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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.

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