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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. 


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

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. 

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. 

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

This post was first published on The IPKat blog:

The Mexican Industrial Property Law was significantly modified last year through two batches of amendments. The first batch modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Geographical indications (GIs) are also now regulated under the Mexican IP Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI) will be created. Read this Kat’s review on the first batch here.

The second batch of amendments to the Law entered into force on 10 August 2018 and thoroughly modified some provisions related to trademarks and administrative procedures.

This Kat summarizes in two posts the second batch of amendments.

Office actions deadlines for patents and trademark applications

Applicants have a two-month term to file a response to an office action issued during the formal and/or substantive examination of a patent or trademark application. Such deadline may be extended for an additional period of two months which, according to the amended articles 58 and 122 BIS, “… shall be counted from the business day following the expiration of the term of [the first] two months”. 

Title IV of the Mexican IP Law was thoroughly amended to regulate inter alia the registration of non-traditional trademarks, certification marks, the distinctiveness acquired by secondary meaning, co-existence agreements and letter of consents, grounds for refusal of registration of a trademark, opposition proceedings, declaration of use of registered trademarks and invalidity proceedings. Here are the highlights:

Natural and legal persons. The first part of article 87 (“industrialists, traders or providers of services may use a trademark …”) was amended to indicate that “any person, natural or legal may use a trademark in industry, commerce or in the services that they provide. However, the right to its exclusive use shall be obtained by its registration with the Institute”. Such amendment eliminates any doubt regarding whether the Law limited the use of a trademark only to “industrialists, traders or providers of services”.

New trademark definition. The former wording of article 88 limited the registrations to any visible sign. However, it is now possible to register non-traditional trademarks, due to the new definition included in the Law, which establishes that a trademark is “… any sign perceptible by the senses and susceptible of being represented in a way that allows determining the clear and precise object of protection, which distinguishes products or services from others of the same type or category on the market”.

Thus, section II of article 113 does not anymore require specifying whether the sign is a wordmark, figurative, three-dimensional or combined. It is now established that the representation of a sign must be included in the application filed with IMPI.

Signs that can be registered as a trademark. According to the amended article 89, holograms, combination of colors, sounds, scents, and trade dress are eligible for registration.

In this context, trade dress is defined as the “… plurality of operative elements; image elements, including, among others, the size, design, color, shape layout, label, packaging, ornamentation or any other that when combined, distinguish products or services on the market …”. Recently, IMPI published on its website that “a picture or a drawing in black and white or color, showing the width, height and volume of the sign to be protected, as well as a detailed description”, is required for filing a trade dress application.

Distinctiveness acquired by secondary meaning. The antepenultimate paragraph of article 90 indicates that the grounds for refusal of registration of a trademark contained in sections I, II, III, IV, V and VI, which mainly refers to generic and descriptive signs, “… shall not apply when the trademark has acquired, for the products or services for which the application has been filed, a distinctive character derived from the use that has been made in commerce”. However, a three-dimensional shape will not acquire distinctiveness by secondary meaning “… [when] … the shape [is] inherent to its nature or functionality …”, according to the penultimate paragraph of article 90.

New grounds for refusal of trademark registrations. Sections XX, XXI and XXII were added to article 90 to regulate new grounds for refusal in respect of the “… name of a natural person that is identical or confusingly similar to a trademark application filed earlier that it is in process or a trademark registration in force, or a published trade name, in connection with similar products or services; … [t]he signs that reproduce or imitate names or elements that refer to a plant variety protection, as well as animals breeds, that may cause confusion in the consumer in connection with the products or services to be protected, and …[t]he signs filed in bad faith” which inter alia are those signs “… 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”, respectively.

AOs and GIs - Grounds for refusal of trademark registrations. Amended sections XI and XII of article 90 establish that “[t]he appellations of origin, geographical indications, names or signs of places, known for the manufacture or production of certain products or the provision of certain services; as well as those that are accompanied by expressions such as: "kind", "type", "style", "imitation", "produced in", "manufacturing in" or other similar terms that create confusion in the consumer or imply unfair competition”, as well as the “[t]he names of places of private ownership, when they are special, not liable to be confused and are characterized by the production of certain products or the provision of certain services, without the owner’s consent”, are not eligible for trademark registration. 

Surnames, images and voice of persons - Grounds for refusal of trademark registrations. Section XIII (formerly section XII) of article 90 prohibits the registration of “names, surnames, nicknames or pseudonyms of persons who have acquired such prestige, recognition or fame that may create a risk of association, mislead or deceive to consumers, unless the application has been filed or expressly consented by said person or whoever has the right in question”.

Likewise, in addition to the portrait and signatures of persons, their images and their identifiable voices cannot be registered as a trademark without their express consent or, if they have deceased, by whoever has the right in question.

Literary or artistic works - Grounds for refusal of trademark registrations. Moreover, according to section XIV (formerly section XIII) of article 90, “[t]he identical or confusingly similar names to the titles of literary or artistic works, as well as the reproduction or imitation of the elements of said works; when … they have such relevance or recognition that they may be liable to deceive or mislead the public because they unfoundedly believe that there is any relationship or association with said works”, are not eligible of trademark registration unless it is expressly authorized by the owner of the right in question.

Furthermore, the total or partial reproduction of literary or artistic works are not eligible for trademark registration without the copyright owner’s consent, in accordance with the second paragraph of section XIV (formerly section XIII). Likewise, the third paragraph of this provision establishes, as a ground for refusal of a trademark registration, fictional or symbolic characters or real personages portrayed that have such relevance or recognition, unless the application has been filed by the owners of the right in question or a third party with their consent.

Stay tuned for the second part of this Kat’s report on the amendments of Mexican IP Law!

First picture is courtesy of Arheely Garza.
Second picture showing a “Valentina” is from IMPI’s website regarding the trade dress application number 2130389, filed by Salsa Tamazula SA de CV.
Third picture is courtesy of Dante Gbn.

Brasil más cerca de Madrid

La Cámara de Diputados de Brasil aprobó el pasado 3 de abril el Proyecto de Decreto Legislativo nº 860/2017 sobre el tratado internacional "Protocolo referente al Acuerdo de Madrid relativo al Registro Internacional de Marcas", más conocido como Protocolo de Madrid. El texto ahora pasa al Senado Federal.

El Sistema de Madrid permite proteger una marca en gran número de países mediante la obtención de un registro internacional que surte efecto en cada una de las Partes Contratantes que se hayan designado. Consta actualmente de 104 Miembros y abarca 120 países, que representan más del 80% del comercio mundial.

La preparación operativa realizada por el INPI para la implementación del Protocolo de Madrid abarca la modificación de los sistemas de TI utilizados en el procesamiento de pedidos de marca, la creación y modificación de procedimientos operativos, la edición de actos normativos y manuales, una reestructuración interna y el dimensionamiento y capacitación de los equipos.

Brasil sería el 7º país del continente americano que se adheriría al Sistema de Madrid.

How Venezuelan Crisis affects IP owners

HOW VENEZUELAN CRISIS AFFECTS INTELLECTUAL PROPERTY OWNERS People who believe that cryptocurrencies have no real utility should look carefully at what is happening in Venezuela.

By Alvaro R. Bonilla. Founder BR Latin American IP LLC

You have probably never heard about the Petro, a cryptocurrency launched in October 2018 by the government of Venezuela as a measure to fight against an out of control inflation of more than 1.000.000%.

The "Petro" was launched about a year after the "Rabbit Plan" didn't work out. The "Rabbit Plan" was a national campaign for people to raise rabbits in their houses so they could have access to animal protein, something very scarce in once the richest country of Latin America. The plan did not meet the expectations as most people were not capable of killing what became their furry pet.

Well, now Petro has become the payment method for official fees for foreign IP applicants, but there is more than a catch with this.

How did we get to this point?

First, the Chavist Venezuelan government has never been a fan of Intellectual Property. In fact, they are against any private property and even more if it is an income producer private property.

For years the Venezuelan IP authority, the SAPI, became a black box were applications were filed but nothing happened. Not even a single patent was granted for many years.

One day, following the example of their socialist friends in Ecuador, they discovered that they could make a good amount of money charging incredible high official fees to foreign applicants.

The SAPI opened bank accounts in the US and later in Puerto Rico to receive payments from foreign applicants as it was not possible for them to pay in the local currency.

Later, as the Venezuela huge humanitarian, economic, social, political and international crisis became a regional problem, the US government started to impose sanctions against their regime.

The time when the SAPI was receiving thousands of dollars for a single patent annuity came to an end as their US-based bank accounts got closed.

On February 2nd, 2018, the Venezuelan Patent and Trademark Office (SAPI) advised the public to stop making registration related fee payments in foreign currency until the authorities could clarify the exchange rate to be applied. In fact, their official exchange rate is so distorted that if used applicants will end up paying pennies for their applications.

On August 23, 2018, the SAPI approved a new set of fees that represented a price increase of 142,000%, a move that sparked outrage among the IP community in Venezuela, with several of its leaders calling for the repeal of the measure.

On top of this, the SAPI entered back in low-activity mode, virtually halting the IP registration proceedings.

The situation did not change much until February 1st, 2019, when the SAPI published a new set of fees, which ended the year-long suspension of payments enacted on February 2018.

Not all was good news: according to the SAPI announcement, foreign applicants and right owners would have to make their payments in "Petros", the government-sponsored cryptocurrency.

Legal challenges have been announced against the measure, but their success is far from guaranteed.

The SAPI directive meant a new hurdle for US-based applicants, since on March 19th, 2018 the US government had issued an executive order effectively prohibiting any US person or within the US to provide financing for or otherwise deal in "any digital currency, digital coin, or digital token that was issued by, for, or on behalf of the Government of Venezuela on or after January 9, 2018."

So foreign applicants are now in a delicate situation if they do not use the Petros they might lose their IP rights in Venezuela. But if they use them to pay their fees they are at high risk of getting a sanction from the US.

Even though the "Petros" payment platform is not yet available for the general public, we recommend our clients to seek regulatory advice in their countries in order to avoid potential risks.

As with everything now in Venezuela we are not sure what is going to happen. At least we know for sure that as the "rabbit plan" is no longer working we will not have to pay official fees with rabbits.

Colombia: the Superintendence of Industry and Commerce assumed IBEPI's Presidency

Since 01st January 2019, The Colombian Superintendence of Industry and Commerce (SIC) has assumed Pro Tempore, the Presidency of the Ibero-American Program on Industrial Property and Development Promotion (IBEPI). The programme subscribed to the Ibero-American General Secretariat (SEGIB) brings together the Intellectual Property National Offices of 14 countries of the region, including: Brazil, Argentina, Spain, Mexico, Peru, Portugal, El Salvador, Guatemala, Costa Rica, Ecuador, Uruguay, Paraguay, Dominican Republic and Colombia.

The IBEPI focuses on the promotion of the use of intellectual property as a tool for competition and development in the industrial, commercial and research areas of Ibero-American countries. Its general objective is the promotion of development of Ibero-American societies through the strategic use of intellectual property in support of public policies; it aims to use it as a tool for competitiveness in the commercial, industrial and research sectors of the region.

The program is currently developing five lines of action which will be promoted and articulated through the year. This include: (i) Technological Information, (ii) Modernization of Offices, creation of Human Resources and Training; (iii) Communications, CIBEYME and Advise to Users; (iv) Observance of Rights; and (v) International Cooperation with other Intellectual Property Programmes.

Sources SIC and IBEPI.

Post written by
Lina Marcela Tello Perlaza
Lawyer (Icesi University, Cali Colombia)
LLM in International Commercial Law (Brunel University, London UK)

Brazil: Geographical Indication gets e-application running

Yesterday, 21th February, 2019 the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has made available the electronic system for Geographical Indications (GIs). This was approved by Resolution No. 233 of January 18, 2019.

The system aims to speed the process and allows the applicant to file the petition from any place and any day of the week. Through the system, you could get assistance on how to complete the forms.
The system is available by using the same login and password registered in the (Union Collection Guide GRU) if you have one. If not, then you need to obtain a GRU number which is payable – you need to do so before starting the application.

A user’s guide can be found here.

The Industrial Property Law no. 9279/96, sets up the system for GI protection in Brazil. The law distinguishes between 2 types of GIs: Indication of Source (Indicação de Procedência) and Appellation of Origin (Denominação de Origem).
The INPI has registered 51 Indicação de Procedência (all nationals)  and 20 DOs (9 of them are nationals).

They are:
Alta Mogiana
Altos Montes
Cachoeiro de Itapemirim
Cariri Paraibano
Colônia Witmarsum
Costa Negra
Cruzeiro do Sul
Divina Pastora
Litoral Norte Gaúcho
Manguezais de Alagoas
Mara Rosa
Microrregião de Abaíra
Monte Belo
Norte Pioneiro do Paraná
Oeste do Paraná
Pampa Gaúcho da Campanha Meridional
Pedro II
Pinto Bandeira
Porto Digital
Região de Corupá
Região da Serra da Mantiqueira
Região das Lagoas Mundaú-Manguaba
Região do Pinhal
Região de Própolis Verde
Região de Salinas
Região do Cerrado Mineiro (DO)
Região do Cerrado Mineiro(IP)
Região do Jalapão
Região Pedra Carijó
Região Pedra Cinza
Região Pedra Madeira
Região de São Bento de Urânia
Rio Negro
São João del Rei
São Matheus
São Tiago
Sul da Bahia
Vales da Uva Goethe
Vale do Submédio São Francisco
Vale dos Sinos
Vale dos Vinhedos(DO)
Vale dos Vinhedos(IP)
Venda Nova do Imigrante

Source, the INPI.

The battle of Pisco

Peru has scored once more in the international recognition of Pisco, their national drink.
The Registry of Industrial Property of Guatemala recognized Pisco as a Denomination of Origin (DO) produced in Peru. By Guatemala recognising Pisco as a drink from Peru, it prevents the registration of the name and any marketing of Pisco within the Guatemalan market if it has not complied with the Peruvian national regulation.

Back in 2017, 'Pisco' was declared Cultural Heritage of the Peruvian Nation (Law 30639). In the same year, the DO Pisco was also granted (by The Peruvian Institute for the Defense of Competition and Protection of Intellectual Property INDECOPI) the character of ‘reputable mark’ due to its well-known status.

It is relevant to mention that Pisco is original to Peru as it is original to Chile – therefore there is a long battle between these two countries over the name ‘Pisco’. Pisco has obtained DOs in both jurisdiction as an original and native drink. Some countries would recognise Pisco as coming from Chile and others, from Peru, but not from both countries at the same time, except the EU. This is so because the EU registered Peruvian Pisco as a DO but acknowledged a previous trade agreement (2002) between Chile and the EU in which Pisco was recognized as a DO from Chile. The note clarifies that the protection granted to "Pisco" as a DO to Peru does not hinder the use of that name for products originating in Chile.

Malasia recognizes Pisco as a DO from Peru as well as, Israel, Nicaragua, Algeria, Cuba, Georgia, Haiti, Bolivia, Colombia, Ecuador, El Salvador, Guatemala, Panama, Dominica Republic, Venezuela, Nicaragua and India (since November 2018). However, Costa Rica, United States, China, Malaysia, Singapore, Thailand and Vietnam recognize Pisco as a DO from Chile.

More information about Pisco here.