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 26 June 2014

Patricia Covarrubia

Mexican food brand received high status

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The Mexican Institute of Industrial Property (IMPI) has recognized ‘La Costeña’ as ‘famous mark’. Up to today IMPI has issued 33 declarations of ‘famous marks’. According to the reformed Mexican Law of Industrial Property, to be a ‘famous mark’, it must meet all the requirements set out in the said law and it need to prove to be known by most of consumers. With the reformed law (Chapter II bis), IMPI no only can rule on the 'notorious' or 'famous' character of a mark to resolve an administrative declaration procedure, but now, the law provides ad-hoc procedure to recognize such status i.e. 'notorious mark' or 'famous mark'.

In regards to ‘La Costeña’, Mr Rafael Celorio Otero, La Costeña’s director, noted that to be recognised as famous, it did “have to undergo surveys, market research and other means permitted by law, for purposes of that not only the population but the various sectors of the industry recognize the activities of the brand.” The evidence submitted consists of 118 folios.

Some of the aspects that IMPI considered to declare ‘La Costeña’ as a famous mark were:
• features relevant attributes such as flavour, quality, variety in their products and the hygiene which they are prepared;
• level of diffusion: use of different advertising executions carried out; such as broadcast television (public and private), mobile and internet advertising as well as sponsorships and participation in cultural and family events. It was confirmed that the advertising activities have been effective; the surveys revealed than even those that do not use the brand admitted they recognize it by advertisement.
• attributes such as convenience to use their products and the availability of the product across the country - without neglecting its fair price.
• always perceived as a Mexican brand of tradition, friendly and with a modern personality.
• position itself as a family, innovative and experienced brand - confirming that after 90 years they are still on the consumers’ perception.

The reform of the Law of Industrial Property grants, to famous marks, extended protection to all classes of the International Classification of products and services for trade mark registration in accordance with international standards.

Other famous marks already recognised by IMPI are: 'Red Bull', 'Microsoft', 'Bimbo', 'Gansito', 'Marinela', 'Pepsi', 'Jose Cuervo', 'BMW', 'Cohiba', 'Televisa', 'Batman', among others. You can check these marks in the electronic official Gazzette (e-Gaceta) - an electronic user-friendly database.

Source IMPI.
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Thursday 19 June 2014


Argentina gets a bit more paperless

Argentina is making an impact on more than just the FIFA World Cup. IP Tango learns that the Argentine Trade Mark Office has now adopted the use of electronic certificates of registration and renewal. The implementation of electronic certificates was approved by Resolution 341/2013 and the new system became fully operative in November 2013.  This is all part of a master plan to shift to a paperless environment and reduce the current significant backlog in the issuance of certificates of registration.

Argentina's Trade Mark Office might be going paperless,
but its football supporters are still some way behind ...
What this means in practice is that all certificates of trade mark registration and renewal issued after 3 September 2013 have been issued electronically and sent by email to the person for whom contact information has been given.  However, as for design trade marks that have not been uploaded to the Trade Mark Office database, the Office will continue to issue hard copies.

Source: "Certificates of Trademark Registration and Renewal Now Issued Electronically", published in the INTA Bulletin, 15 June 2014, Vol. 69, No. 11 (information contributed by Juan M. López Mañán, of Marval, O’Farrell & Mairal, Buenos Aires, and verified by Diego Laurini, of Estudio Gold, Buenos Aires)
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Thursday 12 June 2014

Patricia Covarrubia

Mexico: (fake) Brazuca in transit....

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Source IMPI.
The Mexican Institute of Industrial Property (IMPI) reports the recent confiscation of 3,999 fake football balls -- with Brazuca's design (the official ball FIFA World Cup 2014 registered to Adidas AG).

The balls are retained in a container in the office of Lázaro Cárdenas, Michoacán. The balls final destination was Guatemala (addressed to the company Kingstar Inc.). At the request of the IP owners (through IMPI), the Mexican customs retained the balls. IMPI reports that in addition to this, the office in Lázaro Cárdenas, Michoacán still hold two containers with 16,798 fake Brazuca balls also intended to the country of Guatemala.

Article 199 bis Fracción V of the Mexican Industrial Property law, together with Art 234 – 235 of the Federal Law of  Copyrights, and Art 148-149 Customs Act provide for the suspension of the free movement of goods of foreign origin.

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Wednesday 11 June 2014

Patricia Covarrubia

Brazil World Cup 2014 news

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Fifa-World-Cup-2014-Brazil+Rio.jpgThe waiting is almost over and the Cup is actually happen. Recent news about the forthcoming games has been without doubt full of controversy: stadiums not yet finished, workers been killed in construction sites; metro strikes; protest and more protest. Indeed, reading the news in Brazil has been overwhelming and many times I forgot what I was looking for (i.e. IP information).

At last, here there is some IP news:

Since 2010 FIFA has identified 450 cases of infringements relating to the illegal use of its exclusive brands. FIFA has an exclusive department that take care of the protection of its brands and it also has “offices in each of the 12 host cities of the World Cup”.
FIFA emphasises that official symbols, terms, and trade marks registered by the federation cannot be used without express permission of the said entity. It further notes that the special law ‘Lei Geral da Copa’ (12.663/12) penalises such acts by imprisonment from 3 months to 1 year.
Finally, the Brazilian authorities have already seized 2 tons of fake products containing a number of elements that linked them to the World Cup. There appears to be a commitment to intensify the fight against piracy. “The police, customs authorities and various government control and supervision promise to raise the siege against manufacturers, distributors and sellers of unofficial products. The National Council to Combat Piracy and Crimes against Intellectual Property (CNCP), attached to the Ministry of Justice, signed a cooperation agreement with the municipal governments of the 12 host cities - Rio de Janeiro, Sao Paulo, Brasilia, Belo Horizonte, Cuiaba , Salvador, Recife, Natal, Fortaleza, Manaus, Curitiba and Porto Alegre - to enable the public to identify unauthorized products agents.”

Registered Trade Marks:
The Brazilian National Institute of Industrial Property (INPI) informs that FIFA currently has 1,116 registered trade marks in Brazil – 400 of these were received after the entry into force of the ‘Lei Geral da Copa’.

Well-known marks:
The ‘Lei da Copa’ establishes a special regime for reputable marks. INPI did note trade marks of high reputation through a list provided and updated by FIFA. In this procedure INPI did not require the party claiming such a right (i.e. FIFA) to prove the condition of high repute.
According to the Brazilian Industrial Property Law (9.279/96) well know marks/a highly reputable mark has “special protection in all fields of activity. In cases related to the Lei da Copa, the highly reputable will cease to exist on January 1, 2015.”

Adriana RibeiroA trade mark that did not go well with the Brazilian population:
One of the words that were registered was the term ‘Pagode’. This word refers to a style of music originating from Samba. After controversy raised by a Globo’s columnist, FIFA released a statement clarifying that the registration of the word as a trade mark does not related to the Brazilian rhythm, but to the typographic name of the brand of the World Cup. Therefore, the term is free to be used in a non-commercial use and moreover, “if already in commercial use, provided it does not confuse or associate with the phrase "Pagode" recorded by FIFA (or other companies) can, in principle, be used.” INPI has 126 trade marks with the word ‘pagode’ (between applications and registrations). The ‘pagode’ font was created by an artist hired by FIFA.

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Tuesday 10 June 2014


New blog on the block: Ip Lat Am

IP Tango welcomes another Latin American intellectual property law blog. Its name is Ip Lat Am.  According to Pablo A. Palazzi (Allende & Brea, Argentina), Ip Lat Am proposes to blog news, cases and regulations. "For now we only have covered Paraguay, Argentina and Mexico", says Pablo, who is trying to contact local colleagues who may be interested in writing in the blog.  The idea is to try to have the articles written in English or with an English summary. Good luck, Pablo and friends: I hope you have better fortune in securing a good flow of IP information from across the Continent than we have!

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"The Happiest Days of Our Lives": Wall of evidence keeps PINKFLOYD! off Colombian TM register

According to Article 136(e) of Decision 486 of the Andean Community:
“Those signs the use of which in commerce may constitute an impediment to the rights of third parties, may likewise not be registered as trademarks, in particular where:
e) [they] consist of a sign that is capable of affecting the identity or prestige of legal entities, whether non-profit or not, or natural persons other than the applicant or identifiable by the general public as being such a different person, particularly in regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait, or caricature, where no consent has been obtained from that person or, if deceased, the declared heirs of that person ...”
This provision, which is not often invoked, came to the aid of vintage rock group Pink Floyd following an application for registration of the trade mark PINKFLOYD! for agricultural products (Nice Class 31). Pink Floyd (1987) -- the company established by band members David Gilmour and Nicholas Mason -- said it wanted to file an opposition even though it had no trade mark rights which could base an opposition in Colombia. Its only hope therefore was Article 136(e). Evidence of the group's history, sales, musical achievements, events, concerts, press articles, contracts and trad emark registrations in other jurisdictions was filed in order to prove that the band's name enjoyed worldwide recognition and that the members of the company had rights over it. This evidence was accepted by the Colombian Trademark Office, which concluded that the level of recognition of the band name transcended the language barrier and that Pink Floyd was well known by the Colombian consumer public -- even though the meanings of the English terms ‘pink’ and ‘Floyd’ were not common knowledge in the country.

On this basis, the opposition succeeded. The sign applied for and the name in conflict were confusingly similar, since the inclusion of an exclamation mark at the end of the sign was not sufficient to make it distinctive and any consumer could be confused as to the origin of the goods, due to the evident association with the band. Moerover, use of the mark PINKFLOYD! for the goods covered by the application in Class 31 would affect the identity and prestige of Pink Floyd (1987).

Source: "Pink Floyd successfully defends name without prior trademark registration" by Laura Michelsen and Andrés Medina (Triana Uribe & Michelsen, Bogotá), written for World Trademark Review, 10 June 2014

"The Happiest Days of Our Lives", here
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Thursday 5 June 2014

Rodrigo Ramirez Herrera @ramahr

Nuevo Sistema de Arbitrajes en Línea para dominios .CL de Chile inicia sus operaciones

El registro de nombres de dominio ˂.CL˃, NIC Chile, dio inicio este miércoles 4 de junio al nuevo servicio de arbitraje en línea, que pone a disposición de las partes y de los árbitros para facilitar la tramitación y administración de los conflictos por nombres de dominio ˂.CL˃.
La plataforma electrónica fue dada conocer el pasado martes 3 en la Facultad de Ciencias Físicas y Matemáticas de la Universidad de Chile.

La implementación del nuevo servicio de arbitraje en línea forma parte de los cambios consensuados con el Consejo Nacional de Nombres de Dominio y Números IP, quien en el año 2011 apoyó la actualización propuesta por NIC Chile a la reglamentación del registro de nombres de dominio ˂.CL˃ y el procedimiento de resolución de disputas. Al mismo Consejo le cupo posteriormente un rol clave en la selección del nuevo cuerpo arbitral a través de un concurso público.

El nuevo servicio consta de una plataforma electrónica diseñada para facilitar la tramitación y administración de los expedientes arbitrales en un entorno digital seguro. Lo anterior, permite que toda la sustanciación de los conflictos genere un expediente digital, en el cual se tramita y se actúa en forma remota, tanto el juez árbitro como las partes.

Fuente: www.nic.l

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