IPTango

Tuesday, 28 October 2008

Venezuela rejects Decision 486

Jeremy October 28, 2008 No comments:

On 12 September 2008 the Director General of Venezuela's Trade Mark Office announced officially that Andean Community Decision 486 on a Common Industrial Property Regime was no longer applicable in Venezuela and that the only applicable IP legislation is the Industrial Property Law of 1955. Decision 486, approved by Bolivia, Colombia, Ecuador, Peru and Venezuela on 15 September 2000, regulates all aspects of intellectual property, unfair competition, enforcement procedures and control measures. Although Venezuela left the Andean Community in 2006, this announcement was itself unexpected.

IP rights granted under the Andean legislation continue to be valid in compliance with the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, to which Venezuala is a party. Many issues that are now missing from national IP legislation will be regulated through these international agreements.

[source: Daniela Rojas (Estudio Antequera Parilli & Rodríguez, Caracas), writing for World Trademark Report].

Argentine INPI moves to cut patent application backlog

Jeremy October 23, 2008 No comments:

The Argentine Industrial Property Office (INPI) recently enacted two new resolutions:

* Resolution 178/08, under which the INPI required all patent applicants who filed an application before 1 January 2008 to submit, within a 90-day period, a declaration stating whether the foreign priority which was claimed at the time of filing was granted in the country of origin. The deadline for this period is next week, on 30 October 2008, and is not extendable. In order to comply with this resolution, applicants should submit a list of Argentine patent applications and simply indicate whether foreign priority has been granted. If this is not done by the deadline, the application will be declared abandoned. The idea is that. by making applicants declare their continued interest in prosecuting their pending applications, the current prosecution backlog may be reduced by declaring abandoned those applications for which no declaration is made.

* Resolution 213/08 establishes a procedure whereby the INPI will remove an international priority document established under the Paris Convention from the application file and return it to the owner, reserving the right to request it subsequently if necessary. Likewise, from the moment the resolution comes into force, translations of international priority documents established under the Paris Convention must be filed in digital media (CD-ROM).

[source: Daniel R Zuccherino (Obligado & Cia), writing in International Law Office].

Free speech amendment to boost biographies

Jeremy October 20, 2008 No comments:

The Commission of Constituency and Justice of the House of Representatives in Brazil has approved Bill 3378/2008. This seeks to amend Article 20 of the Civil Code in order to authorize the creation of artistic works of a biographical nature relating to public figures. The bill states that the legislative amendment is necessary to guarantee free speech, as well as the public’s right to access information. Following the approval of the bill by the Commission, it is highly likely that it will be approved by Congress. This should be a considerable boost to Brazilian cultural activities such as films, television programmes and biographical works.

[source: Jose Mauro Decoussau Machado (Pinheiro Neto Advogados, Sao Paulo), writing for World Media Law Report].

COMPULSORY LICENSED DRUG - EFAVIRENZ - WILL BE MANUFACTURED BY PUBLIC BRAZILIAN LABORATORIES BY THE END OF 2008

José Carlos Vaz e Dias October 20, 2008 No comments:

MERCK SHARP & DOME markets, under the brand name EFAVIRENZ, the most used drug in Brazil against HIV/AIDS. In a universe of 200.000 Brazilians infected with this disease in, approximately 80.0000 take this drug.

This drug is present in the Anti HIV/AIDS Cocktail offered without costs to the Brazilian infected patients by means of the renowned Public Program so-called “National Program for Sexually Transmitted Diseases/AIDS”. This Program is led by the Brazilian Ministry of Health.

The Ministry of Health argues that Brazil spent almost USD $ 43.000.000,00 with EFAVIRENZ in the year 2007, paying US$ 1,59 per each pill. The estimated cost of this drug to the “National Program for Sexually Transmitted Diseases/AIDS” amounts to US$ 580,00 per patient per year. Considering these numbers, in 2007, the Brazilian government attempted to reach a satisfactory agreement with MERCK SHARP & DOME, proposing the payment of a price comparable to the one practiced by this company in Thailand, i.e., US$ 0,65 per pill, where the public expenditure with EFAVIRENZ does not surpass USD $ 245,88 per patient.

MERCK SHARP & DOME did not accept the proposal of the Brazilian government to use the same financial terms as those used in Thailand, even after several attempts to come up with an agreement.

Due to this unsatisfactory outcome, the Brazilian government published the Decree no. 6,108 dated of May 4th, 2007. It determined the compulsorily license of EFAVIRENZ patents PI 1100250-6 and 9608839-7, based on the public interest principle. This license was destined only to the public and non-commercial use of the drug, and aimed to attend the aforementioned local HIV/AIDS Program. The time frame of the license was set to be 5 years.

It was further determined that EFAVIRENZ would be manufactured by laboratories of governmental institutions. Since then, Brazil had to import a generic version of EFAVIRENZ from India, at US $ 0,48 per pill, to supply the internal need. This measure was indispensable since the selected public institution to produce the mentioned drug, Farmanguinhos Laboratory at Oswaldo Cruz Foundation (FIOCRUZ), had to acquire the necessary technology to manufacture the EFAVIRENZ from MERCK SHARP & DOME.

Recently, the Ministry of Health announced that Brazil will begin the manufacture of the generic version of the drug by the end of 2008. Farmanguinhos is further waiting for the regulatory approval of the Brazilian Health National Agency (ANVISA). As soon as this approval is issued the industrial production will commence.

According to the Ministry of Health, due to the successful outcome of this initiative, compulsory licenses may be extended to others Anti-HIV drugs, such as TENOFOVIR. This is one of the new targets, since TENOFOVIR is the most expensive drug, representing 15% of the overall costs supported by Brazil in regard to the HID/AIDS Program. It is also currently used by approximately 32.000 infected persons in Brazil.

Will EFAVIRENZ constitute a leading case for the Brazilian Government policy to reduce its costs to fight against HIV/AIDS? Will TENOFOVIR be the next target of the Brazilian Government?

These are questions for which we do not have yet an answer. At least, not a clear and transparent ones.

Nevertheless, it appears that EFAVIRENZ may not be the last compulsory license case, even though this compulsory license has frightened drug companies in investing and initiating Research & Development Programs in Brazil. Let us await for future developments.

Cemex la marca mexicana mejor valuada

Gilberto Macias (@gmaciasb) October 17, 2008 No comments:

La consultora Interbrand ubicó a Cemex como la principal compañía mexicana por encima de otras tan conocidas como Bimbo, Telcel, Telmex, Televisa, Banamex, Banorte y TV Azteca.

Según el ranking de 2008, primero que Interbrand realiza para América Latina, CEMEX se ubicó en cuarto lugar, detrás de los bancos brasileños, Itaú, Bradesco y Banco Do Brasil, alcanzando un valor de tres mil 998 millones de dólares.

En el estudio “Las marcas más valiosas de América Latina” “Las marcas más valiosas de América Latina 2008”, la consultora indica que la metodología utilizada consistió en analizar cuánto de los flujos futuros esperados para una empresa se deben a ese activo intangible conocido como marca.

De acuerdo con citado ranking, Cemex supera el valor de marca de firmas como Starbucks, ING, Motorola, Duracell, Smirnoff, Ferrari, Armani, Marriot, Shell, Fedex y Visa, lo que la situaría en el Top 100 Global de la consultora.

FINESSE, MEN's FITNESS confusingly similar, rules Colombia Council

Jeremy October 16, 2008 No comments:

Mariz Gestao e Investimentos Limitada sought to register the words MEN'S FITNESS as a trade mark for goods in Class 25. Colombian company Alpina Productos Alimenticios SA opposed, saying that mark was confusingly similar to its earlier FINESSE registered trade mark for goods in Class 29. The Colombian Trade Mark Office dismissed the opposition and allowed the registration. Alpina then filed an action for the cancellation of MEN'S FITNESS before the Colombian Council of State, pleading both likelihood of confusion and that its FINESSE mark was well known.

The Council of State found that Alpina's FINESSE mark was a well-known trade mark under Andean Community Decision 486, confirming that it was thus entitled to a special degree of protection. It then assessed the risk of confusion, holding the marks to be confusingly similar from visual, phonetic and conceptual points of view: if both marks were used concurrently on the market under equal conditions, consumers would be confused as to the origin of the goods.

The Council added that, according to a pre-judicial interpretation issued by the Tribunal of Justice of the Andean Community, confusion is likely to result from the "joint and synchronized impressions created by the marks" especially since, in assessing the likelihood of confusion, their similarities rather than their differences should be taken into account. Taking this into account, MEN'S FITNESS was invalid.

[source: Fernando Triana, Triana Uribe & Michelsen, Bogota, writing in World Trademark Report]

ADR in IP contracts under threat in Venezuela

Jeremy October 13, 2008 No comments:

In July of this year the Supreme Court of Venezuela agreed to entertain a reference for a preliminary ruling filed by the Office of the Attorney General on the applicability of Article 258 of the Constitution. This provision establishes that the law must promote alternative means of dispute resolution. Says the Attorney General, Article 258 must be interpreted in line with Article 22 of the Law on Promotion and Protection of Investments, which states that arbitration or other means of dispute resolution will not be used if they are not “expressly” encouraged by an international treaty to which Venezuela is a party. It was also suggested that, even where an international treaty does encourage alternative dispute resolution, the parties to a contract must have “expressly and unequivocally” agreed to submit to arbitration.

Parties to international contracts tend to draft highly specialized and precise dispute resolution clauses, especially in the field of IP, to avoid problems caused by delay and expense in utilising the traditional court process. Also, arbitrators can be appointed who are experts in their fields, while judges may not have the relevant expertise. Other issues are relevant too, such as the need for confidentiality.

If, as is likely, the Supreme Court issues a preliminary ruling that restricts the interpretation of Article 258, parties to international agreements will be precluded from submitting to arbitration any conflict that may arise within the context of an international contract. Such result would have dramatic consequences, as the national courts often fail to provide a final decision in business disputes within a reasonable time. Consequences of such a ruling can be that the number of international contracts involving Venezuelan parties will decrease and that
Venezuela’s reputation as an investor-friendly country will be damaged. Furthermore, if Venezuelan courts refuse to recognize the validity of arbitral awards issued in other countries, arbitral awards issued in Venezuela are likely not to be recognized in other jurisdictions.

[source: Daniela Rojas, Estudio Antequera Parilli & Rodríguez, Caracas, writing in World Trademark Report].

Colombia changes trade name deposit requirements

Jeremy October 10, 2008 No comments:

Opinion 08048285 of 20 June 2008 of the Colombian Trademark Office amends its practice with regard to the deposit of trade names. Previously, trade names deposited before the coming into force of Andean Pact Decision 486 had to be renewed 10 years after the date of entry into force of the decision (ie by 1 December 2010) while trade names deposited thereafter had to be renewed 10 years after the date of the deposit, under Article 196 of the decision. The Opinion of 20 June removes the requirement to renew the deposit of trade names, and deposits will remain valid indefinitely.

Source: article in World Trademark Report by Margarita Castellanos (Castellanos & Co, Bogota).

Chile se adhiere al PCT/Chile joins PCT

Aurelio Lopez-Tarruella Martinez October 09, 2008 No comments:

Segun informa Rodrigo Ramirez, el Senado de Chile acaba de ratificar el Tratado de cooperación en materia de patentes (PCT). Con ello, Chile cumple con los compromiso asumidos en los tratados de libre comercio ratificados con EEUU y UE.
Según la información proporcionada por el senado de Chile, el senador Guillermo Vásquez valoró el sistema de solicitud de patentes que establece este tratado para obtener licencias en otros países, lo que favorecerá a nuestros investigadores e innovadores.
No todos los senadores estuvieron de acuerdo en la ratificación. Así, Nelson Ávila justificó su abstención al señalar que de acuerdo a las cifras del año 2004 sobre distribución de patentes, el 94,1% de las mismas corresponde al intercambio de Estados Unidos, la Unión Europea y Japón, mientras que los países de América Latina solo aportaron un irrisorio 0,2%. “Con este Tratado no hacemos otra cosa que allanar el camino para el otorgamiento de patentes a nivel planetario que estará concentrado a nivel global, esta es la herramienta de los países desarrollados para controlar las economías de todo el mundo”, dijo.

Disclaimers in Argentine trade mark practice

Jeremy October 08, 2008 No comments:

Argentine trade mark law makes no explicit provision for the disclaimer of unregistrable elements of a trade mark. However, Disposition No. 70 of the Argentine National Institute of Industrial Property establishes the formalities required to request a disclaimer, whether voluntarily or in response to an office action. In practice, however, disclaimers are rarely sought or required and many Argentine marks contain descriptive terms. An example is the trade mark BUENACARNE (a contraction of the Spanish words for "good" and "meat"), which was granted earlier this year for meat products in Class 29. The application was filed without any disclaimer but, following a request from the examiner, the applicant disclaimed any claim to the individual words “buena” and “carne”. Although the registration issued, the mark it is weak to the point of nonexistence. It appears therefore that office practice in accepting disclaimers is too lax.

Source: INTA Bulletin Vol. 63, No. 18, published on 1 October 2008: information furnished by Raquel Flanzbaum and Manuel Alonso (Mitrani Caballero Ojam Abogados, Buenos Aires).

Some IPTango moves

* Listed as one of the "Best blogs on Intellectual and Industrial Property Law". The University of Alicante Intellectual Property & Information Technology Project (UAIPIT).

* One of the only two Latin American blog listed in the "Top 100 Intellectual Property Blogs". Feedspot, as of May 2021.

* Listed as one of the "Top 15 Blogs For An Intellectual Property (IP) Enthusiasts". Buzzfeed.com, January 2017.

* Listed as one of the "World's Best IP Blogs". BananaIP.com, December 2015.

* IPTango founder Professor Jeremy Phillips was listed as one of the Managing Intellectual Property magazine's "Fifty Most Influential People" of 2005, 2011, 2013, and 2014.

* Listed as one of the "Influential intellectual property blawgs". A Dictionary of Intellectual Property Law, Peter Groves, 2011.

* Listed as one of the "Communities of Blawgers". Los blogs jurídicos y la web 2.0. para la difusión y la enseñanza del derecho, Gonzalo Ramírez Cleves, 2010.