Tuesday, 21 October 2014

Starbucks: no 'shared planet' in Colombia

On July this year the American well-known coffee brand Starbucks launched its first store in Colombia. But, before launching its store it applied for the registration of some of its trade marks at the Colombian Superintendency of Industry and Commerce (SIC). While the nominative and graphic marks for Starbucks did not encounter any issue, the same cannot be said for its nominative mark ‘Shared Planet’ applied to be registered in classes 30, 36 and 41 respectively.

Despite the fact that there was not opposition for the mark to be registered SIC proceeded to examine the sign in accordance with Art 150 Decision 486 of the Andean Community (i.e. “At the expiration of the period stipulated in article 148, or if no objections have been filed, the competent national office shall proceed to conduct the examination of registrability.”). By doing so, SIC found that the mark was similar to a previous registered one i.e. ‘Sharé’ (Dossier No 03 085665) registered back in September 2003 to Mr Martinez in class 30 Nice Classification (coffee, tea, vinegar, condiment sauces, etc) and therefore, rejected the said application for just that class. SIC granted to Starbucks the nominative mark ‘Shared Planet’ in classes 36 and 41 after the company appealed to the decision.

In the opinion of Ms Calderon, a lawyer from Prietocarrizosa, "this is a very complex case as there are reasons to believe that the signs have substantial differences that would not allow a consumer to get confused between them, but on the other side it is clear that the main elements of both signs are quite similar, hence, understand the position of the SIC to deny registration ".

It is noticeable from the dossier that the expiration date is/was 30 April 2014 and thus, up to today there has not been renewal of the said mark. However, SIC grants a grace period of 6 months and thus, Mr Martinez do have until 30 October to renew its mark – otherwise, after this day, it would be free to grab.

The newspaper 'La Republica' publishes the view of Mr, Jesus Mendez, an IP lawyer from the firm Wolf & Méndez. He appears to disagree with the ‘grace period’ stating that "In strict legal sense, the mark has expired and in this case [SIC] is extending the period of protection.”

Nevertheless one might remember that according to Art 153 Decision 486 of the Andean Community, the owner of a registered trade mark or any party with a legitimate right “shall be given a grace period of six months following the date of expiration of the registration in which to apply for renewal.” Moreover, the “registered trade mark shall retain its full validity over that period.” That said, and using the same statement as Mr Mendez, ‘in strict legal sense’ Mr Martinez still have a legal base for its mark to be protected and for SIC rejecting the said application from Starbucks.

Monday, 20 October 2014

Brazil: Progress and looking ahead -- facilitating online services

The Brazilian Instituto Nacional da Propiedade Industrial (INPI) is now facilitating access to online search system of trade marks, patents, industrial designs, and computer programs. It all started last Tuesday, October 14.

There is a direct link and thus access to the database without going through login/password page. However, if you would like to have access to a wider content and thus, production of documents, you should register. This latter appears to be a straightforward and easy process i.e. just filing out certain details – as far as I am aware nothing to do with ‘payment/fee’ details as the Venezuelan IP office requires (see previous post here).

Registration, while not crucial, comes divided into three sectors: 1.- Client (natural or legal person domiciled in the country); 2.- Lawyer or Attorney without special qualification (representing a client in the requested services); and 3.- Industrial Property Agent.

This new addition complements previous online services such as: ‘e-marcas, electronic view of petitions, and ‘push’.

Colombia trade mark registration keeps getting speedier

At the end of September Natalia Franco Onofre posted the good news on IP Tango that trade mark registration in Colombia was now taking place more swiftly, with registration in six months becoming a reality. It now seems that, following implementation by the Colombia Trade Mark Office of Administrative Resolution 48348, the average time for registration has dropped to four months. This is clearly good news for trade mark applicants.

Source: "COLOMBIA: Trademark Registration Now Takes As Little As Four Months" by Jorge Chávarro (Cavelier Abogados, Bogota), published in the INTA Bulletin, October 15, 2014, Vol. 69, No. 19.

Wednesday, 15 October 2014

Mercosur IPR SME Helpdesk

El Mercosur IPR SME Helpdesk ofrece de forma gratuita una primera línea de asistencia en temas relacionados con Propiedad Industrial e Intelectual y derechos de PI con el objetivo de facilitar la expansión de las PYME europeas (PYME de la UE y de los países asociados a la UE) que ya están instaladas, o trabajando con entidades de MERCOSUR y Chile, así como a aquellas potencialmente interesadas en emprender actividades comerciales y de I+D+i en estos países.
El Mercosur IPR SME Helpdesk es un proyecto que se puso en marcha en Noviembre del 2013, está cofinanciado por la Comisión Europea y en el cual participa un consorcio de instituciones de Europa y América Latina:

También cuenta con la colaboración y participación de diversos Expertos Senior de Mercosur, Chile y otros países latinoamericanos.

Mercosur IPR SME Helpdesk proporciona información, formación, así como asistencia personalizada y gratuita en materia de derechos de PI en MERCOSUR y Chile, a través de una completa serie de servicios y actividades, como por ejemplo una línea de ayuda “Helpline” (asistencia online y oficina física en Brasil), la publicación de documentos, noticias y eventos, actividades de formación, etc.

Para mantenerse al día de lo que pasa en el mundo de la propiedad intelectual con un enfoque orientado a la pequeña y mediana empresa en Latinoamérica, y especialmente en Argentina, Brasil, Chile, Paraguay, Uruguay y Venezuela, os recomendamos suscribiros a su Newsletter y seguirlos en Twitter, LinkedIn y  YouTube.

Monday, 13 October 2014

Ecuador decriminalises IP crimes -- for the time being

IP Tango learns that, following the adoption of a comprehensive Criminal Code, Ecuador has decriminalised both counterfeiting and the infringement of intellectual property rights. This new law is in conflict with the TRIPS Agreement, Article 61 of which states:
Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.
There are however a number of measures which, if not as directly applicable and effective as the criminal law, are still available to combat the sale of counterfeit goods. These measures include administrative actions, such as border measures; civil actions; and actions based on the Ecuadorian Constitution/

The government is also said to have announced that it is reviewing the position, and proposals to amend the Criminal Code and restore criminal penalties for IP are currently under consideration by the National Assembly.

This blogger is somewhat alarmed at the cavalier manner in which such an economically important measure as the provision of criminal remedies for certain IP infringements has been treated: perhaps the Ecuador government is unaware of the damage caused to legitimate business interests and ultimately to its own tax revenue by inadequate IP enforcement measures.

Source: "ECUADOR: IP Infringements Decriminalized", INTA Bulletin Vol. 69, No. 18 (information contributed by Maria Cecilia Romoleroux, Corral Rosales Carmigniani Perez, Quito).