not present the scientific evidence supporting the content of the advertisements claiming threats to health by sugar consumption. Furthermore, they found no violation of fundamental rights.

A group of consumers also brought proceeding against the decision of the Superintendence. This group of citizens claimed their right to receive information about the potential damage to health caused by the consumption of sugar-sweetened drinks. This claim was denied in the first instance by the Family Division of the Superior Tribunal of Bogotá, but accepted by the Civil Cassation Court of the Supreme Court of Justice.

When reviewing the case, the Constitutional Court concluded that the decision adopted by the Superintendence of Industry and Commerce contravened the fundamental rights to freedom of expression, freedom of information, and due process. Similarly, that the decision constituted a measure of censorship because it established a prior check on information. For those reasons, it ordered to the Superintendence the withdrawal of the administrative act prohibiting the public display about consumption of sugar-sweetened drinks.

The case can be read here (in Spanish)
Post written by Florelia Vallejo Trujillo
Assistant Professor, Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK


POPULAR POSTS