IPTango
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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

Chile vs Peru: the battle over ‘Pisco’ continues

 
The Peruvian Ministry of External Relations has issued a Press Release stating that Peru will appeal to the ruling of the Court of First Instance of Thailand against the registration of a Chilean association that intends to use the term Pisco.
Press Release 010 - 19
Given the news reports that advance the ruling of the Court of First Instance on Intellectual Property and International Trade of Thailand, it should be stressed that despite the exclusive ownership of the Peruvian Denomination of Origin Pisco in Thailand, said Court ruled that in that country you can use "Pisco Chile".
Peru considers that this first decision of the Thailand Court does lead to consumer confusion in that country, since the Pisco Denomination of Origin is Peruvian and this is confirmed by the historical, geographical, cultural and scientific arguments that our country supports and defends in all the world’s court.
In that sense, the ruling in the first instance will be appealed immediately by Peru, in order to continue opposing any attempt to register because these are obvious errors of fact and law.
A Pisco sour for a sour battle
Years of international dispute have persisted over the origin of Pisco which both Chile and Peru have produced since colonial times. Both countries recognize it in their own jurisdiction as a Denomination of Origin. Additionally, back in 2018, Chile was open to accepting the name of Peruvian Pisco if Peru accepted the name of Chilean Pisco – a qui pro quo that did not go far since Peru did not accept such a proposal.

The case brought appears straightforward. If the Thailandese Registry of Industrial Property recognized Pisco as a Denomination of Origin (DO) produced in Peru, it does then prevents the registration of the name and any marketing of Pisco within the Thailand market if it has not complied with the Peruvian national regulation. Clearly, if Pisco was not made in Peru it cannot be called as such. Well, it is not that simple. In India, the dispute over the name went over 9 years (finally won by Peru) and this appears to be the case now in Thailand. The dispute is over a year on, so get ready for a long battle.

The whisky exchange webpage (where I get my inspiration from:) ) notes that ‘Pisco is a grape brandy produced in Chile and Peru’. In the EU (oh BREXIT is coming…who will register first in the UK, Chile or Peru) both, Chile and Peru, were granted geographical indication. Chile had an association agreement (2002) where recognition was given, and then Peru applied for the registration of Pisco as GI (granted in 2013).

Intangible Cultural Heritage, Intellectual Property and the Politics of Development

 
The Enredados network (policymakers, academics, and practitioners in the fields of intellectual property (IP) and intangible cultural heritage (ICH)) is pleased to invite you to a seminar and panel discussion.

Intangible Cultural Heritage, Intellectual Property and the Politics of Development
Christoph Antons (University of Newcastle, Australia)

In countries of the “developing world”, intangible cultural heritage is important for both national development policies and the rights claims of local and indigenous communities. All intangible cultural heritage is originally local, but national governments tend to shift it to the national level in the interest of nation building and income from tourism. Where communities have migrated or live across borders drawn by colonial powers, this has triggered disputes between neighbouring countries, whereby governments use different national histories and interpretations of an often mystical past to support heritage claims. Law as an instrument of the state has supported this centralisation of heritage claims and administration in the initial stages.

Image result for christoph antons
Antons' latest edited volume
Recently, however, communities have begun to articulate their own regional and local interests in heritage and are finding some support from constitutional reforms strengthening human rights and supporting decentralisation policies. Such decentralisation policies in turn were triggered by a paradigm change in development policies which aimed at a reduction of what was perceived as central government corruption and at a better sharing of resources with regions and provinces. The presentation will show the bargaining in this context about intangible cultural heritage (and related royalties) between communities, communities and governments and between the governments of neighbouring countries. In claiming what they perceive to be their rights, the parties involved use frequently changing combinations of legal principles with varying degrees of validity and legitimacy, drawn in particular from intellectual property law, international law, environmental law, constitutional law and customary law. The presentation will focus on examples from Southeast Asia, with brief comparative observations related to developments elsewhere.

Place: Coventry University London Campus
Middlesex Street, London, UK
Date: Monday 23 September 2019
Time: 5.30pm-8pm
*FREE ENTRANCE*


Enredados aims to encourage debate on the following issues:

  • the relationship between IP and ICH safeguarding;
  • the intersections between IP and ICH-related policy; and
  • how IP protection might be used as a tool for safeguarding ICH.


See you there.

Illegal Streams: shutting down in Ecuador

 
The Ecuadorian Institute of Intellectual Property (IEPI) currently named SENADI (National Intellectual Rights Service) is the state entity that regulates and controls the application of IP. The Organic Code of the Social Economy of Knowledge, Creativity, and Innovation is the IP legislation applicable.

SENADI has different divisions, one of them is the Órgano Colegiado de Derechos Intelectuales, which is the office in ‘charge of attending all administrative resources and cancellation actions that are presented before it’.



The latest measure by SENADI is seen as a ‘milestone’, but why?

Background: in August 2019, DIRECTV Ecuador C. Ltda., and the National League of Professional Football, LALIGA, presented an administrative action against MEGAPLAY and LIKETV in Ecuador. SENADI carried out an inspection of a property in which supposedly there was equipment that allows access to TV signals without authorization.
How did it work? MEGAPLAY  and LIKETV were retransmitting unauthorized audio and video signals to their clients. The clients paid an amount to watch the programs as well as having a device called TV Box, that received the retransmitted signals.
The result: SENADI ordered the blocking of Internet Protocols (IP) that allow access to internet television MEGAPLAY and LIKETV in Ecuador.

This is not, however, the first time SENADI blocks illegal sites. Back in June 2019, SENADI blocked 5 sites belonging to ROJA DIRECTA which also specializes in streaming sports. Ecuador follows other countries in the region. In Argentina, the video streaming Cuevana.tv site (12 million monthly users) was blocked in 2011. In 2017, the Mexican national IPO suspended SPORTFLIX (the NETFLIX of sports ) due to copyright infringement. Just because is a new way to communicate and distribute TV programs, it does not mean that they are outside the IP legislation – watch out.

Chile on promoting national products

 
In Sept 2019, the Chilean Intellectual Property Office (INAPI) and Pro Bono Foundation signed a cooperation agreement seeking to promote the ‘education and culture of industrial property protection.’ The aim is to disseminate and guide users about ‘how to protect their brands and innovations’.

Background: Pro Bono is a NGO and a non-profit organization launched back in 2000. The organization ‘promotes and facilitates democratization in access to justice for the benefit of vulnerable people and groups and social organizations.’ It is made of 39 legal firms, 10 companies and an array of lawyers.

Image result for sello de origen chileOne of the key areas will be the use of ‘sello de origen’ - seal of origin, which aims to preserve and stimulate particular forms of traditional manufacturing/production, traditional crafts, and unique ‘national’ products. The purpose of ‘sello de origen’ is to promote the ‘adequate use of industrial property tools for the recognition and protection of Chilean products through the registration of Geographical Indications (GI), Denominations of Origin (DO), Collective (CoM) and Certification Marks (CeM)’. Check our previous post on this here.

There are six regions in continental Chile and as on the 12th of Sept 2019, the following products are benefiting (or to benefit) from these tools:

Norte Grande
Oregano de la Precordillera de Putre (oregano) – registered as GI
Aceitunas de Azapa (olives) – registered as GI
Maíz Lluteño (corn) – registered as GI
Limon de Pica (lime) – registered as GI

Norte Chico
Aceite de Oliva del Valle del Huasco (olive oil) – registered as DO

Centro
Manos de Isla negra (textiles handicraft) – registered as CeM
Dulces de Ligua (sweet pastries) – registered as GI
Sabor Limachino (tomatoe) – registered as CeM
Chicha de Curacaví (alcolic drink) – registered as DO
Dulces de Curacaví (sweet pastries) – registered as GI
Viñedos Casablanca Route (wine products) - registered as CoM
Sandía de Paine (watermelon) – registered as GI
Corazón de Paine (watermelon_ - registered as CoM
Chamantos y mantas corraleras de Doñihue (textiles) – registered as DO
Sal de Cahuil - Boyeruca Lo Valdivia (salt) - registered as DO
Alfarería de Pomaire (traditional clay jars) – registered as DO
Crin de Rari (miniature knitting) – registered as DO
Loza de Pilén (clay pots) – registered as DO
Puerro Azul de Maquehue (leek)– pending as GI
Mieles Altos de Cantillana Producida en Alhué 100% Natural (honey) – pending as a CoM

Sur
Alfarería de Quinchamalí (sweet pastries) – registered as DO
Tomate Angolino (tomatoes) – registered as GI
Prosciutto de Capitán Pastene (ham) – registered as DO
Piedra Cruz (semiprecious stone) – registered as DO
Sidra de Punucapa (cyder) – registered as DO
Cerveza Valdiviana Región de Los Rios (beer) – registered as CoM
SIPAM Chiloé (agricultural patrimony products) – registered as CeM
Cordero Chilote (lamb) – registered as GI
Chupallas de Ninhue (traditional handmade hats) – registered as DO

Austral
Calidad Aysén Patagonia-Chile (products and services) – registered as CeM

Insular
Atún de Isla de Pascua (tuna) – registered as GI
Langosta de Juan Fernández (lobster) – registered as GI
Cangrejo Dorado de Juan Fernández (crab) – registered as GI
Joya Negra del Pacífico (handicraft) – registered as CeM

New Brazilian slogan 'Brazil, visit and love us' challenged for copyright infringement

 
Image result for brazil, visit and love usBrazillian’s Tourism Institut (Instituto Brasileiro do Turismo – Embratur for short) has launched a slogan that is intended to be used abroad in order to foment Brazil as a tourism destination: 'Brazil, visit and love us'.

The slogan has been criticized for different reasons, for example, displaying a sexual overtone relating to the use of the pronoun 'us' instead of 'it'. Former Embratur's President noted that 'Brazil has been struggling to erase the image of being a sex tourism destination'; and this is also supported by the view of Mr. Lopes, President of the hotel association of Rio de Janeiro, who noted that '"us" needs to be taken out. "It's bad for us'.

From the IP arena, the slogan has been challenged for being a copyright infringement. A few days after announcing the trademark, Benoit Sjöholm, a French artist, has claimed that the font used infringes his copyright. The font is called Fontastique and can be freely downloaded (here for instance) but only for personal use. For commercial use, however, his previous authorization is required – which Embratur has not done.

After the slogan's short appearance, it is already back to the office for an adjustment. Embratur has announced that it will adapt the trademark in order to no longer use Mr. Sjöholm’s font. Instead, it will look for a free font on the Web (hopefully, commercial purposes allowed). One keeps the hope that, by changing the font, Embratur will also change the pronoun 'us' to avoid the lost in translation issue.

Post was written by Eloísa Deola Borges, Brazilian attorney
Lecturer (external) at Humboldt University, Berlin
Eloisa also works on the development of publications in Open Access at QUCOSA.

La OMPI ofrece su primer programa en materia de propiedad intelectual para mujeres indígenas

El Director General de la Organización Mundial de la Propiedad Intelectual (OMPI), Francis Gurry, publicó un mensaje en el marco del Día Internacional de los Pueblos Indígenas (9 de Agosto), el cual puede consultarse aquí

En tal sentido, resulta pertinente destacar que la OMPI está ofreciendo su primer programa de formación y asesoramiento en materia de propiedad intelectual para mujeres emprendedoras pertenecientes a pueblos indígenas y comunidades locales. 

La OMPI ha señalado que proyectos basados en conocimientos tradicionales (CC.TT.) y expresiones culturales tradicionales (ECT) fortalecen el sentido de identidad y pertenencia de los pueblos indígenas y comunidades locales, a la vez que generan ingresos que repercuten en beneficio de los mismos. 

En este contexto, dado el importante rol que la propiedad intelectual puede desempeñar al impedir la apropiación y aprovechamiento indebidos de los CC.TT. y ECT de pueblos indígenas y comunidades locales, la OMPI proporcionará capacitación y asesoramiento respecto al “uso estratégico y eficiente de los derechos de propiedad intelectual en apoyo” a los proyectos que sean seleccionados. 

En consecuencia, la OMPI podrá “asistir a empresarias creativas e innovadoras a desarrollar y comercializar de manera sostenible productos y servicios basados en CC.TT. y ECT; ayudar a identificar y gestionar las cuestiones de PI que puedan surgir en el contexto de los proyectos de catalogación y digitalización de los CC.TT. y las ECT; apoyar a organizadoras de festivales folclóricos, artísticos y culturales, así como artistas, artista intérpretes o ejecutantes y expositoras en dichos festivales, a supervisar y gestionar el uso de los derechos de PI en ese contexto”. Cabe señalar que estos son sólo algunos ejemplos del tipo de proyectos que pueden beneficiarse del programa ofrecido por la OMPI. 

El programa está dirigido sólo a mujeres dado el rol que generalmente desempeñan como custodias de CC.TT. y ECT, así como los desafíos y desigualdades que enfrentan en temas de acceso a la educación, financiamiento y servicios de apoyo. 

Requisitos

Pueden inscribirse al programa, mujeres emprendedoras pertenecientes a pueblos indígenas y comunidades locales que estén planeando o hayan comenzado un proyecto que involucre CC.TT. y/o ECT, tales como “artesanas, diseñadoras, músicas tradicionales y bailarinas, investigadoras, curanderas o pequeñas agricultoras”. 

Serán seleccionadas hasta 20 mujeres provenientes de las siete regiones reconocidas por el Foro Permanente de las Naciones Unidas: África; el Ártico; Asia; América Central, del Sur y el Caribe; Europa Oriental, Rusia, Asia Central y la región del Cáucaso Meridional; América del Norte y el Pacífico. Si es posible, se elegirán al menos dos participantes por región. 

Las participantes deberán poder comunicarse en inglés, francés, español o ruso. 

El programa 

El programa se divide en dos fases. La primera fase, de capacitación, se llevará a cabo en Ginebra del 11 al 15 de Noviembre de 2019 y comprende un taller práctico en el que las participantes aprenderán los conceptos básicos del sistema de propiedad intelectual así como “hacer un uso estratégico y eficiente de los derechos de propiedad intelectual en apoyo” a sus proyectos. De igual manera, podrán “conocer posibles socios para su implementación”. 

Los costos de las participantes para asistir a la capacitación en Ginebra serán cubiertos por la OMPI. 

En 2020 se llevará a cabo la segunda fase, de asesoramiento, principalmente a través de correos electrónicos y teléfono. En esta segunda fase del programa, las participantes recibirán asesoría por parte de sus mentores respecto a diversos aspectos de propiedad intelectual para la implementación de sus proyectos. La OMPI no proporcionará apoyo financiero en esta etapa del programa. 

Una vez que la fase de asesoramiento termine, las participantes informarán a la OMPI sobre los resultados en cuanto a la implementación de sus proyectos y responderán un breve cuestionario. 

Se espera que el programa de la OMPI genere una prosperidad sostenible en las comunidades de las participantes y reduzca las desigualdades de género y pobreza al fomentar la innovación, creatividad y espíritu empresarial de las mujeres de pueblos indígenas y comunidades locales. 

Solicitudes que han sido debidamente llenadas, firmadas y escaneadas deberán enviarse al correo electrónico grtkf@wipo.int antes del 30 de Agosto de 2019. Más información disponible en español aquí y en inglés aquí

Créditos: imagen de la cuenta oficial de la OMPI en Twitter. 

La versión en inglés de este artículo fue primero publicada en el blog The IPKat.

EU and Mercosur Trade Agreement - the lucky 20 (?)

 

Over the weekend, it was all over the news that after 20 years of negotiation and talks the EU and Mercosur agreed to a trade deal.

Mercosur is one of the largest trade bloc in South America (Argentina, Brazil, Uruguay and Paraguay), the other been the Andean Community (CAN) (Colombia, Peru, Ecuador and Bolivia). Since 2013, the EU agreement with Colombia and Peru started to apply, and this was later on joined by Ecuador (2017). This last EU agreement has seen how the market has gradually opened for both sides and has increased an investment environment for the South American countries involved. Bear in mind that the EU is the third largest trade partner in the Andean countries -- you can check the external link containing the fourth annual report (2018). If we go back to the start of this agreement, you may recall that we talk about one of the requirements imposed by the EU, that of Colombia to sign the Madrid Agreement.

Was Brazil and the heavy pushy 2019 on the Madrid Protocol a perfect clue for what was happening?
In Brazil we saw 2 public consultations: The registration of marks as multiclass trade marks: the Brazilian law does not allow for this. A multiclass trade mark application is filed for the purpose of getting ONE trade mark registered under two or more classes of products/services at the same time i.e. a multiclass application rather than a single application (a registration per class – a separate application must be filed for each class). The other hint was the open consultation on co-ownership and division of registrations and orders. Amusing to see in this latter announcement, published on the 21st May 2019, a notice indicating that shortly there was to be an open consultation on registration of marks under the Madrid Protocol; although by next day, the Brazilian Senate approved the Brazilian adhesion to the system. They did however opened the consultation on the 28th May.

I am looking forward to read the agreement and specially the section ‘Intellectual Property, including Geographical Indications’. Now a holistic approach is noted in section 13, here. On trade marks it states that there is an important reference to the ‘Madrid Agreement’ – does it mean that they will have to become members as the Colombia’s example? But, then I read that in regards to patents, countries that are not part of the Patent Cooperation Treaty are encouraged to sign – well, this is directed to all except Brazil. So, no encouragement for Madrid then, uh?. We of course cannot expect less from the EU counterpart to have an ‘ambitious’  on the topic of Geographical Indications. And to be honest it appears to be quite balance if we compare with the FTA between the EU and the Andean countries wh
ere there was a complete unbalance. In this one, the EU listed 355 and the Mercosur 220.

Hold your breath, the agreement still needs to be ratified by the national parliaments of all member countries of both blocs, as well as by the EU Parliament and EU Council.

Geographical Indication in Brazil: Jan-June 2019

 
The latest news re. GI in Brazil relates to the granting of a GI in the form of Indicação de Procedência to a national product. In May, the Brazilian Instituto Nacional da Propriedade industrial (INPI) registered the name ‘Coffea arábica do Oeste da Bahia’ for coffee coming from the municipalities of Formosa do Rio Preto, Santa Rita de Cássia, Riachão das Neves, Barreiras, Luís Eduardo Magalhães, São Desidério, Catolândia, Baianópolis, Correntina, Jaborandi e Cocos. The GI was granted to the Associação dos Cafeicultores do Oeste da Bahia who will be administering the GI.


In February, INPI granted a GI in the form of Denomination of Origin to the Consejo Regulador del Tequila A.C. to ‘tequila’. The application was submitted back in August 2008 and was finally granted this year – published at the Revista da Propriedade Industrial (RPI) nº 2510.

Before this, in January INPI granted a GI in the form of Indication of Source (Indicação de Procedência) to the national Associação Cultural e Fomento Agrícola de Tomé-Açu (ACTA) for ‘Cacau de Tomé-Açu’ (cocoa).

Brazil recognizes Geographical Indication in the form of Denomination of Origin and Indication of Source. A GI aims to delimit a geographical area’s name to the producers, providers of a particular product/service. In the case of DO, it refers to a country region, city whose products or services have certain features given by its geographical environment including natural and human factors. An Indication of Source refers to the name of a country, region, city whose products or services have certain features given by its geographical environment (no natural/human factor needed).

Finally, in March the Normative Instruction No. 095 (published in the Magazine of Industrial Property (RPI) nº 2504) was in force. The Normative establishes the conditions for the registration of Geographical Indications replacing Normative Instruction No. 25, 2013. Among the new conditions one can observe that the ‘Regulamento de Uso’ (Use Regulation) is now called Technical Specifications; there is now the possibility to change a GI already registered to, include or suppress the name of the product or service and; it is possible to change the GI’s graphic/figurative representation.




The Guna people to Nike: Just don't Do It

 
@Isaac Larrier
A limited edition by sportswear Nike is a trending topic. The shoes were to be a tribute to Puerto Rico but the Guna people, the second largest indigenous community in Panama, objected to the design. The said design was a ‘mola’, which is a protected traditional design by the community. The design in question are the traditional 'mola' patterns which feature colourful, swirling designs and geometric or figurative drawings. This art is ‘passed on stitch by stitch from mothers to daughters and bears witness to the Guna vision of the cosmos and their harmonious relationship with nature’.

The April 2012 issue of the WIPO Magazine, contains an article titled "Panama: Three Marks for Development". The article, which is a series, examined how the World Intellectual Property Organization (WIPO) may help associations of small local farmers and producers in developing countries to add value to their outputs through trade marks. One of the case study was ‘the Guna people’s finely-stitched cloth ‘molas’. The article explained that during the 1980s, there was a high demand for molas. As there was ‘no marketing strategy or legal framework to protect this age-old art, imitations of Guna designs flooded the market’. Therefore, the Ministry of Commerce and Industry with WIPO’s assistance passed Law No. 20 on the Special Intellectual Property Regime with Respect to the Collective Rights of Indigenous Peoples to the Protection and Defense of their Cultural Identity and Traditional Knowledge. This is a Law that is used as ‘good practice’ by many jurisdictions. A law of its kind that protects Traditional Knowledge. However, as we all know in the area of IP, these rights are territorial, and thus, the law protected the mola only in Panama. Yet, WIPO assisted the group and helped them to develop the mark ‘GaluDugbis’ trying to guarantee authenticity, an assurance to consumers. This is seen as a strategic tool that adds market value to products. The idea is for consumers to recognize the mark even internationally.

Is there an infringement? What about territoriality as we know that IP is only national? Or is this more to do with the rights of the people and their cultural heritage?
A leader of the Guna people notes that the matter rather than being the commercialization of the design, it was the fact that it was done ‘without consulting [them] first.’ This bring into attention the ‘right to be consulted’ embedded in the ILO C169 which refers to consultation, while the UN Declaration on the Rights of Indigenous Peoples (UNDRIP), 2007 notes ‘free, prior, informed consent’. In an article published recently in the IIC - International Review of Intellectual Property and Competition Law, by the Max Planck Institute, I covered the topic of ‘Geographical Indications of Traditional Handicrafts: A Cultural Element in a Predominantly Economic Activity’. A traditional product while the community may decide to commercialize it, still there are other issues that need to be (carefully) considered.

Finally, Nike apologized for the ‘inaccurate representation’ of the shoe and is withdrawing it from the market.

The first non-traditional trademark registrations have been granted in Mexico


This post was first published on The IPKat blog:

The Mexican Industrial Property Law was significantly amended last year through two batches of amendments. Read this Kat's reviews on the first batch here and the second one here and here

The second batch of amendments to the Law entered into force on 10 August 2018 and modified a number of provisions related to trademarks. One such amendment provides that trade dress, scents, sounds, holograms, the combination of colors and certification marks are entitled to trademark protection under Mexican IP Law. 

In a public ceremony that took place on 7 February 2019, Juan Lozano, Director of the Mexican Institute of Industrial Property (IMPI) handed trademark registration certificates to the following owners:
  • Hasbro, Inc. for “a distinctive scent formed by a sweet, somewhat mossy combination of a fragrance with vanilla tones, with small cherry accents and the natural smell of a salty wheat-based dough [Play-Doh]” (trademark application number 2088148, filed on 10 August 2018 in class 28).
  • Sureste Sustentable S.A. de C.V. for an “ecological painting [Pinturas ALESS] with a scent of bamboo forest” (trademark application number 2098966, filed on 13 September 2018 in class 2).
  • Germán Flores for the trade dress of a “decorative flowerpot of three pieces in the form of a figure [Flowerpots Robert, Estudio Floga]” (trademark application numbers 2097099 and 2097102, both filed on 07 September 2018 in class 21). Since, for the moment, the certificates are not available on IMPI’s VIDOC database, it is not possible to confirm whether registrations have been granted for both these applications.
  • Grupo Gran Café de la Parroquia de Veracruz S.A.P.I. de C.V. for the “sound of a metal spoon tapping three times a glass [Coffee La Parroquia de Veracruz]” (trademark applications numbers 2110164, 2110165 and 2110168, all filed on 04 October 2018 in classes 35, 30 and 43, respectively). Here too, it is not yet possible to confirm whether registrations have been granted to all applications).
This Kat is wondering, and probably some Mexican IPKat readers are as well, to what extent Grupo Gran Café will enforce the trademark right(s) recently granted in connection with the “sound of a metal spoon tapping three times a glass”. Indeed, the sound is associated with the following traditional way of drinking a “lechero” coffee (milky coffee) in the state of Veracruz: the waiter brings a glass containing an espresso measure of coffee, the customer taps his or her spoon on the glass in order that another waiter, with a jug high in the air, tops up the coffee with hot milk [Merpel says "a must-have if you are in Veracruz"]. 

This traditional way of drinking coffee is kept alive by both Grupo Gran Café de Veracruz and Gran Café de la Parroquia, both of which started as a family business (here and here). Currently, Grupo Gran Café commercializes coffee as La Parroquia de Veracruz, claiming on its website to have more than 80 years of tradition. Meanwhile, Gran Café de la Parroquia, established in 1808, highlights on its website the story of the “lechero” coffee (milky coffee), the celebrities who have visited the restaurant in Veracruz and the coffee machines used, dating back to 1914 (see how the coffee “lechero” is served at La Parroquia de Veracruz here and at Gran Café de la Parroquia here). 

And now, some stats* 

501 trademark applications have thus far been filed in connection with trade dress, scents, sounds, other non-traditional marks, holograms, and certification marks, including those recently granted, according to the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” published on IMPI’s MARCANET database, last reviewed by this Kat on 28 April 2019.

Most applications have been filed in relation to trade dress (284 applications), followed by scents (87 applications), sounds (52 applications), other non-traditional marks (42 applications), certification marks (28 applications) and holograms (8 applications). 

Class 32 tops the list with 85 applications, followed by class 5 (76 applications), class 35 (56 applications), class 30 (47 applications) and class 3 (35 applications). 

The top applicants are LABORATORIOS PISA, S.A. DE C.V., with a total of 38 flavor applications, 38 scents applications, and 28 trade dress applications. MARCAS TRADICIONALES Y FRANQUICIAS DE MEXICO, S.A. DE C.V. follows with 13 sound applications and 12 scents applications filed. INDUSTRIAS ALEN, S.A. DE C.V. ranks third, having filed 24 scents applications. THE COCA-COLA COMPANY is in 4th place, with 14 trade dress applications and 5 sounds applications filed (including the sound of opening a bottle of Coca Cola, trademark application 2088118, in class 32). Fifth place is occupied by SALCHICHAS Y JAMONES DE MEXICO, S.A. DE C.V. with 14 trade dress applications having been lodged. 

Comments 

It is expected that these amendments to the Industrial Property Law will strengthen the IP system in Mexico. In this light, the registrations granted to non-traditional trademarks are indeed a major breakthrough. However, this Kat wonders when and if IMPI will publish some official stats showing the percentages of registrations granted, applications refused, and opposition proceedings filed (if any) in relation to such applications. 

Moreover, considering that it is possible to review the prosecution history of trademark applications and registrations on IMPI’s MARCANET database, it is also expected that the digital files of the 501 applications of non-traditional and certification marks will have already been uploaded to such system. However, thus far, only the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” is available on MARCANET (here) and scanned copies of the applications are available on VIDOC database. 

The importance of reviewing such data lies in the insights that can be obtained regarding the criteria applied by IMPI in refusing non-traditional trademarks applications. As well, the data should cast light on the issuance of decisions in opposition proceedings, especially regarding trade dress and scents, which rank first and second among the types of non-traditional trademarks thus far filed. Furthermore, it will be also interesting to learn the criteria applied by IMPI and the courts when non-traditional trademarks are enforced, particularly regarding the infringement of confusingly similar (non-traditional) signs, such as scents or flavors. 

First and second pictures are from IMPI's official account on Twitter (@IMPI_Mexico).
Third picture is from La Parroquia's official page on Facebook.
Fourth picture is from Gran Café de la Parroquia's official page on Facebook.
Fifth picture is from IMPI’s website regarding the certification mark application number 2089310, filed by Tequila Regulatory Council. 
Video showing how the “lechero” coffee is served at La Parroquia de Veracruz is from Forbes México
Video showing how the “lechero” coffee is served at Gran Café de la Parroquia is from NotimexTV
Sound granted to Grupo Gran Café de la Parroquia de Veracruz S.A.P.I. and sound application filed by THE COCA-COLA COMPANY are from IMPI’s “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof”. Files available here and here
*Stats and the pie chart are provided based on the numbers published in the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” available on IMPI’s MARCANET database, last reviewed on 28 April 2019.

Non-traditional trademarks and other amendments to the Mexican IP Law (Second Part)


This post was first published on The IPKat blog:



This Kat summarizes in the second part of the report on the second batch of amendments to the Mexican IP Law, the highlights of the provisions thoroughly modified in relation to trademarks and administrative procedures. Read the first part here

Trademarks 
Specific products and services. According to article 113 section IV, the specific products or services to be covered by the mark must be indicated in the application form. 

Co-existence agreements and letter of consent. The grounds of refusal of a trademark registration established in sections XVIII, XIX and XX of article 90, which mainly refer to signs confusingly similar to another in respect of which a pending application has been filed or a trademark registration in force, are not applicable when the “… consent is expressed, in writing, in accordance with the regulations of … [the] Law”. 

Collective marks. According to article 96, this type of mark can be registered by legally incorporated associations or groups of producers, manufacturers or traders of products, or services providers, in order to distinguish the products or services or their members on the market, as long as they possess common quality or characteristics and differ from the products or services of third parties. 
The application for protecting collective marks must be filed along with the regulations governing their use, which inter alia, must comprise “the manufacturing, production or packaging procedures, the penalties for breaching the regulations, and the power to exercise the legal actions of protection” of the rights of the marks, in accordance with article 97 BIS (formerly 97). Once the collective mark has been registered, the members of the association or groups that are the trademark owners may use it along with the term “Marca Colectiva Registrada” [Registered Collective Mark]. Moreover, a collective mark cannot be licensed (articles 97 and 97 BIS, respectively). 

Certification marks. Any “sign that distinguishes products and services whose quality or characteristics have been certified by their owner, such as … [t]he components of the products; … [t]he conditions under which the products have been manufactured or the services provided; … [t]he quality, processes or other characteristics of the products or services, and … [t]he geographical origin of the products”, as well as GIs, are eligible for protection as certification marks in accordance with articles 98 and 98 BIS. 
Legal persons are entitled to register certification marks, “as long as they do not do business that implies the supply of products or the provision of services of the same nature or type of those they certify”. However, if the certification mark is a Mexican GI, it can be filed only by “legal entities directly involved in the extraction, production or manufacture of the product to be protected; … [t]he chambers or associations of manufacturers or producers linked to the product to be protected; … federal government agencies or entities, and … [t]he 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 application for protecting certification marks must be filed along with the regulations governing their use in accordance with the minimum requirements established in article 98 BIS-2, which inter alia comprise the technical specifications of the characteristics of the product or service to be protected, the verification procedure of such characteristics, the time frame in which the quality control on the production of the product to be protected would be carried out, and compliance with the regulations governing their use in accordance with the applicable Official Mexican Standards [NOMs] or other international regulation. 
Moreover, article 98-4 establishes that “owners will authorize the use of a certification mark to any person whose product or service complies with the requirements established in the regulations governing its use”. If so, the certifications marks may be used along with the term “Marca de Certificación Registrada” [Registered Certification Mark] and cannot be licensed (article 98 BIS-3). 
Declaration of notoriety or fame. The third paragraph of former article 98 BIS-1 (now article 98 TER-1) and section II of former 98 BIS-4 (now article 98 TER-4) have been repealed. Thus, registration is no longer a prerequisite for asserting that a mark has notoriety or fame in Mexico. 

Opposition Proceedings. Articles 120 (formerly repealed) to 120 BIS-3 regulate opposition proceedings in relation to trademark registrations (which is also applicable to the registration of slogans and publication of trade names). Once the formal examination of the application has been carried out, any person with a legal interest may file a notice of opposition within a month following of its publication in the Official Gazette. 
The notice of opposition must be filed along with evidence demonstrating that the application falls under any of the grounds for refusal established in articles 4 and/or 90, as well proof of payment of fees (around €174 per application opposed). If the notice of opposition meets the formal requirements, it is published in the Official Gazette, after which the applicant has one month for replying to the arguments and evidence submitted by the opponent. Once such period has elapsed, the parties have two days for submitting pleadings, after which IMPI will proceed to the substantive examination of the application. 
It should be noted that opposition proceedings shall not suspend the application procedures nor “prejudge the outcome of the substantive examination carried out by … [IMPI with respect to] the application”. Thus, after the substantive examination of the application is concluded, IMPI will issue the decision regarding the opposition proceedings filed. 

Declaration of use of registered trademarks. According to article 128, the owner must file a declaration of real and effective use of the trademark within the three months following the third anniversary from grant, along with the proof of payment of fees (around €46). If the owner fails to declare use, the registration will lapse (article 152 section II). 

Invalidity of trademark registrations. New grounds for the invalidity of trademark registrations are established in article 151, namely if the registration was obtained in bad faith (new section VI) and in the event that “… any other person who has had a relationship with the owner, directly or indirectly, of a trademark registered abroad, file[s] and obtain[s] the registration, of the said mark or of a confusingly similar mark in his own name without the express consent of the owner of the foreign mark”. In both cases, there is no deadline for starting invalidity proceedings when such grounds are claimed. 
Moreover, the term for starting invalidity proceedings based on previous use of a mark in Mexico or abroad has been extended from 3 years to 5 years. 

Administrative procedures
Title VI, chapter I, was modified in relation to article 183 which now establishes that IMPI will notify through the Official Gazette “all the resolutions, requirements and other office actions issued in relation to procedures of patents, registrations, and national publications, as well as those related to the maintenance of rights, except for the files provided in article 186 of … [the] Law”, which refer to pending patents, utility models and industrial designs. 

Administrative infringements
Article 213 section VII of Title VII, chapter II, provides as new administrative infringements, the use as marks of “names, signs, symbols, abbreviations or emblems referred to in … sections … XIII, XIV, … XVII and XX of article 90” of the Law. Thus, the use of identical or confusingly similar signs to a mark declared famous by IMPI now amounts to infringement. 

Comments 
The second batch of amendments significantly modified Mexican IP Law, particularly regarding trademark provisions It seems fair to say that the long-expected regulation of non-traditional trademarks, distinctiveness acquired by secondary meaning, certification marks, opposition proceedings, as well as co-existence agreements and letter of consents, have all been well received. It will be particularly interesting to see how IMPI implements the requirements of a clear and precise representation of a sign entitled to registration in relation to scents and flavors, as well as the criteria for proving secondary meaning. 

It was a common practice to submit co-existence agreements and letter of consents when replying an office action, with the aim of overcoming the grounds of refusal contained in article 90 section XVI (now section XVIII), namely the similarity between the signs. However, such submissions were not successful in all cases, so certainly it is significant that this ground for refusal shall not be applicable when the consent is expressed in writing in accordance with the regulations of the Mexican IP Law. It is noted that the amendments to the regulations of the Law in this regard have not been issued. 

Another common practice, namely, the use of the class headings, or very broad description of products and/or services, will not be possible anymore, due to the amendment to article 113 section IV, which requires that the specific products or services to be covered by the mark in the application form be indicated.. 

It is expected that the new grounds for refusal of a registration, such as signs filed in bad faith (e.g. filed in a way that is contrary to best practices in commerce or in which an unfair advantage is sought in prejudice of the legitimate owner) and those related to literary or artistic works (e.g. reproduction or imitation of the elements of literary or artistic works), will strengthen the Mexican IP system. 

Since the entering into force of the second batch of amendments to the Mexican IP Law, 501 trademark applications have been filed in connection with trade dress, scents, sounds, holograms, other non-traditional marks, and certification marks between August and December 2018, according to the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” published on IMPI’s MARCANET database, reviewed by this Kat on 24 April 2019. 



Note that the first non-traditional trademark registrations have been already granted by IMPI in a public ceremony which took place on 7 February 2019

So, stay tuned for this Kat’s report regarding the granting of the first non-traditional trademark registrations in Mexico! 



First picture is courtesy of Arheely Garza. 
Second picture is from IMPI’s website regarding the certification mark application number 2089308, filed by Tequila Regulatory Council. 
*Stats and the bar chart are provided based on the numbers published in the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” available on IMPI’s MARCANET database, last review on 24 April 2019. 

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