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

Smart IP for Latin America: calling researchers

 
Con gran entusiasmo anuncio que el Instituto Max Planck para la Innovación y Competencia, ubicado en Munich Alemania esta en la busqueda de dos investigadores academicos en el area de Propiedad Intelectual en Latinoamerica!!!
Let's tango...let's research in Buenos Aires!

Que es o quien es el Instituto Max Planck para la Innovación y Competencia?
El instituto fue creado en enero de 2011 como el Instituto Max Planck de derecho de propiedad intelectual, de la competencia y tributario. El instituto es independiente pero a su vez forma parte de la Sociedad Max Planck para el fomento de las ciencias que esta compuesta por más de 80 institutos y centros de investigación en Alemania y el extranjero.

La oferta – te buscan a ti
Si eres nuestro IPTango lector, esta plaza te puede interesar. El instituto esta ofreciendo DOS puestos para el cargo de investigador: uno a nivel junior y el otro post doctoral.
Lo mas fantastico de esta oferta es que la investigation sera en el Instituto en Munich (por 6 meses) y mas adelante teniendo la oportunidad de continuar en Buenos Aires, Argentina por dos anos mas!

Te lanzas?
Aquí te dejamos el link para que veas el perfil que buscan (junior y post doc) y las responsabilidades que tendras. Actua pronto pues las aplicaciones se recibiran hasta el dia 12 de Noviembre del 2018.

Suerte

Gracias a Pedro Batista, Wissenschaftlicher Mitarbeiter, Legal Manager – GRUR Int, Max-Planck-Institut für Innovation und Wettbewerb, por comunicarnos y compartir esta informacion.

Legalizing Graffiti: Chilean Chamber of Deputies says YES!

 
From Chile, we received the news that the Chamber of Deputies approved a project that regulates urban graphic art.

Establishing a legal framework ‘that allows the creation of urban graphic art, as expressions of the urban visual arts, both in national public goods and in private goods, always with the prior consent of its owner’ is the aim of the project.


According to the Bulletin, the graphic creations that the law covers are ‘all those artistic works that consist of images or texts expressed freely in walls, undergrounds, bridges, tunnels, or other public goods’. In this case, the artists would need a permit granted by the municipality, competent authority or owner.’ The said permit would be free of charge and granted within 30 days from the date of the request.

Yet, Bulletin 11810 notes that the law will be considered if it follows these principles:
‘a) Advancement, respect, promotion and harmonious relationship between the right to freedom of expression and the right to live in a pollution-free environment, enshrined in the Constitution and International Treaties ratified by Chile and in force.
b) Promotion of an active and binding participation of civil society in decision-making regarding the spaces to be intervened for the development of urban graphic art.
c) Active collaboration among the various agencies responsible for encouraging the development of urban graphic art.
d) Consideration of urban graphic art as a tool for social inclusion, neighbourhood, and community identity.’
An exception to the urban art, which will not be tolerated, is the one that provokes hatred due to race, ethnicity or social group, sex, sexual orientation, gender identity, religion or belief, nationality, political or sports affiliation; the illness or disability suffered by a person or group of people, or promotes the use of weapons or violence.

Municipalities must ensure compliance with the provisions of this law. The Culture Committee will now consider the project.

Apart from graffiti been permitted in these circumstances, what else can we learn from this project?
There has been plenty of debate and thoughts from different parties on what is the state of affairs of graffiti towards the copyright system. Is graffiti art? Art written in trains and walls bring matters to discussion in copyright law, for example: originality comes to mind, authorship, joint authorship, tangibility; reproduction; ownership and intellectual common, to name a few. Besides these, we need to think about moral rights. Indeed, by the project recognizing graffiti as an artistic work, we cannot challenge it, because as any other type of work, it is open to protection under copyright.
The courts in Latina America are willing to protect outside the box [giving me more confidence that graffiti will be actually protected under copyright]. For example in Argentina the CAMARA CIVIL - SALA J (Civil Chamber) granted protection to a make-up sanctioning the defendant to payment for infringement of economic and moral rights (here). In the European courts, specifically in the UK fixation for this type of work either the graffiti or the make-up will be problematic. There is a lack of clarity regarding the requirement of permanence for artistic works. This is noticeable in cases such as Creation Records and Metix v Maughan as well as Merchandising Corporation of America v Harpbond (known as the Adam Ant case).
This debate of ‘fixation’ has also received some debates when the work is a tattoo and no doubt it will received some interesting discussion in the case of graffiti.

Latin America keeps speeding...

 
Continuing with yesterdays report and PPHs in Latin America, here comes another one…INAPI (IPO in Chile) and the USPTO (the United States Patent and Trademark Office) had signed a memorandum of understanding for the implementation of the accelerated patent procedure called Patent Prosecution Highway (PPH). The pilot will come into effect from November 01, 2018.

Speeding the process...
As noticed in yesterday news, the program allows national patent applications, which have a favourable resolution issued by the national IPO, to expedite the processing of their corresponding applications, filed with the USPTO – and vice versa.

In Latin America, several bilateral agreements have been signed between national patent offices to promote this project and thus, enabling applications to request, if they wish, the accelerated process PPH. The process is faster because the national offices will share the ‘search’ and ‘examination’ results. Yet, the final decision, that is, the granting will be left to the corresponding IPO.

Source INAPI.
More info on PPH here.

Peru: User Satistaction Survey (USS) tool

 
Back in September 2018, the Peruvian National Institute for the Defence of Free Competition and Protection of Intellectual Property (INDECOPI) implemented the User Satisfaction Survey (USS) tool. This tool allows IPOs, which have a single, common approach to carry out surveys among participating IP offices. Used by the EU IPOs, this tool is now extended to non-EU IP offices. At the moment, there are seven non-EU IPOs that are using this tool: Bosnia and Herzegovina, Macedonia, India, Albania, Georgia, Serbia and Peru.

Source EUIPO.

Agreements among Intellectual Property Offices: do they work?

 
Reading the news from the national IPO in Peru (INDECOPI)  countless times this blog has reported on agreements between IPOs. Specifically, I usually report on the accelerated patent procedure - Patent Prosecution Highway (PPH) [and posting a photo of ‘speedy Gonzalez’ next to the news]. This process accelerates the granting of a patent in a particular country, if the application for the ‘same patent’ has been made first in another IPO (the other party on the agreement) and has a favourable patentability examination.

Peru has signed PPH with Spain, Japan; ‘the countries that make up the Pacific Alliance (Colombia, Mexico and Chile) and the PROSUR countries (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Uruguay and Costa Rica, eight of the 13 that recognize the PPH).’

Because of the agreements and the simplification of a PPH, the National Institute of Industrial Property of Chile (INAPI) became the first office that grants a patent to a Peruvian inventor.
The invention in question ‘allows preserving for a longer time the life of vegetables, such as fresh and precooked vegetables; as well as whole fruits and pulp.’ In 2017 Zucchetti Espinoza, the inventor, obtained a patent for his invention in Peru.

Good to see matters in practice.

More info on PPH here.
Source INDECOPI.

Intellectual Property and the Protection of Intangible Cultural Heritage: Emerging Themes and Challenges in Transboundary and Diaspora Contexts

 
As you may recall, we were organizing a session at the Association of Critical Heritage Studies which took place in China. This was held in early September, 2018 and I have now took the time to write a report on this.

The aim of the session was to examine the relationship between IP and ICH and to look at the intersection of IP and ICH policies. The five speakers had a background in IP with an interest in ICH. Papers were brilliantly presented: covering from copyright to GIs, and from patents to sui generis rights. Moreover, the papers covered different regions and or countries, which was indeed a bonus.

  1. Starting the session I talked about ‘ICH Safeguarding and IP Protection: Are they sufficient to knit a future for the Aymara’s weavers’. The aim was to examine the five-year project (presented by the Aymara’s people to protect and safeguard their TK) that was supported by UNESCO. Putting aside the debate that continues to exist of whether IP or sui generis right is the best way to protect, the purpose was to look at how IP can be of use in the protection and safeguarding of Aymara’s handicraft. The case studied was selected as the Aymara’s people has managed to work very well together, considering that they are situated in Bolivia, Chile and Peru. How IP will work in a transboundary situation was discussed by examining Pisco, a GI in dispute between Chile and Peru, and how they individually negotiate this GI with other countries when signing trade agreements.
  2. Prof Gyooho Lee title was ‘How to make creative transmissions possible under the intangible cultural heritage law in Republic of Korea’. Starting with a few examples of some national ICH he focused on the Pasnori (Epic Chant) which is one of the Korean ICH inscribed on the UNESCO list. Then he went on to examine the Korean Cultural Property Protection Act noting that ‘the preservation and promotion of ICH’, according to the Act, should be stipulated by separate Acts. An interesting fact was to learn that in Korea, ‘transmission’ of archetypes are to be regarded as the key factor for the government to approve cultural heritage as intangible cultural property.The differences between Intangible Cultural Property (Domestically) and Intangible Cultural Heritage (Implementing UNESCO Convention) were covered, remarking the debate on owners vs holders (individual or collective). To finish up he put forward the legal challenges such as the transparency of processes; the scope of terms; and finding the right balance between ICH and IP; to name a few.
  3. Prof Pamela Andanda spoke about ‘Protecting transboundary traditional medical knowledge in southern Africa through community codes and protocols’. This paper not only covered the definitions and procedures but also covered the current IP gap in protecting & safeguarding TMK. She based her talk on case studies such as ‘the Biocultural Protocol of the Traditional Health Practitioners of Bushbuckridge’ and the ‘San Code of Research Ethics’, raising the importance of valuing prior informed consent, pointing out to ‘always to enter through the door rather than the windows’. The five values reflected in the Code of Ethics: respect; honesty; justice and fairness; care; and process, should work for every case and likewise, shall be considered in any project. At the end, as she clearly stated, we are working on cultural heritage ‘with’ a community rather than ‘on’ the community.
  4. Dr Peter Harrison made powerful statements and facts about the pharmaceutical industry (which Prof Andanda was eager to discuss and exchange ideas). His presentation was on ‘Tangled Webs, Blurred Lines and Distal Horizons. Investigating the Justifiable Downstream Limits to the Positive Protection of Traditional Knowledge Associated with Genetic Resources (TKAGR): The Impact of Treating TKAGR as Intangible Cultural Heritage?’ The flowchart on the pathway of knowledge through drug discovery was very helpful as one became aware of the complexity of downstream and how this may be underestimated during negotiations. The research looks at to establish if a discovery linked to TK (no matter how distal it is) by a chain of causation is sufficient to merit a veto over its use.
  5. On closing, Prof Christoph Anton talked about ‘Intellectual Property and the Business of Intangible Cultural Heritage in Asia: Cross-Border Disputes and Community Concerns’. His attention was on the economic opportunities that has flourished with ICH and how this had recovered the debates on ownership, benefits’ sharing and ‘appropriateness’. He covered the potential of IP for some ICH but also looked at the other side of the coin, that is, the limitations of IP. An interesting point put forward was that, the local plant varieties on Indonesia are owned by the community but controlled by the State. With this in mind, we all think about benefit sharing especially if this policy works in countries where there is high corruption.
If you are interested in any of this papers and debates, please contact the corresponding author:
Dr Patricia Covarrubia, The University of Buckingham, UK
patricia.covarubia@buckingham.ac.uk
Prof Gyooho Lee, Chung-Ang University School of Law, Seoul, Republic of Korea
cion2004@hanmail.net; ghlee@cau.ac.kr
Prof Pamela Andanda, University of the Witwatersrand, Johannesburg, South Africa
Pamela.Andanda@wits.ac.za
Dr Peter Harrison, University of York, UK
peter.harrison@york.ac.uk#
Prof Christoph Antons, The University of Newcastle, Australia
christoph.antons@newcastle.edu.au
 wish you would have been there. Hangzhou, Sep 2018

Patentability of polymorphs: the interpretation of novelty and inventive step in Brazil

 
The title corresponds to a recent article published in the Journal of Intellectual Property Law and Practice (Oxford University Press) available here. This piece came as a collaboration between myself and Fernando Seixas, a Pharmacist and Patent Specialist based in Rio de Janeiro, Brazil.

The article reviews a couple of decisions by the Brazilian National Institute of Industrial Property (INPI) concerning patent applications of polymorphs and their counterparts in the EU and the US. The aim was to note inconsistencies in regards to the mere interpretation of concepts and therefore, to make aware applicants in how these terms are used in practice on the requirements of ‘novelty’ and ‘inventive step’.

Fernando has also written on this blog and we are always happy to receive and hear about your projects, and your interest. We more than welcome collaborations, and are indeed happy to facilitate networking in IP in Latin America.

Peru: A red card for Roja Directa

 
In Peru, the Copyright Commission, which is branch of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), announces that it has issued two precautionary measures Resolutions No. 444-2018 / CDA-INDECOPI and No. 445-2018 / CDA-INDECOPI ) against a webpage.

The Commission has ordered the blocking of the website named ‘Roja Directa’, which facilitates illicit access to the transmission of various sporting events, in particular, football matches. For example,a bit of a search would indicate that they are the 'world's biggest index of sport streams'. The Resolutions were imparted to Telefónica del Perú S.A.A. and América Móvil Perú S.A.C., both Internet service providers. They shall proceed to block the website called 'Roja Directa' which contains several e-addresses. [Back in 2015 we may remember that in Spain a court also requested 'Roja Directa' to immediately cease its dissemination activity which was through the provision of links, of the football matches of the Spanish League and the Copa del Rey].

Roja Direct was infringing copyright and secondary rights as it contained a list of links that were transmitting simultaneously a sport event without having neither a license nor authorization by the company Fox Latin American Channel LLC (the right holders).The Decision No. 486 establishes the Common Industrial Property Regime of the Andean Community (Bolivia, Colombia, Ecuador and Peru are all members) and, the Decreto Legislativo N° 822 de 23 de abril de 1996 regulates Copyright. In the latter, it is noted that the economic rights, derived from the property of a copyrighted work, grants the author (owner) the right to prevent third parties from: communicating to the public, reproducing, distributing and transforming the work. It is strongly advised to register copyright in Peru, although it is not compulsory.

The precautionary measure was requested by Fox Latin American Channel LLC in order to protect its rights. Currently there are collecting societies in Peru such as: APDAYC for the authors and composers of musical works; UNIMPRO for phonogram producers; EGEDA PERÚ for audio-visual producers and; APSAV for visual artists. They are non-profit organizations.

Brazil: GI update

 
This week the Brazilian National Congress published the Legislative Decree No. 154, of 2018. This Decree approves the agreement signed between Brazil and Mexico for the mutual recognition of ‘cachaça’ (Brazil) and tequila (Mexico) as geographical indications respectively.

Same line of news, we also heard that Brazil registered another national GI. This time the registration of GI was granted, as a designation of origin (DO), to bananas of the Region of Corupá ---published in the Magazine of Industrial Property (RPI) nº 2486.

The banana is from the subgroup Cavendish, with mean values higher than those of other fruit varieties. Another quality existing in this banana is its sweet taste joined with a lower acidity. The registration may have some social-economic implications as the Corupá Region has many rural families who benefit from the production of bananas in this unique environment. The region benefits from some peculiarities of climate, the ‘know-how’, traditions and local cultures.

First edition of Brazilian Case Law from the Board of Appeal

 
On July 23, 2018 the Instituto Nacional da Propriedade Industrial (INPI) published online a report about decisions from the Board of Appeal which were issued in 2017.

The decisions consider the guidelines issued between 2013 and 2016 and contains analysis of 480 decisions. The publication aims to impart transparency and consistency on how the INPI applies the guidelines and so, providing a better view for applicants. It addresses several common controversial issues such as clarity and precision, enablement, novelty and inventive step in different areas such as electronics, telecommunications and pharmaceuticals.


This was clearly inspired from the Case Law of the Boards of Appeal of the European Patent Office. However, one downside is that it only contains excerpts from the decisions -- no commentary or explanation is provided. This is probably due to the small number of decisions actually analyzed and the fact that the INPI guidelines are relatively new. In comparison, it is noted that the European case law contains an explanation of the rationale used by the Board to reach decisions, and sometimes addresses situations where different conclusions were reached based on the specifics of each case.

Despite the above, this is an important milestone for Brazil and a first step towards a more complete understanding of the Brazilian practice.

Post written by Fernando Seixas
Pharmacist and Patent Specialist, Brazil



Blockchain: a “disruptive” overview on various commercial sectors

This post was first published on Your LATAM FlagshIP blog and was written in collaboration with Alessio Balbo.

In 10 years 10 percent of the global GDP will be stored in blockchains” this data insight comes from the World Economic Forum, but what implications does it have (pragmatically) on nowadays society? This article will approach some advantages and disadvantages of the blockchain and how its possible applications may be disruptive in relation to many sectors but, first and foremost, let’s start with some brief background.

Created in 2008, the blockchain is an encrypted program that acts as an online ledger of transactions, and it provides an “irreversible, secure and time-stamped record”. Each block of transactions is linked to a chain, giving its participants an overall picture of what is taking place in the system. The program is designed to be decentralized, allowing transactions to take place between users without the need for third parties such as banks, or a central clearing system like SWIFT. In essence, in the context of finance, each user acts as their own independent bank —  free from administrative and associated costs, normally found in “traditional” financial centers. Each transaction is viewed as a single block where subsequent transactions or blocks are added. When a new transaction is recorded, a copy of the blockchain is sent to each node as they join the network (a node is each computer that is connected to the blockchain network). Blockchains can be public, private or hybrid (permissioned). The main principle behind it is trust, and the blockchain is safe, incorruptible and encrypted. By assigning to every single one of its users a public key, it allows them to identify their transaction publicly. Such key will not be disclosed by the blockchain, so every user can be totally anonymous, unless it is voluntarily disclosed.

Furthermore, records are not deleted on the blockchain, so nobody would be able to change the data stored on it, as it would have to change the whole “chain” of transactions.
As every new invention, one of the most important innovations is that the Blockchain is extremely cost-effective. This is because it excludes intermediaries from the picture, but it does not only cut costs by doing so, it also increases efficiency.

Let’s analyze the impact on a sector-by-sector analysis

In respect to banking, the blockchain could be effectively revolutionary. In fact, the implementation of the blockchain into the banking system would allow banks to save around 20B$ a year by 2022.

Looking at the latest news on the matter, it can be indisputably said that almost daily a new enterprise, a tech giant, or a new company comes out with an application of the blockchain. As an example, on the 15th of May, Amazon announced his partnership with Kaleido (CNBC article available here) in relation to the Bezos’ cloud computing service, to simplify the creation of a company based on the blockchain.

Particularly, one of the most interesting applications of the blockchain relates to healthcare. In fact, a distributed ledger in relation to health records would allow any hospital to access medical data belonging to any individual, with no need of additional paperwork. This could be particularly useful in relation to emergencies concerning patients rushed into surgery. The threat here would be addressed in the context of data protection and privacy.

Another further implication in the same industry (i.e. healthcare) could be the distribution and tracking of pharmaceuticals. To this regard, the well-known multinational company Merck has filed a patent claiming that the blockchain technology enables a reliable, secure storage of the reading results with very high data integrity, such that it is essentially impossible to manipulate or erase or otherwise taper [sic] with or lose such data, e.g., due to unintended or deliberate deletion or due to data corruption.”[1]. Blockchain adoption would result in increased transparency, safer and more secured delivery of pharmaceuticals and a decrease in the counterfeiting of healthcare products.

In the legal sector, the blockchain’s impact on Intellectual Property (IP) can be noteworthy. The constitution of blockchain networks in relation to IP offices, the traceability of trademarked products, the implementation of royalty distribution mechanism all have a sweet sound to the ears of the professionals working in this sector. In this regard, many international institutions are starting to use such technology to foster innovation. In fact, the European Union has set up the Bloomen project, where “blockchains will be used as a distributed database for media copyright information, for fast micropayments of media content, and for transparency in copyright management and monetization”. The expansion of such project would improve dramatically the efficiency of the sector.

Other figures within Intellectual Property, will may also take advantage of the use of the Blockchain, for example, regarding trademarks, it is expected that it will be possible to register or renew a mark using Blockchain technology. We know that the EUIPO is looking very seriously and actively at using blockchain to records and enforce IP Rights. However, in the USA, there is already an online platform using Blockchain technology to file trademarks (Cognate). The use of blockchain in the protection of trademarks or patents would represent a real revolution in the registration of these assets.

Similarly, another giant in the field of consultancy, Deloitte, is partnering up with the next participant to blockhatonSeal Network, to develop an anti-counterfeiting platform and technology to stop such illegal practices.

In a different sector, another giant, Alibaba, has announced the pilot program to track international shipments to China, in order to safely be aware of the origin, shipment and destination of the effective product ordered.

In relation to fashion, blockchain may be disruptive too, as QR codes or tracking numbers on labels may be able to tell the customers the origin of the specific item, the full history of the supply chain behind each garment and possibly even more (i.e. the history of the company, the materials used, the instructions on how to wash, etc.). Since the statistics only for 2016 amounted to 1 billion dollars of counterfeited articles sold, blockchain would be a blessing for the sector, allowing to fight more effectively against the growing scourge of counterfeits and piracy.

A similar approach has been applied to food, for instance, in emerging markets. A traceability of the product “from farm to fork” would simply facilitate the business of guaranteeing an origin and avoid corruption and quality control. The matter concerning food safety has historically increased up to the point of creating Agencies in charge of such control. A giant in the industry of supermarkets, Walmart, has already successfully carried out several blockchain projects, proving that such technology is a real game changer. Blockchain could also have an important role in the protection of foods identified and commercialized with a Protected Geographical Indication or a Designation of Origin, the control of raw materials (as to their origin, use, transformation, etc.), all of the aforesaid could be followed with greater ease and transparency.

The jewelry business may also be reformed and secured. Chemical fingerprints could radically change the industry and blockchain may be the key to track the diamonds, in order to guarantee the effective origin and a safe shipment too.

The industry of photography and works protected by copyright exposed to the dangers of internet may be helped by blockchain too. Since copyright does not need any registration to be valid, it does not depend to registries (unless the holder of such rights decides to submit them for registration to an Office). In this field, the real issue has always been the distribution of royalties to the legitimate owners and to the management entities of competence. As everyone can imagine, the internet has certainly opened a new way of making business in this sector, but it has also exposed works to more infringements and violations. For instance, by allowing a file to be downloaded, the author spreads his/her work online and reaches bigger audiences indeed, but such audiences may not always be having pure and honest intentions and may misappropriate the copyrighted work.

Particularly, the aforementioned applies to the music industry. In fact, the advent of new technologies transformed the music industry into an important source of income with high levels of exploitation, notwithstanding the existence of blatant disadvantages (i.e. the increase in piracy and the lack of payment in relation to the reproductions).

The effects of technology in the music industry are twofold, on the one side, there is the acceleration in the diffusion of musical works, which allows us to visualize a very positive scenario for authors and intermediaries, just as consumers are greatly benefited from this fact. On the other, there is the uncontrolled circulation in the network, the speed at which music circulates on the internet is unstoppable and untraceable by the holders of rights since it facilitates the unauthorized use of digital works and recordings. Uncontrolled circulation reveals very negative consequences for the basic and intellectual property industry.

Another consequence derived from the implantation of new technologies in the basic industry is the change in the relations between the authors of music, services, intermediaries and consumers. The digital environment allows a direct connection between the creator of the musical work and the audience, and that is precisely why the blockchain could be a real game-changer in the music industry. Media Chain, for instance, a company recently acquired by Spotify, takes care of the royalty distribution matter, offering music platforms to protect the authors and their works in the online world. Mediachain allows artists to create a digital record for songs on the Bitcoin blockchain and InterPlanetary File System. Spotify, in fact, aims to use such tool to create fairer conditions and more transparency in respect to the payment to artists for their musical works.

The blockchain does not uniquely help the music sector in relation to copyright. In fact, it applies also to photographers, whose works are constantly at risk of being copied, used or transformed without being remunerated. The need to broadcast and divulge the work is often the most significant mistake that leads to piracy. To this regard, Kodak, earlier on in January 2018, firmly declared to be willing to develop a blockchain based platform to remunerate photographers through the use of Ethereum. Photographers will register their photos on the KodakOne platform and buyers will purchase rights using the KodakCoin cryptocurrency. The platform will provide cryptographic proof of ownership and monitor the web for infringement, offering an easy payment system for infringers to legitimize their use of photographs. A pioneer to this regard is Fernando Alonso, the Formula 1 player who recently announced that he will be protecting his image and copyrights with KodakOne[2]. Mr. Alonso is the first public figure to release such a statement.

Another sector where the blockchain has arrived into is the timestamped proving of paternity of literary works. An example of this is Po.et, a shared, open, universal ledger designed to record metadata and ownership information for digital creative assets. Po.et is a continuation of Proof of Existence, the first non-financial application of the blockchain.

An interesting article from February 2018 explained how the blockchain may be a solution which could definitely solve the adult industry of pornography. Already various projects are underway with ICOs in relation to this industry, as stated by the author of the article on El País(cryptocurrencies like SexcoinTitcoin will be used as purchasable tokens and reusable on the various adult blockchains by keeping complete anonymity).

Conclusions

The blockchain technology has created a whole new playing field, and the game could yet be very hard-fought. With the prize at stake of higher transparency, efficiency and cost-effectiveness, it remains to be seen whether this becomes a winner-takes-it-all race and how the issue of standards for the technology will be managed.

Blockchain enables a completely new level of information exchange between different kind of industries, some of them unknown until now and others just emerging.

This new technology has a huge potential to help everybody improve their creativity, their relationship with technology and the realization of new business and, consequently, increase the value of such new creations. Obviously, the protection of these new assets will be closely linked to the protection of intellectual property, a field in which, as we have seen previously, Blockchain is already playing a leading role, providing different solutions to securing IP assets and innovation processes.

In our opinion, although blockchain is still growing day after day, it is getting closer to its breakout moment and it is just a matter of time before it will be necessary to adapt all related regulation, inter alia, IP laws.


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!”.

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