IPTango: Decision 486

Showing posts with label Decision 486. Show all posts

Friday, 10 July 2020

Colombia: smell [successful] coffee

Patricia Covarrubia July 10, 2020 No comments:

SIC, the Colombian IPO office recently published a short graphic noting Colombian's coffees that have successfully been registered as Denominations of Origin.

Every morning, before I even brush my teeth, I enjoy an espresso. I not only enjoy the taste, but the smell of fresh coffee is very pleasant. I am use to strong coffee, (being Venezuelan with an Italian husband) and actually, I was raised in a farm that on my teenager years was just harvesting coffee beans – what a wonderful time (except the mosquito bites).

I am, by nature please to see how farmers and their respective associations try to protect their products and with it, their farms, their people, their family. I do also understand (as academic and researcher) that no everything is gold at the end of the rainbow when we discuss Geographical Indications. However, just the fact that farmers unite for a common aim, for me, it is a successful goal. Sharing good practices and feeling part of a community is extremely important. In this regard, I see the value of the product as it is explained by the Lisbon Agreement when referring to appellation of origin – a human factor.

SIC explain DO as ‘a sign that is directly related to the community and in which associativity plays a role of special importance’ – I could not agree more. Colombian DOs are defined in Decision 486, which is the Andean Community legislation (equivalent to ‘Regulation’ in EU law) and nationally, under Resolution No 57530. The spirit and the wording of the texts are similar to the one noted as Appellation of Origin under the Lisbon Agreement because they include the natural factors of the region focusing on human factors such as traditional knowledge and methods of elaboration.

Up to today, Colombia has registered as Denomination of Origin SEVEN coffees. And please, if you are taking notes, it is Colombia (country), no Columbia (US state). [I was so heart broken when I saw the final publication of a chapter in a book that I was involved with, that the editorial decided to change Colombia for Columbia !! (that is another story to tell you later)]. Anyways, all started with ‘Café de Colombia’ (2005) which was the first DO in Colombia itself but also the first foreign DO registered in the EU (what an achievement). This opened the door to other farmers that saw the benefits. In 2011, TWO coffees were granted DO: ‘Café de Nariño’ and ‘Café de Cauca’; [I wrote a chapter in a book (not the one that edited Colombia) covering a case study on Café de Narino and a company that wanted to registered as a trade mark such name in Spain [published online by Inter-America Association of Intellectual Property (ASIPI)]. In 2013, ‘Café de Huila’ and 2014, ‘Café de Santander’ successfully registered their DOs. The last TWO were granted on the same date, 30 January 2017 to ‘Café de Tolima’ and ‘Café de Sierra Nevada’.

Way to go Colombia!
The graphic can be seen here.

Peru: examples of good practice

Patricia Covarrubia September 28, 2017 No comments:

The Peruvian Institute of the Fair Competition and Intellectual Property recently attended the Asia-Pacific Economic Cooperation (APEC) Forum, held in Ho Chi Minh City, Vietnam.
National experts from the different areas of IP were attending diverse workshops and meetings at the event.

Traditional Knowledge

Peru showed itself as the leading economy in protecting indigenous peoples' collective knowledge by putting forward a virtual platform related to the TK linked to the biodiversity of the country. In this session of the forum, particular discussion was held “regarding the protection of ancestral knowledge of Peruvian indigenous peoples, in order to preserve and defend them against misappropriation by third parties [by national Law No. 27811]”. Such virtual platform would also see the linking of the TK holders with the potential users, such as universities and research centres.
Peru is part of the Andean Community (CAN). Back in 1996 CAN passed Decision 391 which became the first law in the world to establish general principles for the protection of TK. By 2000 Decision 486 on the Common Industrial Regime for the Community built upon such principles and
created further measures for a defensive protection of TK.
Peru is the second largest Amazonian country and 35% of its population its indigenous. In 2002 Peru passed a law (27811) for the protection of collective knowledge of indigenous peoples related to biodiversity and in 2004, Peru created the National Biopiracy Prevention Commission (Law 28216).

Inventions and New Technologies
Experts on the subject attended the seminar "Opportunities and Challenges in the Marketing of Protected Vegetable Varieties in the APEC region". In this session the national experts talked about "Success stories “sharing Peruvian examples relevant in the commercialization of plant varieties. INDECOPI informs that the information imparted in the seminar was also shared in another seminar organised by the Vietnam Ministry of Agriculture and Rural Development, aimed at Vietnamese professionals, researchers and companies.

Trade Marks
Specialists on this topic participated in the workshop: "Delimitation of trade marks and infringements in a border context".

Source INDECOPI

New Registers can Oppose Marks Previously Filled for Registration

Patricia Covarrubia September 20, 2017 No comments:

Monsieur Periné, a Colombian musical group, achieved recognition of its name as a well-known trademark. This declaratory was made by the Superintendence of Industry and Commerce (SIC) within the opposition process issued by this musical group against the register of the mixed mark ‘Monsieur Perruné’ filed for registration in class 41 by Emepe S.A.S., a company offering live music performances and services. One of the arguments used by the company in its defence was that its application for registration of the trademark was issued before (14 October 2016) to that one made by Monsieur Periné (11 November 2016). Under Article 136 of the Decision 486 of the Andean Community of Nations (CAN) the signs that would unduly harm a third-party right cannot be registered as marks, especially when ‘they are identical or similar to a mark previously filed for registration or registered by a third party in respect of the same goods or services, or for goods or services regarding which the use of the mark could cause a risk of confusion or association.’ (Emphasis added)

However, more than an argument against the opposition issued by Monsieur Periné, this just goes to show that the musical group is acting in line with the Colombian trademark law. The opposition is a legal proceeding that anyone with a legitimate interest can initiate to try to prevent the registration of a mark. On the matter, Article 147 of the Decision 486 of the CAN establishes that ‘the opponent shall prove his genuine interest in the market of the member country in which the opposition is filed, which they must do by applying for registration at the time of filing the opposition.’ From these two Articles, it has been interpreted that an opposition can be suited either when there is a mark previously filled for registration or already registered, or when no registration exists. Unless the opposition is presented based on the prior existence of a register, the opposition must be issued together with an application for the registration of the mark that allegedly could be violated with the concession of the opposed mark.

Evidently, Monsieur Periné is a successful musical group otherwise its name would not have been recognised as a well-known mark. By contrast, Emepe S.A.S. was a little know company, which apparently was trying to take unfair advantage of the prestige of Monsieur Periné. This, because of the obvious similarities between the signs ‘Monsieur Periné’ and ‘Monsieur Perruné.’

The case in which a registered mark is declared well-known within an opposition process was analysed in a previous post. (See post here)

Finally, a document of opposition does not require a petition for the recognition of a well-known mark, but, if included, the decision must not necessarily be favourable. For example, the register of the sign ‘Forever Sexy’ filled in class 25 by Victoria’s Secret was recently denied. The decision was made based on the prior registration of the mark ‘Forever’ in classes 9, 14, 18, 24, 25, and 35, a property of Forever 21 Inc. ‘Forever’ was not recognised as a well-known mark at the end of this process. Nonetheless, due to their similarity, the mark ‘Forever Sexy’ was not able to be registered.

Post written by Florelia Vallejo Trujillo

Assistant Professor, Universidad del Tolima, Colombia

PhD Candidate University of Nottingham, UK

Well-Known Marks in the Andean Community of Nations

Patricia Covarrubia July 27, 2017 No comments:

Well-known trade marks have special protection under the IP regime of the Andean Community of Nations (CAN). Its evolution, as explained by Francisco Villacreses, can be observed through history. Initially, well-known trade marks partially exceeded the principle of speciality in the Decision 85/1974, by the prohibition to grant a register to a similar sign than a well-known trade mark even if belonging to a different class of the Nice Classification. Decisions 313/1992 and 344/1993 added international protection within CAN members and in those countries conceding similar protection. Finally, well-known marks as recognised by the Decision 486/2000 are supported on both the TRIPS Agreement and the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks of 1999.

Hence, nowadays, as explained by the Andean Tribunal of Justice (ATJ), the protection of this kind of marks are beyond the basic principles of speciality, territoriality, and real and effective use of a sign. Consequently, a register identical or similar to a well-known mark cannot be achieved: i) in any class; ii) in any CAN Member State, even if it has not been registered in the country where the new register has been filled; and, iii) a well-known mark will not be cancelled due to its lack of use (the cancellation of a mark is a step in the process of acquiring a sign that is not being used). This last aspect has been established to avoid that one party takes advantage of another’s reputation.

The use of personal names is another aspect of their protection. Overall, any person has the right to register their name, pseudonym, signature, caricature, or portrait as a trade mark. If such a sign is sufficiently distinctive and does not generate confusion or the risk of confusion in the consuming public, even when another similar trade mark has already been conceded for the same class. Nevertheless, the ATJ stated some limitations to this right: i) the unduly affectation of the rights of third parties; ii) the affectation of the identity or prestige of natural or legal persons; and, iii) that this kind of trade marks can only be granted to the person whose name is the sign.

However, well-known trade marks constitute another limitation to the use of personal names. On this matter, the Colombian Superintendence of Industry and Commerce (SIC) recently refused the registration of the mark ‘Andrés Parrilla’ (class 43), requested by Andrés Martínez Zapata to identify his steak house. This decision was taken because of the trade mark ‘Andrés Carne de Res’, registered previously for the same category, was acknowledged as a well-known mark while the other mark was in the process of registration. The brands clearly are distinguishable enough to avoid confusion in the consumer public. Nonetheless, the application of the mark ‘Andrés Parrilla’ was denied invoking the status of well-known mark of ‘Andrés Carne de Res.’

Despite the extensive protection of well-known marks, the practice has shown some exceptions to these rules. One case is the register of the sign ‘Babaria’ in class 3 to the Spanish Company Berioska S.L. by the Colombian Superintendencia de Industria y Comercio (SIC). Bavaria has been recognised as a well-known mark in Colombia. It is a Colombian brewery company founded in 1889 with dozens of trade marks registered to identify its products, most of which include the word ‘Bavaria.’ The concession of a sign using a word that sounds the same (in Latin-American Spanish "b" and "v" are pronounced the same way) has been a huge controversy.

It is worth to mention that the ATJ explained in its preliminary interpretation of this case that a well-known trade mark could be cancelled for lack of use, and subsequently been conceded to a different person if ‘this meets the function and effect to clear the register of marks and to make the right of preference possible’ (own translation). Maybe we are here in front of a shift in the case law referred to the scope and exercise of the well-known mark rights.

Post written by Florelia Vallejo Trujillo
Assistant Professor, Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK

Peru: Electronic Publication System for IP Applications is at your service

Patricia Covarrubia July 11, 2017 No comments:

On 28 June this year, by means of the Supreme Decree No. 071-2017-PCM, the Peruvian Government approved the implementation of the Electronic Gazette of the National Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI). According with the Decree’s Complementary Transitional Provision, in this Gazette will be published: ‘(t)he trademark applications and the other industrial property elements included within the scope of the Decision 486, Common Industrial Property Regime governing Bolivia, Colombia, Ecuador and Peru, which are at the stage of issuance of the order of publication (…)’ <own translation>. This means that, from now on, all the applications for the different kinds of industrial property covered by the Andean Decision 486 will be published in the Electronic Gazette of the INDECOPI. In addition to trademarks, Decision 486 regulates patents, utility models, layout-designs of integrated circuits, industrial designs, trade names, labels or business signs, geographical designations (appellations of origin and indications of source), and trade secrets.

The extract of the publication includes:

a. The application number and, if it be the case, the date of submission of the application;

b. Name and country of the applicant; and,

c. Complete date of any priority claimed, or a mention if a right of pre-emption has been exercised.

Depending on the type of the intangible good requested for IP protection, among others, the publication may also include the name and description of the patent, the description and/or representation of the trademark, the indication of the class and the products or services covered by the sign, and the geographical area covered by the geographical indication.

The implementation of this system represents a substantial step forward in the administration of IPRs in Peru due to its great potential for time and cost reductions. On the one hand, electronic publications can undoubtedly be done more efficiently than paper publications. Moreover, the legal terms for the IP administrative actions and procedures could be reduced, as this system operates on a daily publication basis and the legal terms start counting since the business day following the publication, thus, this would speed up the process. Consequently, as the time for the publication is reduced the time for granting an IP is reduced as well. On the other hand, before this, IP applications were published in the Official Journal el Peruano, which unlike the Electronic Gazette of the INDECOPI, is not specialised and is not free. However, unpublished applications with publishing orders issued before the Supreme Decree entered into force, can be published in either the Official Journal or the Electronic Gazette.

Given the above, the change of the publication system, from the Official Journal el Peruano to the Electronic Gazette of the INDECOPI, will certainly be of benefits to users of IP in Peru.

Post written by Florelia Vallejo Trujillo

Assistant Professor Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK

Colombia: La Superintendencia de Industria y Comercio protege derechos de comunidades indígenas

Patricia Covarrubia April 18, 2017 No comments:

Con el objetivo de identificar servicios jurídicos en el área de migraciones internacionales comprendidos en la clase 45 de la Clasificación Internacional de Niza (la edición 11 de Enero de 2017 es seguida por el SIC), la sociedad por acciones simplificadas AESCO EXPRES (Sociedad dedicada a la prestación de servicios de asuntos migratorios) solicitó el registro de la marca mixta AESCO COLOMBIA ante la Superintendencia de Industria y Comercio (SIC) . Sin embargo, la solicitud fue negada por medio de Resolución No. 1618 del 20 de enero de 2017 por reproducir la figura del “hombre jaguar”.

Por ser una figura precolombina, el “hombre jaguar” solo puede ser registrado por la comunidad a la que pertenece o por otra persona mediando su autorización . El “hombre jaguar”, propiedad de la comunidad Pijao o Coyaima, refleja la creencia ancestral según la cual cada especie en la tierra es un ser humano con diferente cosmología . Ahora bien, de acuerdo al artículo 136 (g) de la Decisión 486 de la Comunidad Andina de Naciones (CAN) no son registrables como marcas los signos que comercialmente puedan afectar derechos de comunidades afroamericanas, indígenas, o locales. Por lo tanto, al encontrar que el elemento gráfico de la marca mixta solicitada por AESCO EXPRES reproducía la forma de la figura precolombina y que no mediaba autorización por parte de la comunidad Pijao (una comunidad indígena reconocida como tal por el estado) , la SIC decidió negar el registro basada en la mencionada causal de irregistrabilidad.

La importancia de la Resolución No. 1618 estriba en que la misma permite determinar la extensión con la que el literal (g) del artículo 136 de Decisión 486 de la CAN debe ser interpretado. La SIC manifestó que el registro por parte de la comunidad propietaria o la autorización de la misma es necesaria independientemente de la categoría a la que pertenezcan los bienes o servicios que pretenden ser distinguidos con el signo . Esto es, sin importar la relación que tengan el solicitante y la comunidad propietaria o la potencial competencia que en el mercado se pueda presentar, el registro de la marca no es posible sino media autorización. Finalmente, la SIC señaló que la norma se dirige a proteger tanto creencias como tradiciones arraigadas en comunidades indígenas, locales, o afrodescendientes que sean parte integral de su folclore, y a impedir su indebida apropiación por particulares.

Escrito por Lina Marcela Tello Perlaza (abogado Colombia, estudiante de maestria en Propiedad Intellectual en la Universidad de Brunel, Inglaterra)