IPTango

Monday, 28 September 2009

IP Experts in Ecuador Conclude: Intellectual Property Rights Foster Competition in Latin America

Jeremy September 28, 2009 No comments:

The Latin American Association of Intellectual Property (ASIPI) promoted on September 8 and 9 in the city of Quito (Ecuador) a Roundtable on Competition Law. The objective of this meeting was to discuss the establishment of an effective legal framework to tackle anticompetitive practices based on the economic and political peculiarities of the region, and the intersection between IP rights and competition.

Three Legal Experts from different countries were invited for this event. Mr Carlos Alberto Arroyo del Río of the Ecuatorian law firm Estudio Falconi Puig Abogados and the Peruvian attorney Mr Carlos Alberto Arroyo del Río of the firm Luiz Echecopar spoke about the existing antitrust structure in their countries. The Brazilian IP attorney Mr José Carlos Vaz e Dias of the firm Di Blasi, Parente, Vaz e Dias Advogados & Associados brought two cases being handled at the Antitrust Division that were related to IP rights.

Besides addressing the existing structure and the functionality of the competition law system in the aforementioned countries, the speakers dealt with one of the most controversial and sacred subjects in Latin America: the impact of intellectual property rights on competition.

The main question to be answered in this regard was the following: Does Intellectual Property foster competition in the Latin American countries?

The unanimous answer was positive, as IP rights are effective instruments to bring new companies into the market, especially that created by innovative products. Moreover, it induces local companies to participate in high technology fields, such as biotechnology and IT products. It was argued that, in Brazil, the protection of industrial design provides an opportunity for local companies to participate in the competitive, restricted and global market of “haute couture” (shoes, clothes and bags) and in the supply of spare parts to the automobile companies.

Further to that, Latin countries have been erasing the concept of adopting a set of clauses regarded as a violation per se of competition. Instead, the examination of the effects on competition of specific clauses in technology transfer agreements is now required.

The common position of the experts reflect the general understanding of Latin Americans and may be considered as a radical and positive change towards the governments’ attitude in the 80’s, as several limitations were raised to the IP laws as an attempt to reduce the impact of IP on their industrialization policy.

Posted

Brazil, UK set to continue administrative cooperation

Jeremy September 22, 2009 No comments:

A press release yesterday from the UK's Intellectual Property Office states that the UK and Brazil are set to continue bilateral co-operation on intellectual property. According to the text,

"In a joint statement delivered to the fourth meeting of the UK-Brazil Joint Economic and Trade Committee (JETCO) on 16 September, Ian Fletcher, CEO of the Intellectual Property Office, outlined the achievements under the current work plan between the two countries.

There has been progress in the following areas:

* patent and trade mark examiner training;
* quality control;
* shared views and experiences of the UK’s legal and IT systems and
* a shared common analysis of the challenges facing the global IP system.

New areas of cooperation over the next year will include:

* further patent examiner training;
* exchanges of staff in the field of green technologies and
* exploring model agreements for managing IP in international collaborative R&D projects.

Jorge de Paula Costa Avila, President of the Brazilian National Institute of Industrial Property, welcomed the continuing collaboration between our respective IP offices and agreed that we have a shared interest in a global system which works. He said that we must explore new ways of working if we are to help our countries innovate and grow".

Península de Yucatán – Origen del Chile Habanero.

Gilberto Macias (@gmaciasb) September 18, 2009 2 comments:

Según nos informan nuestros amigos de ALHEN, la controversia constitucional respecto a la denominación de origen del Chile Habanero que les informamos anteriormente ha llegado a buen puerto.

Como recordarán, los Estados de Quintana Roo, Yucatán y Campeche peleaban ante el Instituto Mexicano de la Propiedad Intelectual (IMPI) el título por el cuál se les permitiría asegurar la explotación comercial y el reconocimiento de origen de dicho tipo de chile.

El resultado ha sido la presentación de una nueva solicitud de la denominación de origen cuyo nombre será "Chile Habanero de la Península de Yucatán", la cual abarca ahora el territorio de los estados de Campeche, Quintana Roo y Yucatán.

Más información aquí, aquí y aquí.

Primera marca de certificación registrada en Bolivia.

Gilberto Macias (@gmaciasb) September 18, 2009 No comments:

“Triple Sello” es el nombre de la primera Marca de Certificación inscrita oficialmente ante el Servicio Nacional de Propiedad Intelectual en Bolivia (SENAPI).

La marca es una herramienta desarrollada por el Instituto Boliviano de Comercio Exterior (IBCE) para aplicarse a los productos de las empresas que puedan demostrar fehacientemente que en su elaboración no incurrieron en prácticas de “trabajo infantil”, “trabajo forzoso” y cualquier forma de “discriminación” a lo largo de toda su cadena productiva.

La creación y registro del “Triple Sello” se hace con miras a la erradicación de las peores formas de producción, convirtiéndose así en una inédita iniciativa privada destinada a la promoción de los derechos humanos, derechos laborales y los derechos de la niñez y adolescencia.

Desde el lanzamiento del “Triple Sello”, a fines de julio, una decena de empresas bolivianas de los sectores agroindustrial y forestal vienen sosteniendo conversaciones con el IBCE para obtener información para postularse a la certificación.

Más información aquí.

Quest for damages succeeds

Jeremy September 15, 2009 No comments:

A recent electronic bulletin from Daniel Advogados, Brazil, reports that the members of the musical group J. Quest are to receive the equivalent of around US$ 26,000 from local company Wizard Brasil Livros e Consultoria by way of compensation for the wrongful use of images, as well as the use of passages from their songs, following an order by the Minas Gerais State Court.

Wizard was initially entitled by contract to use the material in question, but carried on doing so post-termination. According to Wizard, its use was provided for under the contract, but the trial court disagreed. This decision is still not final as an appeal lies to the State's Court of Appeals.

II Jornadas de la Academia Ecuatoriana de Propiedad Intelectual

Aurelio Lopez-Tarruella Martinez September 14, 2009 1 comment:

La Academia ecuatoriana de propiedad intelectual ha organizado sus segundas Jornadas que tendrán lugar los días 30 septiembre y 1 de octubre y contarán con la participación de grandes figuras de la propiedad intelectual en Latinoamérica como Delya Lipszyc, Ricardo Antequera, Alfredo Corral o Carlos Fernandez Ballesteros

Brazil wins WTO award, threatens US IP

Jeremy September 07, 2009 No comments:

The World Trade Organization has upheld Brazil's complaint against the United States regarding the subsidies paid to US cotton farmers (see IP Tango here), which make it difficult for a large number of countries, championed by Brazil, to export their own produce to the world's most valuable market.

The two countries are now in dispute as to the value to Brazil of its victory. According to the Brazilians, this ruling entitles the country to about US$800 million in sanctions against the United States this year, of which US$340 million would be comprised of "cross-retaliation" against US intellectual property or services. The Americans disagree, asserting that the sanctions were worth only around USS$300 million and that Brazil would be unlikely in the near future to retaliate against US intellectual property rights.

Peru tilts at TLT

Jeremy September 07, 2009 No comments:

According to the World Intellectual Property Organization's TLT Notification No. 52, the Republic of Peru has deposited its instrument of accession to the Trademark Law Treaty (TLT), which will enter into force with respect to the Republic of Peru on 6 November 2009. This will bring to 45 the number of countries that have signed up to the TLT (for a complete list of TLT members click here).

IP infringement and capacity to sue in Brazil

Jeremy August 31, 2009 No comments:

Recently the following issue was brought to the Brazilian Superior Court of Justice (STJ): does a company have the capacity to sue, in its own name and behalf, a third party who infringes an IP right held by its major stockholder (currently its manager) if it does not have the formal power to legitimate such action?

According to this Court, the answer is yes: a company that exploits an IP right has capacity freely to sue a third infringer, in spite of not having powers, at least formally granted by the IP owner, for that purpose.

The present action concerns a design right granted in 1996 by the Brazilian Patent and Trademark Office, in respect of a bread basket, to plaintiff’s major stockholder, Mr Pereira da Silva. Although the design right belongs to Mr Pereira da Silva, PLASÚTIL (the company) filed, in its own name and behalf, a suit against TRITEC for IP infringement. TRITEC immediately raised the issue of the plaintiff’s lack of capacity to sue, since no powers have been granted granted, at least formally, to the plaintiff to exploit and represent the IP holder in Court. On this ground, the defendant claimed dismissal of the present action.

Santa Catarina’s Court of Justice ruled in favour of the defendant and concluded by dismissing the action brought by PLASÚTIL. The plaintiff then appealed to the STJ, which overturned the lower court ruling.

To support such reasoning, the STJ stated that (i) Mr Pereira da Silva was the plaintiff’s major stockholder and current manager, (ii) the plaintiff’s legal form was that of a Sociedade Limitada, (a limited liability corporation with separate legal personality), which has a strong intuitu personae sense, thus diminishing the differences between the company’s legal personality and the person who manages it, and (iii) the registered design was used by the plaintiff, with effective participation of the IP owner, becoming a corporate asset, even though it was formally not.
Further to that, the STJ also mentioned the existence of a judicial precedent of 2003, in which PLASÚTIL was also the plaintiff, and that the suit could always be brought on grounds of unfair competition.

At first glance, the STJ ruling may be considered as quite interesting and praiseworthy, since it ends to lift the corporate veil of the plaintiff’s company, escaping from its traditional scope of use (liability matters), and privileging the underlying facts over the formal reality.

However, it also raises some conflicts, in particular with the principles of safety and realiability of IP registry system and the need to record any change/or modification to the IP right and its holder, as well as to be published at BPTO Bulletin to generate effects before third parties, such as the Courts and third persons.

In this case, neither the execution of an Agreement nor its recordal and publication by the BPTO were necessary to be considered as valid and effective by the STJ. Is this a sign for lower Courts to privilege a less formal or rigid application of IP Law? Most probably yes, but only time will provide us with a definite answer.

Posted by Jeremy for Jorge Miguel Arruda da Veiga (Di Blasi, Parente, Vaz e Dias & Asociados)

LA dominates "Americas" supplement

Jeremy August 28, 2009 No comments:

The latest supplement to the three intellectual property titles Trademark World, Patent World and Copyright World, published by Informa Law, is called "The Americas". This supplement carries no fewer than eleven articles on developments in Latin America and just one from the United States.

The topics featured include IP specialisation of the courts in Brazil (by Paulo Parente Marques Mendes of Di Blasi, Parente, Vaz e Dias), a review of the effect of the US-Peru Free Trade Agreement by Estudio Colmenares' Carmen Arana and the increasingly sensitive issue of IP protection in Venezuela (Ricardo Rojas Gaona, Jesus Lopez and Cristina Imparato (Glaham Abogados).