Welcome to our blog for Intellectual Property Law and Practice in Latin America!
¡Bienvenidos a nuestro blog de Derecho y Práctica de la Propiedad Intelectual en Latinoamérica!
Bem-vindo ao nosso blog sobre Direito e Prática de Propriedade Intelectual na América Latina!

Wednesday 27 August 2008


El Salvador accedes to TLT

By TLT Notification No. 49 the World Intellectual Property Organization has announced the deposit by the Government of the Republic of El Salvador, on 14 August 2008, of its instrument of accession to the Trademark Law Treaty (TLT). This treaty enters into force, with respect to El Salvador, on 14 November 2008.
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Aurelio Lopez-Tarruella Martinez

"Cusco", nueva denominación de origen en Perú

Magda Benites Farfán ha informado al IP-Tango desde Milan que "el Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (Indecopi) reconoció el nombre “Cusco” como denominación de origen para distinguir un peculiar tipo de maíz producido en esta región, con lo que “Cusco” se convierte en la segunda denominación de origen peruana luego de “Pisco”". Más información en el articulo escrito por Magda en "El Peruano" sobre la cuestión.

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Tuesday 26 August 2008


Brazil takes next step in bid for WTO sanctions against the US

PR-Inside reports that Brazil yesterday formally asked the World Trade Organization for permission to impose up to US$4 billion in annual sanctions against goods and services originating from the US in order to penalize the US for handing out illegal cotton subsidies. This June the US finally lost its appeal in the six-year-old dispute -- the first farming dispute brought by a developing country since the WTO was founded.

Brazil has already warned that it is likely to target US trade marks, patents and commercial services in retaliation. Three years ago Brazil appeared to be considering the communications, construction, engineering, finance, tourism and transport sectors.
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Monday 25 August 2008


Court limits grant of special protection to highly reputed mark in Brazil

The Federal Court of Appeal of the 2nd Region (the so-called TRF) rendered a decision on 12 August 2008 confirming that the Brazilian Trademark Office (INPI) is the sole agency that is empowered to recognize the high reputation of a trademark and consequently to grant special registration encompassing all classes of products and services, including those lying outside the scope of the trademark owner's field of commercial activity.

In giving its decision, that court declined to examine the requests for the recognition of the marks TIGRE, CASTROL and CONTINI as being of having a high degree of reputation in the Brazilian market. This decision follows the same pattern of understanding as one given in June 2008 by the same court, when it refused 'famous mark' status to the mark ABSOLUT, which is known primarily as a mark used to identify spirits.

Accordingly, the INPI is designated as the only competent agency to recognize the reputation of a trademark -- not the courts -- in accordance with the consistent parameters defined by INPI in Resolution 121 of 2005, which grants a special level of protection to those trademarks which have a high degree of reputation. Special protection for such famous trademarks is obtained incidentally, when opposition or administrative nullity proceedings are initiated by the owner of the brand in question.

It is worth mentioning that the initial involvement of the courts relating to the recognition of fmous trademarks commenced with the Industrial Property Law (Law no. 9,279/96), this being on account of the absence of any administrative procedure for such special protection.

The TRF of the 2nd Region has now made it clear that it will no longer consider matters relating to this sort of protection. Nevertheless, this decision has left unresolved the existing problems deriving from the impossibility of obtaining protection for trademarks with a high degree of reputation outside the opposition and administrative nullity proceedings. Owners of such trademarks have been emphasizing the fact that few infringers seek registration at INPI. This particular case poses difficulties in enforcing these trademarks in court against such infringers, since reputation must first be recognized by the INPI. Accordingly, on account of these omissions, this court decision has been criticized by scholars and academics.

This item was written by José Carlos Vaz e Dias PhD/LLM Kent (jose.carlos@diblasi.com.br)
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US ambassador politely criticises Belize over IP failure

7 News reports from Belize on the seventh annual US Embassy exhibition, “Made in the USA”, to encourage Belizean importers to buy more. According to the report, Robert Dieter (US Ambassador to Belize) said:
“Belize should continue to strengthen its institutional capabilities and competitiveness. This includes respecting international law that comes with participating in a world economy such as enforcing intellectual property rights. However in previous years the perception of corruption has reduced the nation’s performance indicators. This is something that must change if Belize is to move forward in a meaningful way with its own economic development.”
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Friday 22 August 2008


Pernod Ricard invests in Graffigna wine brand

Wine and spirits giant Pernod Ricard is reported to be planning a major marketing drive to increase the popularity and sales of Argentina's Graffigna wine brand in the UK. New packaging and a shift to screw-top are both ready to launch next month. Community trade mark protection for the word Graffigna was secured six years ago for 'wines, spirits, liqueurs, cocktails, alcoholic beverages' in Class 33.
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Wednesday 20 August 2008


New Andean Decision 689

From José Barreda (Barreda Moller, Lima, Peru) the IP Tango weblog has learned of Decision 689 -- the New Andean Rules on Industrial Property. According to Mr Barreda,
"The Commission of the Andean Community has just approved Decision 689, allowing members countries to adequate certain provisions of Decision 486 –Common Regulations on Industrial Property- granting rights to each country member of the Andean Community –Bolivia, Colombia, Ecuador, and Peru- to strengthen protection of Industrial Property rights through internal legislation. Decision 689 incorporates the following provisions:

1. By introducing an exception to Article 9, it allows countries to establish conditions to reinstate priority rights on a patent or utility model, industrial design or trademark, for a term not more than two months beyond the established initial period.

2. It allows amendment of Article 28 to introduce additional regulations related to divulgation of the invention, in sense of requiring applicant greater clarity in the description and sufficiency in such divulgation, so that there is no need for a person having knowledge of the state of the art to conduct undue experimentation.

3. It clarifies Article 34 by establishing that reporting on omissions on the Spanish text of description and claims, will not be considered an extension of the invention if the new matter was contained in the priority application, if claimed.

4. Except in the case of patents for pharmaceutical products and processes, it grants rights to member countries to compensate for undue delays in the grant of the patents, undue delays being those delays exceeding five years from filing date or three years from the date a petition for examination was filed and where such delays can only be attributable to the Patent Office.

5. It clarifies Article 53, allowing countries to pass new legislation limiting patentees' rights, creating a provision equal to the Bolar Exception.

6. It revises Article 138 by letting countries approve a multiclass trademark registration system.

7. It enables countries to implement Article 140 of Decision 486 by fixing specific terms to satisfy the formalities detailed in it without loss of filing rights.

8. It allows an exception to Article 162 of Decision 486: now countries may decide that recordal of a license agreement be optional.

9. It clarifies Article 202 of Decision 486: now an indication of origin will not be protected if it may be confused with (i) a registered mark or with a mark subject to registration, provided the mark has been registered in good faith, or with (ii) a famous mark.

10. It allows the countries to implement legislation on border measures in connection with trademark rights.

The new legislation establishes that by 20 August 2008 the countries members which wish to exercise this option must inform the Secretary General of the Andean Community that they will proceed. Peru, having already passed new legislation in line with the new Decision, will exercise this right as of 1 January 2009."
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Tuesday 19 August 2008


Consumer law and product liability in Argentina

The Argentine Consumer Protection Law (Law 22,240), first enacted in 1993, was amended by Law 26,361 in March of this year. This law, which cannot be contracted out of, renders a trade mark owner liable if its activity falls within the scope of a ‘supplier’ and injuries result to consumers from any defects in or risk presented by a product bearing its trade mark. In once recent case a court ordered soda-siphon makers' controlling entity IVESS to pay damages, together with the maker Soda Profesional SA, for injuries caused to a consumer by the explosion of two soda siphons. While IVESS did not make or sell the products, it was held liable under Section 40 of the Consumer Protection Law. Said the court:
"the fact that Soda Profesional SA was expelled from the entity [IVESS] does not exempt the latter from its liability, since in any case the entity should have taken all necessary measures to prevent the improper use of the trade mark from injuring consumer confidence or, at the least, it should have properly advertised its disengagement from the manufacturer".
According to the court, the only way for a trade mark owner to escape liability is to take all necessary measures to prevent improper use of the trade mark by a third party which could injure consumer confidence, or at least properly advertise the termination of the trade mark use authorization.

[source: "Amendment to Consumer Protection Law and its Effect on IP Rights", article written for International Law Office by Daniel R Zuccherino, Obligado & Cia. This article further discusses the concept of 'supplier' under this law].
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Monday 18 August 2008


Data exclusivity in Brazil

The Life Sciences Intellectual Property Review is a new periodical published by Newton Media. The first issue contains an article by Otto Banho Licks (Momsen Leonardos & Cia, Brazil) on developments in Brazil concerning the enforcement and infringement of IP rights in pharma products, looking particularly at the position regarding data package exclusivity rights. The author explains the context of TRIPs Art.39(3), its implementation within Brazil and the controversial activities of the governmental agency responsible, the Agência Nacional de Vigilância Sanitária (ANVISA).
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Friday 15 August 2008


Mind what you do with that Tequila ...!

Today's issue of the International Trademark Association's INTA Bulletin (vol.63, no.15) carries an update on appellations of origin and geographical indications in Mexiso by Mexican lawyers Ignacio Domínguez-Torrado (Uhthoff, Gomez Vega & Uhthoff), Jose-Juan Méndez (Alegría, Mendez & Fernández Wong) and Juan M. Alvarez del Castillo V., Cervantes (Aguilar-Alvarez y Sainz). This note explains the current legislative position, describes the interface of appellation and GI protection with domestic trade mark law and lists the 14 appellations of origin that are at present registered and in force in Mexico:
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Open source, piracy and affordable products

Business News Americas carries an interview with Ian Wenig (Senior Director, Zoho) on software as a service in Latin America. This feature discusses the benefits of using open source and free software as the basis for business models, rather than following the traditional route of developing and IP-protecting one's own proprietary software. When asked about software piracy in Latin America, Wenig had this to say:
"... There's always going to be piracy, [but] if you bring affordable products into the market or the cost is right people will respond to that ... With the productivity tools and business apps that are crucial to management of company data, people are willing to pay for it".
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Wednesday 13 August 2008


Generic drugs surge in Brazil as patents expire

PR-Inside has published a note on Generic Drugs Market in Brazil (2007-2011), a Companies and Markets report. The report itself mentions that emerging economic power Brazil is stamping its identity strongly upon the generic drugs industry, and that major generic players are heading to Brazil to make and sell their drugs there.

The generic drugs market was valued at over US$ 1 billion in 2006, aided by the expiration of patents governing several blockbuster drugs and government policy that generics should be prescribed wherever possible. Although the market is currently still dominated by local generic manufacturers; however, foreign firms are rapidly gaining ground.
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Tuesday 12 August 2008


IP in Chile: a handy summary

The IBLS Internet-Law News Portal has recently posted a useful English-language summary by Martha Arias of Chile's Industrial Property Law 19.039 of 1991. This article touches on the background to the law, its structure, the extent to which it is supplemented by other laws and its compliance with international treaties. After a summary of the procedure for obtaining intellectual property rights in Chile, there is some brief guidance concerning the registration of commercial brands and patent applications.
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Monday 11 August 2008


Brazil's success in branding agri-products cited

Writing in BrandChannel this week, Randall Frost ("Emerging Nations Cultivate Agricultural Brands") discusses the branding of agricultural produce. In this context the success of Brazil in branding its coffees and wine products is specifically mentioned. Says Randall:
"Of the developing countries, Brazil has one of the most advanced agricultural branding programs. ... in addition to the country’s promotions for Brazilian coffee, there are also branding programs for Brazilian beef, Brazilian fruit, Brazilian chicken, and wines from Brazil".
Most importers of such products have up till now been other developing economies, since tariffs and trading barriers have given the country little opportunity for its brands to penetrate some of the most highly developed markets.
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Friday 8 August 2008


Argentina opts for regulated tourism subdomain

In June of this year NIC Argentina, the organization responsible for Argentine domain name regisrations, announced the launch of the new .tur.ar subdomain for tourism-related registrants. This followed the signing of an agreement between the National Tourism Secretary and the ministry that is responsible for NIC Argentina). The .tur.ar subdomain is expected to appeal principally to travel agents, tour operators and other Argentina-registered professional bodies involved in the tourist industry. Specific regulations will apply and foreign companies seeking to use the subdomain will need to provide proof of local presence [source: David Taylor, Lovells LLP, Paris, writing in World Trademark Report].
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Thursday 7 August 2008


Costa Rica signs up for TLT

By TLT Notification No. 48 the World Intellectual Property Organization (WIPO) has announced the deposit by the Government of the Republic of Costa Rica of its instrument of ratification of the 1994 Trademark Law Treaty. This treaty enters into force with respect to Costa Rica on 17 October 2008. The full list of 41 contracting parties (including Costa Rica) can be read here.
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Tuesday 5 August 2008


Chile pharma buoyant, but IP lags behind

According to the latest Market Watch forecast, the Chilean pharmaceutical market has grown by a robust 14.8% in US dollar terms in 2008 and by 9.2% in local currency terms. The report, which is mainly upbeat, concludes on a depressing note for IP:
"Whatever the challenges facing the current government, Chile remains a relative oasis of clean governance, stability and economic openness and has ratified Free-Trade Agreement (FTA) with the US. Nonetheless, for the research-based pharmaceutical industry, the intellectual property (IP) environment remains deficient".
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Friday 1 August 2008


IMPI rules on time limits for TM cancellation actions

IMPI, the Mexican Institute of Industrial Property, has issued a series of decisions that impose time limits on cancellation actions, taking the view that an action for trade mark cancellation must be brought within a time limit of five years where it is alleged that the mark in question is confusingly similar to another mark. These decisions, which seek to clarify the law and avoid the risk of abuse of rights, are pending appeal before the Mexican federal courts [source: Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico City, writing in World Trademark Report].
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