IPTango: Uruguay

Showing posts with label Uruguay. Show all posts

Monday, 27 June 2022

Paraguay: news with no news

Patricia Covarrubia June 27, 2022 No comments:

From the Paraguayan IPO I read the news about the Mercosur – Singapore Free Trade Agreement (FTA).

Last week, the 6th round of negotiations seemed to end with some consensus on the matter of intellectual property, covering trade marks, patents, design, traditional knowledge and geographical indications. The meeting took place online and was led by the coordinator of the IP section Juan Esteban Aguirre, who is the Director of the International relations at DINAPI (Dirección Nacional de Propiedad Intelectual – that is, Paraguay national IP).

Previous round covered: access to the goods market, rules of origin, commercial defense, technical barriers to trade, investment, electronic commerce, services, telecommunications, government procurement and institutional aspects, trade in services, public purchases, and electronic commerce. The Foreign Trade Information System (SICE) publishes all documents relating to the negotiations, but it has not been updated (last doc is the 4th table of negotiation - April 2022).

MERCOSUR is a trade bloc in South America (Argentina, Brazil, Paraguay, and Uruguay – Venezuela was suspended in 2017) and represents the 5th world economy. The largest exports from MERCOSUR in 2022 is to China (USD$ 31,532 M); same with imports.

In 2019, MERCOSUR concluded FTA with the EU (more info here). An FTA cut hassle involved in exporting and importing goods and services, could it be by the reduction or removal of custom duties and or simplifying custom procedures.

Some FACTS on IP

All FIVE countries are members of the WTO and consequently have incorporated the TRIPS agreement into their national legislation – minimum standard of IP.

Madrid System (trade mark international register): Brazil and Singapore are members
Hague System (design international register): Singapore is a contracting party
Patent Cooperation Treaty (patent international register): Brazil and Singapore are members

Good to know – Brazil

The Brazilian IPO may challenge clauses establishing that improvements developed by the licensor may only be used by the Brazilian company upon the execution of a new agreement. Law No. 4,131/1962 regulates foreign capital in Brazil .

INPI assessment and approval of Technology Transfer and IP licensing agreement are mandatory for the purposes of:

authorizing remittance of royalties to foreign licensor, grantor of IPRs recognized in Brazil;
trigger tax deductibility by the Brazilian party of amounts paid in connection with IP license, acquisition; and
entitle the Brazilian party to enforce licensed, granted IP rights.

Other IP facts in Brazil:

INPI neither annotate agreements nor issue certificate of registration for the license of non-patented proprietary technological knowledge.
INPI does not accept ‘technology’ licenses and establishes that the technology is permanently transferred to the Brazilian recipient.
Software agreement registration is not required unless it involves the transfer of source code and know-how.

For more information in Latin America, have a look at the vast information hold at Latin America IP SMEs Helpdesk here.

Source DINAPI.

Uruguay: Absolute Grounds of Refusal good practice

Patricia Covarrubia June 05, 2020 No comments:

Not many times we receive much news about Uruguay, so in this occasion I am delighted to bring you news on good practice. The National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI), in collaboration with the European Union Intellectual Property Office (EUIPO) and the EU-funded project IP Key Latin America (IP KEY LA), have put together a Practice Paper concerning the examination of absolute grounds for refusal in cases of figurative trade marks that contain purely descriptive words/expressions. The paper is to be used as a guidance on how to assess the examination of this type of marks (known in Uruguay as ‘marcas mixtas’ ).

The grounds for refusal are divided into two: 1) ‘absolute grounds for refusal’ which refers to the 'intrinsic qualities' of the sign and its ability to function as a trade mark i.e. to be able to be distinguishable in the market; 2) ‘relative grounds for refusal’ which refers to conflicts with earlier 3rd party rights. The IP Key Latin America notes that the DNPI is the “first Latin American IP office to analyse and find common ground with the criteria developed under the Common Communication on the Common Practice of Distinctiveness – Figurative marks containing descriptive/non-distinctive words”.

For more information click here. The paper can be read here (Spanish), and here (English).

Uruguay and Chile: new agreement in the region

Patricia Covarrubia August 09, 2017 No comments:

Economic and trade relations between Chile and Uruguay are currently governed by the Economic Complementation Agreement between Chile and the Southern Common Market (MERCOSUR) which comprises also Argentina, Brazil, and Paraguay. In order to deepen and stimulate trade relations, both countries agreed to start negotiations in early 2016 to set up a Free Trade Agreement.

This project has now reached the Chilean Chamber of Deputies for its First Constitutional Process.
This Agreement in general will coexist with the international agreements in which both countries are parties. Therefore in regards to Intellectual Property they reaffirm the commitment of both parties to the Berne Convention, Paris Convention, the TRIPS agreement and to its amendment protocol contained in the Doha Declaration (re. access to generic medicines).

If you are looking at the agreement, see chapter 10 (at page 183) which is the one that covers IP.

Article 10.5 covers ‘principles’ which refers to a balanced treatment between the rights of innovators on their creations and the social component of the use of knowledge for the benefit of citizens – provided they are compatible with the IPRs provisions. In this we observed that Article 10.5bis refers to the commitment to public health acknowledging the Implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and public health WT/L/540; and furthermore, the commitment to support the agreement presented by WT/L/641: inserting Article 31bis after Article 31 and by inserting the Annex to the TRIPS Agreement after Article 73.

Article 10.11 covers ‘denominations of origin and geographical indications’. In this, it asserts that each party must ensure in its legal system the protection of DOs and GIs and this to be in line with the TRIPS. The agreement further contains an Annex, if you look at Annex 10.11 it only covers Pisco and it contains this disclaimer “The foregoing shall be understood without prejudice to the recognition that Uruguay may grant to a country which is not a party in relation to homonymous geographical indications and denominations of origin.” According to MENSAJE Nº 348-364/ Pisco then has automatically secured access to the Uruguayan market without any geographical identifier.

Annex 10.7 has a list of DOs and GIs from both parties. From Uruguay is is mainly wines while Chile shows others such as ‘Limón de Pica’, ‘Sandía de Paine’, ‘Aceituna de Azapa’, ‘Dulces de la Ligua’, ‘Oregano de Putre’, and ‘Cordero Chilote’ to name a few.

'it's a new day it's a new life' and I am feeling PROSUR

Patricia Covarrubia January 10, 2017 No comments:

December 2016 saw the last weeks of the year with the eagerness of some Latin American countries to start cooperating more. Therefore, future plans were discussed by PROSUR Directorship Committee.

Back in 2009, WIPO received a letter signed by nine Latin American countries which have agreed on a regional project “to develop a common platform that allows the integration, exchange of information and system compatibility for the nine participating countries.” – known as PROSUR due to involve South (SUR) American countries.

Besides the plans for the new year ahead, the extension of funding was also covered (by the Inter-American Development Bank (IDB)). The Latin American countries which are part of the PROSUR regional cooperation system of IP are: Brazil, Argentina, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay, WIPO also participated. From Central America, Costa Rica also joined the group and there are talks for expansion of PROSUR. That said, PROSUR members “announced the entry of the Dominican Republic and Nicaragua from 2017.” [will this also see the change of the name to PROSURCENTRAL?]

The patent national offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay had already started a Patent Prosecution Highway (PPH) pilot program.

Source INPI.

Uruguay joins El Salvador, commits to Marrakesh

Jeremy December 08, 2014 No comments:

According to Marrakesh Notification No. 4: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, the Government of the Eastern Republic of Uruguay, on 1 December 2014, deposited its instrument of ratification of the Marrakesh Treaty -- but it won't come into force till it reaches the required number of ratifications or accessions in accordance with Article 18 of that Treaty, ie three months after 20 eligible parties have signed up for it.

At present the number stands at four (you can check here to see whether more have signed up since) but at least this is positive news for Latin America. Of the four, two countries -- a full 50% -- are from Latin America, the other being El Salvador (the other countries being India and the United Arab Emirates).

Obligatoriedad de uso de marcas en Uruguay

Gilberto Macias (@gmaciasb) January 14, 2014 No comments:

A partir del pasado 1° de enero de 2014, los dueños de marcas registradas en Uruguay deberán usarlas “pública y efectivamente”, de forma directa o a través de un tercero licenciatario. Si la marca no es objeto de uso puede ser cancelada.

La reciente aprobada Ley de Rendición de Cuentas No. 19.149, de 24 de octubre de 2013, (artículo 187) ha establecido la obligatoriedad del uso de las marcas registradas, como condición para su vigencia e instaura la posibilidad de presentar una acción de cancelación por falta de uso.

Dicha acción podrá ser solicitada por los titulares de un interés directo, personal y legítimo y solo en las siguientes circunstancias:

a) cuando no hubiera sido usada por su titular, por un licenciatario o por persona autorizada para ello, dentro de los cinco años consecutivos y siguientes a la fecha de su concesión o a la fecha de autorización de sus respectivas renovaciones.

b) cuando dicho uso se hubiera interrumpido por más de cinco años consecutivos.

No obstante, el registro no podrá ser cancelado cuando el titular pruebe que la falta de uso obedece a razones de fuerza mayor.

Tampoco se prevén posibles cancelaciones de oficio por la propia Dirección Nacional de la Propiedad Industrial (DNPI) y se aclara que no se requerirá prueba del uso para renovar una marca.