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

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


Genetic Resources and Patent Applications

 
From the Brazilian Instituto Nacional da Propriedade Industrial (INPI) we became aware that as of the 27th February, 2018, INPI will start to issue formal Official Actions (Official Bulletin Code No. 6.6.1) for all patent applications filed in Brazil covering inventions related to the access to national genetic heritage and/or associated traditional knowledge (TK) - (código de despacho 6.6.1).

This will be automatically issued in all patent applications filed with INPI and so, applicants need to provide proof of registration and / or authorization of access to access to national genetic heritage and/or TK within 60 days of publication in the Revista Eletrônica da Propriedade Industrial (the Brazilian Official Bulletin).The applicant shall produce a Guia de Recolhimento da União (GRU) which is a ‘positive’ declaration to the access to national genetic heritage and/or TK. According to INPI, if the applicant does not provide such proof within 60 days, ‘it will be considered that there was no access to the access to national genetic heritage and/or TK, and INPI will continue the examination of the patent application.’ [wait…INPI will continue? so what is the point?]

INPI also informs that this formality is needed ‘because Law 13,133 / 2015 establishes that, for the purposes of regularization in INPI of patent applications applied for during the validity of Provisional Measure No. 2.186-16 / 2001, the applicant must present the
proof of registration or authorization of access to the national genetic heritage and /or associated TK within one year counted from 06/11/2017.’…does it mean that INPI will continue examining the application but yet will not grant the patent because there is a need to this formality?


I don’t feel supportive of this notification made by INPI. It is like…hello, please submit the proof, if you don’t, then no worries we’re still going ahead with examining your application. This guidance or declaration made by INPI should have been better defined and actually challenging the applicants, e.g. ‘no proof no examination’ (especially in an office that suffers from backlog). Firstly, a company continuing with their application will just want to test the waters with their invention and once they see that they have a chance of being successful, then would look for the proof of registration and / or authorization of access to the national genetic heritage and / or associated TK.

Source INPI.

The sweetest banana in a pickle: GIs in Brazil

 
The Association of Banana Growers of Corupá (Asbanco) in Brazil, has recently made an application for a Geographical Indication at the national IPO (INPI). The GI is for bananas grown in the region of Corupá which claims to be the ‘sweetest in the country’.

Brazil going bananas!
Asbanco is a non-profit organization that “aims to allow banana farmers to act in an organized way in the pursuit of sustainable development of the activity, always striving to maintain the balance between production and the environment, providing the satisfaction of people living in the rural environment.” According to INPI Asbanco, the association is formed by 1,000 families who are small farmers. It is located at the foot of the Serra do Mar, at altitudes of up to 500 meters. It is claimed that plantation and harvesting is a 110-year tradition. According to the producers, the Corupá banana is considered the sweetest in the country and so one can observe the logo they use ‘BANANA DE CORUPÁ - DOCE POR NATUREZA!’ (Corupa’s banana – sweet by nature). Asbanco asserts that the banana industry in the region is ‘a generator of jobs and taxes.’

A pickle!
It is expected that the GI certificate will be delivered this year during the Banana Day celebration (#bananaday #18April). However…here comes the pickle! The association needs to make a decision: to add or not to add? shall the GI be extended to all products which derive from bananas from the Corupá Region?

Decisions were made and they have finally included these products. Yet, they understand that they are working against the clock and  they need to describe the products and to elaborate on their form of production asap.

Awaiting its analysis, Asbanco is confident on the application, pending the proposed corrections. They are also participating in a Geographical Indication Workshop run by INPI in August this year.

Source and further information INPI, Corupa and Asbanco facebook page.

Enredados is here! a newtwork for all IP and ICH issues

 
Celebrating the formal launch of 'Enredados' I am proud to invite you to an event taken place in London, Wednesday 28 March, 2018 (book here, free of charge). The event has two sessions under the name 'Copyrighting, Tradition and the Flight of the Condor':

1.- A talk by Prof Valdimar Tr. Hafstein from the Department of Folklore, Ethnology, and Museum Studies, University of Iceland. He is the author of a number of articles and books on intangible heritage, cultural property, international heritage politics, folklore, and copyright in traditional knowledge. He is the former president of the International Society for Ethnology and Folklore (SIEF) and former chair of the Icelandic Commission for UNESCO.

2.- A preview of a film lead by Prof Valdimar.

This event will celebrate the formal launch of Enredados, an online network of policymakers, academics and practitioners in the fields of IP and ICH established to encourage debate on the following issues:
•the intersections between IP and ICH-related policy;
•the relationship between IP and ICH safeguarding; and
•how IP protection might be used as a tool for safeguarding ICH

Enredados coordinators and event organisers:
•Charlotte Waelde (Professor of Intellectual Property Law,
Coventry University)
•Harriet Deacon (Visiting Research Fellow at the Centre for Dance Research, Coventry University)
•Patricia Covarrubia (Senior Lecturer in Law at the University of Buckingham and IP consultant at Latin America IPR SMEs Helpdesk).

For more info in the network, happy to answer any questions via e-mail.

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