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!

Thursday 29 July 2010

Patricia Covarrubia

More on patentability of medicines from Brazil

    1 comment:
Few days back we brought you the news that INPI was debating with other sectors (pharmaceutical, non-profit organisations, education, among others) the criteria of patentability in the field of medicines.

Today, the INPI web page published that the meeting was to provide technical guidance for examining patents in the pharmaceuticals segment. According to INPI, “guidelines for the technical examination of patent applications are dynamic and try to adapt to changing technology, based on the Law of Industrial Property, LPI 9.276/96.”

Among the issues discussed were: conditions for patentability; Markush formula; Patents selection; polymorphism; second medical use; compositions / formulations / combinations; and isomers.
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Patricia Covarrubia

BRAZIL: Push-INPI update

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The new system recently put forward by the Brazilian Instituto Nacional da Propriedad Industrial (INPI) which allows monitoring proceedings via e-mail has reached 12000 entries in only a week (earlier post here). According to the INPI web page, the numbers of entries is over 10% of all trade mark applications received by INPI each year.

Hopefully this is an indication that people is finding the system easy and reliable and not just using it for being novel.
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Wednesday 28 July 2010

Patricia Covarrubia

A trade mark that is contrary to public order/morality – is there really an objective test?

The company MAPA GMBH GUMMI UND PLASTIKWERKE requested the registration of the word mark ‘Billy Boy’ and a picture mark (stylized phallic shape) to the Argentina National Register of Industrial Property (INPI). The mark was applied to ‘hygienic rubber articles, particularly condoms’ but subsequently it was reduced to apply only to condoms. INPI to refused registration based on Article 3, subsection e) of the Trade Marks Act 22.362, after considering that the logo was contrary to morals and good customs.

MAPA GMBH GUMMI UND PLASTIKWERKE filed a lawsuit requesting the revocation arguing that the decision was based on an assessment which is subjective. Therefore, the decision did not reflect the current social acceptance around sex. The trial judge dismissed the action considering that the logo was distasteful, inappropriate and obscene.

The plaintiff appealed and the Division II of the Court of Appeals in Civil and Commercial Federal overturned the decision on the grounds that in today's society sex is no longer a taboo. Therefore, the court considered that it should apply a less restrictive approach to determining what is immoral or obscene. Moreover, as the good was a prophylactic, it was reasonable to use that drawing.

In their vote, Dr. James Bernard Kiernan, said that "the criterion for obscenity is confused and imprecise". He continued explaining that in to determine if the logo in question was obscene, they needed to consider that the world is globalised with regard to sex. He added that sex problems have a broad educational and social treatment. On this basis, the vote to which Dr Guarinoni and Dr Gusman adhered, the magistrate found that the figure in question "raises no sexual thoughts or desires beyond the natural, organic and convenience of using a condom for obvious reasons prevention of venereal diseases and AIDS.”

I believe therefore, that what the judges agree with was that morality varies according to time, era, and education. Yet, a subjective test, don’t you agree?

The full text of the case can be found here.
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Gilberto Macias (@gmaciasb)

MEXICO: IMPI realiza visitas de inspección

SOMEXFON nos informa que el IMPI ha realizado diversas visitas de inspección para verificar las autorizaciones correspondientes a la “música grabada” ejecutada comercialmente.

El objetivo que persigue el IMPI con dichas visitas es verificar que los restaurantes y bares, así como otros establecimientos y/o negocios, cuenten con las autorizaciones correspondientes para el uso legal de fonogramas.

En busca del respeto y cumplimiento de los Derechos de Propiedad Intelectual en México a través de la puesta en marcha de una campaña en contra de las violaciones a los derechos de los productores de fonogramas, el IMPI realizó durante el periodo enero-junio del año en curso 105 visitas de inspección y de verificación a establecimientos y negocios en las ciudades de Puebla, Distrito Federal, Monterrey, Querétaro y el Estado de México.

Aquí encontrarán más información sobre las visitas realizadas.

Y aquí se puede consultar el texto del convenio de colaboración IMPI-SOMEXFON.
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Tuesday 27 July 2010

Patricia Covarrubia

Brazilian Copyright Law for public consultation - new deadline

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The public consultation for the reform of the Copyright Act will be open until August the 31st. The initial period of 45 days will end on July 28 and this was extended to expand the opportunity for participation.

Since June 14th there has been more than 1200 contributions submitted. According to the Ministry of Culture, the most addressed issues are: Article 1 which deals with the purpose of the Act; Article 41 which deals with the economic rights time limit; and Article 46, regarding the limitations to copyright.

Therefore, the Ministry of Culture Mr Jesus Ferreira believes that this new deadline will allow bigger participation. "We chose consulting because we believe it will help the government improve the text. We see this tool as a continuation of a democratic process that began almost eight years and has involved all interested parties, he said.

At the end of the consultation, the text will be redrafted based on the proposals. There is no deadline for the Executive to submit the project to the Congress.
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Monday 26 July 2010

Patricia Covarrubia

Brazil discusses patentability of medicines

On the 23th of July, the Brazilian Instituto Nacional da Propriedade Industrial (INPI) opened a debate regarding the criteria of patentability in the field of medicines. The meeting was attended by ALANAC (National Association of Pharmaceutical Laboratories), ABIFINA (Brazilian Association of Industries of Fine Chemistry, Biotechnology and their Specialties), FIOCRUZ (Institution for Research and Development in Biomedical Sciences – Rio de Janeiro, Brazil), and UFRJ (Universidade Federal do Rio de Janeiro ). Also, representatives of national laboratories attended the debate.

Let’s wait and see if something comes out from this debate.
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Saturday 24 July 2010

Patricia Covarrubia

Good news from Brazil

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On July 16th, the Instituto Nacional da Propiedade Industrial (INPI) of Brazil launched the system Push-INPI. This system also employed in various Brazilian courts, is used to facilitate the monitoring of processes. Users will utilize a login and password, already registered in the e-INPI, and will register the processes that wish to track. After this, users will start receiving at their e-mail address the changes in processes, including dates and orders. Also, the full contents will be accessed via the Internet at Revista Eletrônica da Propriedade Industrial (RPI).

The other good news that comes from Brazil is for those wishing to apply for Geographical Indication. One of the requirements for registration is that of the delimitation of the area. Now it is possible to do so through online databases and with approval from the Instituto Brasileiro de Geografia e Estatística (IBGE). With this objective, the IBGE is training specialists in the area of Geographical Indications at INPI to make them familiar with the system and to guide users. By using data from the IBGE, the division will be more accurate and users can check if a given territory has a special area, indigenous lands and facilities for environmental preservation.
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Wednesday 21 July 2010

Patricia Covarrubia

Free software – the International Forum

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Since 2000, the International Free Software Forum (FISL) gives participants a political discussion, social and technical advice on free software. The official opening of the 11th International Free Software Forum will run on July 21st through July 24th 2010 in Porto Alegre, Brazil.This event is considered the largest gathering of open source communities in Latin America and one of the world largest.

The forum launches its 11th edition combining lectures, discussions and news about open source software. On its stand, Dataprev promote mini-courses on topics such as digital television, digital transmission and searching of content on intranets. Besides workshops, there program contains153 lectures.

Institutions that have already confirmed their presence in the forum are: Petrobras, Banco do Brazil, Caixa Economica Federal, IG, UOL, HP, SAP, IBM, Senac, Federal Service of Data Processing (Serpro) and Ministry Science and Technology, among others.

For more information click here.
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Patricia Covarrubia

The Brazilian Council of Cultural Entities gives its opinion

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As announced recently on this blog, Brazil unveiled its Copyright reform proposal. This proposal for the revision of the Copyright Law is running a public consultation and on July 19th the Minister of Culture received the first formal document from the Conselho Brasileiro de Entidades Culturais (CBEC).

The CBEC claims to be ‘an entity that brings together artists from music, theater, dance, circus, visual arts, film and hip hop.’ For one week, its members have discussed and worked on the draft proposals.

The content of this document
The CBEC starts by thanking the Goverment’s initiative to make the issue of copyright in a public consultation and so hearing what artists have to say and claim. It continues explaining that there are laws that regulate the interests of workers and enterprises and there are others that protect consumer rights. Therefore, the CBEC wants to help to improve a law with respect to its rights as creators. A law, according to the entity, that can recognise and appreciate the contribution that artists bring and so, enabling their works to reach the public and preventing entities and corporations to exploit, in an unreasonable manner, their work.

The document contains 7 pages. By the first page one can notice the artists’ frustration against the companies and enterprises rather than the illegal use, by consumers, of pirated music/videos and so on. The documents is divided into four points and it is written in Portuguese (believe me I have tried my best but I guess that my days (or dates!) in high school were more important than another foreign language lesson).

The points are: assignment of rights, licensing and use of venue by holders of copyright and related rights; non-voluntary licenses and the role of the Government; the office for collection – gathering contributions- and associations of management; and final observations.

The full text can be found here.
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Tuesday 20 July 2010

Patricia Covarrubia

IP success and opportunity - INDECOPI assures the quality of its service

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The international firm Lloyd's Register Quality Assurance (LRQA), a world leading provider of business assurance, after a rigorous evaluation, granted re-certification of Quality System to the National Institute for the Defence of Competition and Intellectual Property Protection (INDECOPI).

INDECOPI has had this certification since July 2000. This has been renewed every three years from that date. The last renovation took place in September 2009. The assessment to renew the certification of its Quality Management System is based on ISO 9001:2008. This is an international-recognised quality management certification which focuses on customer satisfaction, process management and measurement, continual improvement and greater top management involvement – in one word, it certified business quality.

Therefore, INDECOPI has demonstrated its interest in the continuing improvement in the quality of services offered to the public. The certification includes 29 services that the Institution offers including: registration services for IP, dispute settlement committees in cases of unfair competition; care centre information and documentation, information and resolution of claims; analysis of ‘pisco’; among others.
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Monday 19 July 2010

Patricia Covarrubia

Colombia: Register your trade mark, do not lose your business!

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Todays headline refers to the slogan that the Superintendence of Industry and Commerce (SIC) has been using to promote the registration of trade marks. The campaign is directed to small businesses and entrepreneurs and it has been running since early this year. Basically the campaign not only encourages businesses to protect their trade marks and thus making them aware to the benefits of registering the mark and the risks involved if they do not do so, but also offers special discount of 25 percent for the registration of its mark – adding a 5% discount if the registration of the mark is made online.

The SIC webpage announces that due to the positive impact of the campaign and at the request of the chambers of commerce, the SIC extended the deadline until 31 December.

The SIC together with Chambers of Commerce, the mayor of Bogota and ACOPI, has trained over 400 entrepreneurs in the second quarter of this year. The main target is clarification between registering a business in the chambers of commerce and registering a trade mark at the SIC. While registering a business will demonstrate publicly the owner as a trader and its type of business, it does not protect its trade mark. The note continues to said that “if your trade mark is not recorded at the SIC, it does not exist”.

While I can pass judgement on this last sentence by saying that a trade mark which is not registered can still be protected under unfair competition laws (I cannot said that it is as easy and smooth process; on the contrary, it is a long, costly and tedious one) the campaign is a truthful one. Small businesses need to be aware that by just registering their businesses with a chosen trade name, it is not the same as registering and protecting a trade mark. For that reason, I can see that the campaign tries to illustrate entrepreneurs in a logical manner. That said, I cannot disapprove of the movement but on the contrary, praise it.
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IMPI bond and counter-bond practice gets fine-tuning

The Mexican Institute of Industrial Property (IMPI) may grant various precautionary measures in trade mark infringement and unfair competition suits. These include the seizure or suspension from circulation of infringing goods. To protect the alleged infringer who is eventually cleared of infringement claims, the plaintiff must however post a bond to cover the cost of damage caused through the wrongful grant of preliminary relief -- and IMPI will even vacate its order granting preliminary relief where the defendant posts a counter-bond to cover the cost of his own alleged liability.

In the past, IMPI has required that the counter-bond be double the amount of the original bond. However, by a legislative amendment this June, the quantum of the counter-bond is limited to just 140% of the plaintiff's bond on the basis that parties requesting precautionary measures have on their own initiative posted bonds of exorbitant magnitude, for the purpose of making it impossible for the affected party to post a counter-bond for lack of economic resources. IMPI is now also given discretion to increase the amount of the bond or the counter-bond, where it appears that the original amount is inadequate.

Source: note in the 15 July 2010 issue of the INTA Bulletin (Vol. 65, No. 13)
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Friday 16 July 2010

Patricia Covarrubia

Another one for Brazil – this time is not a goal

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From the Brazil Industrial Property Office (INPI) we take notice of Brazil successfully registering its seventh Geographical Indication (GI). On the 13th of July 2010, the name ‘Pinto Bandeira’ has been officially registered for red, white and sparkling wines. The name Pinto Bandeira is a geographical area located in the region of Bento Gonçalves.

This GI joins six other GIs granted by the Brazilian INPI: Região do Cerrado Mineiro (for coffee), Vale dos Vinhedos (for red, white and sparkling wine), Pampa Gaúcho da Campanha Meridional (for beef and its derivatives), Paraty (for rum and brandy), Vale do Submédio São Francisco (for mango and table grapes), and Vale do Sinos (for finished leather). Also last week we informed you of three more Brazilian GI applications - for decorative stones.
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Thursday 15 July 2010

Patricia Covarrubia

Chile: software piracy indicates unpaid taxes

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According to the International Data Corporation (IDC), in 2009 Chile lost $ 315 million for unpaid taxes due to pirated software. A spokesman from Business Software Alliance (BSA) expressed concern on this issue [I wonder if the government also is concerned, at the end, it is the one that is losing the revenue -unpaid tax, don’t you agree?].

Rodrigo Bulnes, BSA representative in Chile, said: "These losses reflect a worrying situation, it has to do with the little respect we have in Chile for the intellectual property”. He also mentioned that without prejudice to the institutional developments, like the reform of the Intellectual Property Act (see early post), piracy affects the country's image, discouraging innovation and harming the installation of foreign companies, due to the low level of protection for intellectual property rights.

Click here for an early post regarding a study on the rate of illegal software in Latin America.
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Gilberto Macias (@gmaciasb)

Chile: Ley sobre la neutralidad de la Red

La Cámara de Diputados Chilena aprobó modificar la ley de Telecomunicaciones introduciendo el término de neutralidad de red a la normativa, siendo el primer país en el mundo que legisla al respecto. El proyecto aprobado se presentó en 2007.

La citada modificación prohíbe a los proveedores de Internet “interferir, discriminar o entorpecer de cualquier forma los contenidos, aplicaciones o servicios”. Además, introduce el control parental, a través del cual es el usuario quien puede solicitar se bloqueen ciertos contenidos.

Según el ministro de Transportes, Felipe Morandé, las modificaciones buscan “transparentar los servicios de Internet y proteger al usuario".

En lo personal me parece un buen avance y esperamos que pronto otros países sigan el ejemplo chileno.

Más información aquí y haquí.
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Wednesday 14 July 2010


If infringement can recur, an injunction is not just theoretical

In "Merchants should know the origin of the products they sell", Jorge Otamendi (G Breuer, Buenos Aires) writes for World Trademark Review on Argentina's recent Court of Appeals ruling earlier this year in The Polo/Lauren Company LP v Bustos (Case 608/05, 18 February 2010). In brief, Polo/Lauren seized from Bustos 165 counterfeit items which bore its POLO and RALPH LAUREN marks, then sued Bustos for trade mark infringement, seeking a permanent injunction and damages.

Bustos maintained that the injunction was of academic interest only, since he had ceased to use the marks. The Court of Appeals rejected this argument, since the fact he had stopped using them didn't mean that there was no chance of him doing so again in the future. Bustos also argued that it was actually he who was the victim: he had acted in good faith and had himself been defrauded by the goods' supplier, on which basis he should not have to pay damages. The Court of Appeals was not impressed, saying:
“it was not credible that the defendant had been the victim of deceit since, in certain activities and in certain circumstances, merchants know, or ought to know, the origin of the products and the legitimacy of the marks that they use.”
You can read this note in full here.
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Monday 12 July 2010


Chile IP reform in focus

"Chile Breaks New Ground in Regulating IP Liability" is the title of an article by Rodrigo Lavados Mackenzie (Sargent & Krahn) in issue 3 of this year's easy-read WIPO Magazine. This article explains how, in early May, following three years of discussion and debate, the Chilean Parliament approved Intellectual Property Law No. 20 435 (amending Law No. 17.336), thus becoming the first country in Latin America to regulate the liability of Internet Service Providers (ISPs). This provision was in fulfilment of Chile's Free Trade Agreement with the United States. The article also deals with the new law's provisions on anti-piracy, exceptions to infringement, collecting societies and works made for hire.
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Saturday 10 July 2010

Aurelio Lopez-Tarruella Martinez

Anti-circumvention provision in Brazil Amended Copyright Law

Brazil has recently amended its copyright law. The text can be found in Portuguese here. In a recent post, Canadian Professor Michael Geist has underlined the adequacy of the amendment introduced by the Brazilian legislator in relation to anti-circumvention activities. According to Geist: "[the amended Law] permits circumvention for fair dealing and public domain purposes, [and] it establishes equivalent penalties for hindering or preventing the users from exercising their fair dealing rights. This amendement is similar to the doctrine sustained by the Cadanian Supreme Court in "Theberge" Case.

Geist provides a translation to English of the concerned provision:
"Art. 107. The same sanction applies, without prejudice to other sanctions set forth by law, to whom, through whatever means:

a) hinders or prevents the uses allowed by arts. 46, 47 and 48 of this Act [which addresses limitations to copyright including fair dealing]; or

b) hinders or prevents the free use of works, broadcast transmissions and phonograms which have fallen into the public domain".
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Thursday 8 July 2010

Gilberto Macias (@gmaciasb)

México: Publicación de la Ley Federal de Protección de Datos Personales.

Nos informa Paulina Rius que se acaba de publicar el Decreto por el que se expide la Ley Federal de Protección de Datos Personales en Posesión de los Particulares.

Dicho decreto reforma los artículos 3, fracciones II y VII, y 33, así como la denominación del Capítulo II, del Título Segundo, de la Ley Federal de Transparencia y Acceso a la Información Pública Gubernamental.

Como señalamos anteriormente , esta ley coloca a México a la vanguardia en la protección de derechos de tercera generación, y lo pone a la altura de una democracia moderna.
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Wednesday 7 July 2010

Patricia Covarrubia

Fly like a bird or sink like a stone - new names for Geographical Indications

    No comments:
On June 23, three applications of Geographical Indication (GI), in the form of Designation of Origin (DO), were deposited at the Brazil Industrial Property Office (INPI). The three names are: ‘Região Pedra Carijó-Paduana’; ‘Região Pedra Madeira-Paduana’; and, ‘Região Pedra Cinza-Paduana’. Product description or class for all three is: stones. These types of rocks claim to have a specific characteristic due to the region – Northwest Fluminense.

The stones are used for coating landscape projects, driveways & decorative pavement. They are currently exported to markets inside and outside of South America, i.e. United States, Europe and Mexico.

Brazilian Legislation:
Regulating rights and obligations relating to industrial property: Federal Law No. 9279 of May 14, 1996
Disposicion regarding the forms for submission of application for registration of geographical indications: Normative Act No. 134of April 15, 1997
Conditions for the registration of geographical indications: Resolution No. 075 of 28 November 2000.

Taking into consideration the title of today’s, will the GI names fly like a bird or sink like a stone? any ideas?
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Tuesday 6 July 2010

Aurelio Lopez-Tarruella Martinez

México: se aprueba reforma para que la piratería se persiga de oficio

Desde la Universidad de Nuevo León, Juan Angel Garza Vité nos cuenta que el lunes 28 de junio se publicó en México, en el Diario Oficial de la Federación, el Decreto que reforman los artículos 429 del Código Penal Federal y 223 Bis de la Ley de la Propiedad Industrial, a fin de que la piratería se persiga de oficio, ya que hay que recordar que anteriormente se debía presentar una querella ante la Procuraduría General de la República (PGR) para que ésta pudiera incautar la mercancía apócrifa.

Más información aquí.
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Monday 5 July 2010

Gilberto Macias (@gmaciasb)

México: Golpe al contrabando de medicamentos apócrifos

La Procuraduría General de la República (PGR) a través de la Subprocuraduría de Investigación Especializada en Delitos Federales en el combate a los delitos de propiedad industrial, derechos de autor y contrabando, llevo a cabo un operativo conjunto con la Comisión Federal para la Protección contra Riesgos Sanitarios (COFEPRIS) y el IMPI en la Ciudad de Veracruz.

El operativo, realizado tras las acciones realizadas por la COFEPRIS y el IMPI, se basó en las diversas actas levantadas por violación a la Ley General de Salud y por "marca pirata".

Entre los medicamentos falsificados asegurados en los locales comerciales intervenidos se encuentran: cialis, viagra y condones etiquetados en idioma extranjero, así como del sector salud, fraccionados, caducos, controlados y en mal estado.

Con acciones como ésta, la PGR participa en la estrategia implementada entre el sector industrial y las instituciones gubernamentales con el objetivo primordial de proteger los derechos de autor y la propiedad industrial para evitar que sean violentados y salvaguardar la economía formal.

Más información aquí.
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Patricia Covarrubia

Plum D’Agne - Geographical Indication: Chile’s sweet and tasty business

    No comments:
On May 14, farmers in the area of D'Agen in France formally requested the Geographical Identification (GI) for Prunes D’Agne in Chile. If the registration succeeds, this will prevent the domestic industry to market the product under that name. The request was formalized by publication in the Official Journal in Chile. Note that ‘Pruneaux d'Agen’ is a registered PGI in the EU since 2002 and also in France as GI since 1999.

The article in the 'Revista del Campo' by the newspaper 'El Mercurio' mentions that the name has become almost a generic name for dried plums and that is used internationally by many countries. In Chile, almost all its production is being exported under that name. The Association of Processors and Exporters of Chile Prunes (Apecs) explains that over 90% of it production goes under the name D'Agen and the rest is under the name/type ‘President’.

Representatives of D'Agen in France argue that the production of that area has specific qualities and other markets have used the name to take advantage. The petition states that "the New World producers (Chile, Argentina, California, Australia and South Africa) have tried to link their products with the image of the French plums, using the same name." He continues to say that the production process in France is twice more expensive than in California, three times more than in Chile and five times more than Argentina, which would justify its request that only they can market it - it is not the same product.

Chile is the second largest producer of dried plums in the world, after California. It reported revenues of U.S. $ 120 million annually. It is reported that France does not export because it uses its production to supply the high domestic consumption.

The Chileans are looking for tools to oppose the measure and defend a market that for the past eight years has had tremendous growth in the continent. They have until July 23 to respond on the request.

A note in GI – the EU and Chile
Chilean producers may oppose to registration under Ley 20160 (modifying Ley 19039 – Propiedad Industrial). They can argue for instance:
Article 95 .- It cannot be recognized as geographical indications or appellations of origin
signs or expressions:
[...] d) that are common or generic as to distinguish the product concerned, it being understood
those that are considered as such by connoisseurs of matter or the general public, unless it has been recognized as a geographical indication or Appellations of Origin under an international treaty ratified by Chile.. "

Chile and the EU has in place a Free Trade Agreement in which there is a specific section which cover GI but only regarding ‘wines and spirits’ (section 6, Annex V and VI) – no agriculture and foodstuff were discussed.

The EU pushing?
Back in October 2009, the blog reported the intention of the EU to re-negotiate GI in the dairy product. The Chilean producers refused such negotiation. Would this be the way? At this stage, I believe that by looking for individual and national registration is the way to go. However it is indeed tedious and expensive and it would be for every producer to do so - there are more than 900 agriculture and foodstuff products registered at the EU level.
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Friday 2 July 2010


Bolivia and revalidation patents: can anyone help?

Can anyone help? A reader who practises patent law outside Latin America has written to IP Tango with the following question:
"We have something called a revalidation patent in Bolivia that is pending and some regular Bolivian cases that have been considered abandoned. The system there appears to be a little quirky.

Anyway, I am wondering if revalidations are still possible? Will the existing application be voided eventually as they will cancel the type of patent, etc.

It does not concord with TRIPS but Bolivia has not honoured the TRIPS Agreement in a meaningful sense.
I would be grateful for any knowledge or advice that your readers can share".
If you can be of any assistance, please email me here and I'll forward your comment, or post your response below.
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