IPTango

Thursday, 19 November 2009

Mexican IP Institute puts electronic services at the disposal of its users

Jeremy November 19, 2009 No comments:

A recent article describes how the Mexican Institute of Industrial Property improved the electronic services that it provides to the public. In recent years it has created both (i) Banapat, a patent and trade mark database that logs the publication of patent applications and granted patents, utility models and designs, and (ii) MarcaNet, which allows the public to access general information online and consult the status of trade mark applications and registrations.

Now the Institute has introduced a further range of services, including

* the ViDoc Industrial Property Documents Viewfinder, which enables users to search for, consult and download publicly available institute files on a variety of topics, and

* Solmarnet, a new system for filing trade mark applications online.

Source: "Institute's New Online Services Simplify Industrial Property Management", an article by Amalia Bagües (Becerril, Coca & Becerril SC) in article on International Law Office

Brazil gets closer to listing US IP retaliation targets

Jeremy November 18, 2009 No comments:

In "Brazil Issues Retaliation List of US Products; IP-Protected Items In Next Round", Intellectual Property Watch's Clauda Jurberg relates that Brazil has now announced the list of 222 American products that could suffer retaliation with tariff rates of more than 100 percent of the value when imported to Brazil. This list could be followed by another, including potentially hundreds of millions of dollars in non-tariff items related to intellectual property rights such as lower-priced patented pharmaceuticals. The retaliation was authorised by the World Trade Organization following the refusal of the United States to address problems raised by Brazil's complaint about US protection of its cotton crop from competition through foreign imports. According to the article,

"Cross-retaliation (retaliation in a trade area other than the one in violation) is permissible under WTO rules and could be used to lower prices on patented pharmaceuticals. According to the Camex [Câmara do Comércio Exterior -- the Brazilian Board of Trade] executive secretary, the second stage sanctions involving exceptions to patents on drugs and more tariffs in services only will occur after the implementation of the first product tariffs. And a public consultation also will be held. Exceptions to patents such as compulsory licences already are permitted under WTO rules, but could be made easier through WTO sanctions.

The National Institute of Intellectual Property ..., under the Ministry of Development, Industry and Commerce, is awaiting instructions to participate in a discussion on creation of a list of patent exceptions. The technical staff from the institute do not yet have details on retaliation in the area of intellectual property.

On 10 December, there will be a meeting of seven ministries involved with this subject and Camex. During this meeting, they will analyse the public suggestions to list. Of the content of these 222 products, the list includes food, medicine, medical equipment, cotton, appliances, cosmetics, and accessories for vehicles. According the Commerce Ministry, the total value of the list is $2.7 billion, and some products may be excluded".

The 222-item retaliation list can be read here

Earlier IP Tango post here

Chilean wine does not escape piracy

Patricia Covarrubia November 17, 2009 No comments:

Wine piracy appears to be a common phenomenon for markets such as China and Europe. The Chilean newspaper El Mercurio reports that 30% of European wines sold worldwide are counterfeit. The amount rises abruptly in China, where it is reported that 70% of imported wines served in restaurants are counterfeit.

This year, Chilean winery market has found only twice this practice. Yet, on one hand, Wine of Chile, which is an entity that encompasses 65 companies, is meeting on November 25 to get ready for this type of fraud. The industry is looking to ascertain the authenticity of its product. On the other hand, the Association of Luxury, which includes 25 brands, is to impart seminars for members to address this issue.

Chile prepares against wine piracy - point of attention.

The industry states that the counterfeit seen is extremely rudimentary. It is basically original bottles which are washed and then, filled with cheaper wine. Therefore, they are easily recognisable because the seal is not the original and the cork is of poor quality. The industry does not know at this stage the measure that it will be implementing. However, they are looking at security labels as a key. Also, the industry advises to buy from licensed premises such as supermarkets or special stores.

Clearly, our point of interest (as well as the wine industry) is fair trade. But yet, I believe that the circulation of information that they are intending to do, does not help only the industry (profit wise) but consumers at large. At the end, there is one reasonably issue in here which is important to everyone - public health.

Brazil launches public consultation on internet matters

Jeremy November 16, 2009 No comments:

On October 29, the Brazilian Government and Fundação Getúlio Vargas (FGV) laid the foundation stone for the creation of a specific law to regulate internet legal matters.

Unusually, the Government has decided to launch a public consultation regarding internet's most problematic issues, such as the protection of individual and collective rights, the right to privacy, the freedom of speech, the liability of internet service providers and the use of legal remedies to restrain the violation of third party rights.

Local courts have been dealing with these problems in a very precarious way, since Brazil has till now had no specific law addressing internet issues, unlike some other countries.

Behind this initiative is the fact that the use of the current legal framework has only generated more legal uncertainty and unpredictability within society up to now, in particular to companies that operate through the internet. The authors of this project have recognized this problem and further state that the lack of a specific internet law ends to interfere in the development of Brazilian e-business and the exercise of fundamental rights.

This consultation will be available to the general public for the next 45 days and after that, a second phase begins for the Government and FGV, i.e., the drafting of a bill. As soon as the bill is concluded, a fresh public consultation will be launched.

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

The whiff of trade marks: scent marks reach Argentina

Jeremy November 13, 2009 No comments:

Writing for International Law Office ("First Scent Trademark Registered"), Juan Martín Aulmann and Daniel R Zuccherino (Obligado & Cia) review the current Argentine provisions on the registration of non-traditional signs as trade marks. Of particular interest is a recent decision on an application to register a scent. The authors write:

"On January 30 2009 the National Institute of Industrial Property (INPI) registered its first scent trademark to be applied to the container of a product in Argentina. The trademarks are registered as 2.115.161 to 2.115.166 and issued as Numbers 2.270.653 to 2.270.657, respectively. They are owned by L'Oréal and registered in International Class 3.

The registrations were granted by Resolution 131/09. In all cases the scents comprised a "Fragrance of…[different fruits in each case]… applied to the Containers". If the fragrances had been applied to the product rather than to the container, the INPI's criteria would surely have been different, since in certain cases the application of the fragrance to the product itself (eg, strawberry, raspberry and peach scents) would have beeen objected to by those parties that manufacture such products in the public domain.

L'Oréal's applications for the scent trademark registrations date back many years, following a third-party opposition when they were first published. When legal action was brought for the withdrawal of such opposition, the court emphasized that in order to determine the registration of a sign, it is not a "substantial requirement" under Argentine trademark legislation that such sign be "visually perceptible" or "graphically represented". Subsequently, the intervening court notified the INPI about the withdrawal of the third-party opposition.

Consequently, the final decision to deny or grant registration of the trademarks in question fell to the application authority (ie, the INPI). By means of a brief report, the INPI evaluated the marks' intrinsic and extrinsic distinctive capacity (compared to other identical or similar signs in the same class), and reached the above conclusion, permitting registration of the scent trademarks.

It is important to highlight the criteria adopted by the INPI when it originally accepted the registration applications and ordered the corresponding publications and now proceeds to grant such non-traditional trademarks without demanding that they fulfil impossible requirements (eg, graphic representation or visual perception)".

Descriptive and Distinctive marks – walking a fine line between granting or not granting registration in Peru

Patricia Covarrubia November 12, 2009 No comments:

Marlene Prada Bautista applied to register at the INDECOPI a figurative mark featuring a rectangular label which contains the stylized shape of a woman’s body and the word mark ‘fájate’; colour was not claimed. The word ‘fajate’ comes from the reflexive verb ‘fajar’ meaning I wrap myself. The actual item which you use to wrap yourself with is called ‘faja’. Generally a ‘faja’ is used by women who would like to look well shaped (in South America we use it mainly after giving birth and for special occasions – not that I ever needed one!) and is common in the sport arena for bracing or supporting your back.

The application originally was for ‘shoes, hats, dresses, lingerie, underbust, shapewear, and cyclist’s brace’ (Class 25). The question on this case was whether the sign was descriptive against the goods applied for.

The Office refused the mark considering inter alia that (1) the term ‘fájate’ comes from the action ‘fajar’, meaning to wrap part of your body with a ‘faja’. Therefore, the dispute term will be perceived by the public as an invitation to use ‘fajas’ as a underbust, shapewear and cyclist brace and thus, relating to the products that the manufacturer wants to distinguish; (2) even though the figurative mark presents other symbols, they are not distinctive since the disputed term is the one that stands out.

The applicant inserted a motion for reconsideration but this time limiting the sign to only ‘shoes, hats and dress’. The Office however, upheld the decision considering that the term was still descriptive of the goods applied for. It explained that there are some dresses that in the inside contain a type of ‘faja’ as to stylize the shape of the person wearing it (I wonder if the Officer tested the product). The view was also extended as to consider the need to keep free policy.

Miss Prada appealed to the Sala de Propiedad Intelectual (court of first instance) requesting the decision to be annulled. However, at this time, she asked for the term ‘fájate’ to be avoided. The court started to analyse what a descriptive term is (Art 135 (e) Andean Community Decision 486) and what makes a mark distinctive (Art 135 (b) Andean Community Decision 486).

To sum up, the decision turned very much on the particular facts. The court studied the sign as a whole eluding the term. Specifically, the court examined the rectangular label which corners are rounded, containing in the inside a stylized shape of a woman’s body and a characteristic writing. Therefore, the court reversed the Office’s decision due to considering that the sign was distinctive against the goods applied for. Uh? did I miss something?

The moral of the story
Stories are meant to teach you a lesson. In law, we look for eliminating the complexity of issues. However, this case leaves us with the same questions as always – where to draw the line when in presence of descriptive marks and those that are not capable of distinguish? I believe that these issues are indeed a question of fact. That said, if we analyse the case I agree with the Officer’s view. He rightly evaluated the sign as a whole. At this stage we must remember that the term was claimed as being part of the mark, but yet the Officer said that those other parts of the sign were not distinctive because the only distinctive part of the sign was the term (which was descriptive). I wonder why the Court did not see that.

If we remove the part that stands out, we are left with a quite common label for ladies evening wear. But then, this will not be a matter of descriptiveness but a matter of distinctiveness instead. If the term can be used by anyone in commerce, what makes this particular sign distinctive from others?

Clearly, decisions are made case by case, yet I consider that the mark in this case is one of those that can go either way. I finish by saying that there is indeed such a thing as bad trade marks and hence, manufacturers that do like risks (terrible tanguero that does not compete fairly!). Evidently, to own a mark that can be easily associated with others, will make the former weak.

The case in Spanish can be found in here.

The ambitious project that seeks to change the Chilean wine map

Patricia Covarrubia November 06, 2009 No comments:

Back in September, a group of people from the wine industry (vineyard owners, winemakers, academics, advisers, among others) which is lead by the Wines of Chile, are meeting weekly to work on a new map of Chilean wine. The goal is to introduce new appellation of origins (read the Spanish report here).

At the moment, Chile has one wine geographical indication, namely those that are in the ‘Valley’ and protected under Decree 464.
They are now looking to extend it to ‘Coast’, ‘Central’ and ‘Mountains’. In 1995 a wine map was published. It runs from north to south of the valleys. They believe that this is obsolete; it is considered that there is an increase geographic diversity due to the climate changes that occur from the foot of the Andes (Mountains) to the Pacific Ocean (Coast). For example, they consider that vines near the coast (colder weather) produce white wines of much higher quality.

It appears that they are doing their homework. Two months later - November, they have already bought a database with the climate of Chile in the last 20 years and have already used isothermal boundary lines to draw the map. All members registered with the Wines of Chile are sending GPS coordinates of their fields, their altitude and a self-rating within the three proposed categories.

The effort appears to be paid off. The director of Agricultural and Farming Services (SAG in Spanish) declared this week, that he would like to collaborate. This body is the one that starts the process for the Decree 464 to be amended (then it needs to be signed by the Ministry of Agriculture and later on, sent to the President for approval). So, to have the director in their side is a good start.

The big question is, what is the motive – are they pure Geographical reasons or monetary ones? I believe both. On one hand, it is important that the legislation recognises the wine industry. By this way vintners communicate to consumers that a vineyard is located in a specific area. On the other hand, as in any business, there is a commercial interest behind. Once consumers know more about the product they will be willing to pay more – the premium.

If everything goes as planned, next year we will be raising our glasses to ‘Aconcagua Costa’ or ‘Cachapoal Cordillera’.

Will Avon's ladies lure the Latins?

Jeremy November 05, 2009 No comments:

A post earlier today in Fashionista-at-Law warns that veteran cosmetics company Avon is setting its sites on Latin America. Citing Brand Channel as its source, Fashionista says:

"After seeing its sales take a bit of a battering in North America and China, Avon has been refocusing on sales to the cash-strapped by (i) promoting lower-priced products, and (ii) heavily targeting Latin America, where, the company says, people spend a high proportion of their income on beauty products".

IP Tango says that Avon should beware. The fact that Latin American consumers spend a high proportion of their income on beauty products doesn't mean that they are going to provide the cash expenditure to bring the Avon brand out of its doldrums: if you're spending a high proportion of your income on cosmetic products, the explanation might either be that you love the luxury of these products -- or that you're not earning so very much in the first place.

INPI Sets Higher Grounds and Prepares Itself for Madrid Protocol and the 2014 World Cup

José Carlos Vaz e Dias November 05, 2009 No comments:

The Brazilian National Institute of Industrial Property (INPI) has been recently providing goods news and making strong efforts to enhance the quality of its services, especially on patent and trademark prosecution matters. Last October 30, INPI announced the raise of the number of the patent allowances in the last three years, with 3.681 patent applications in 2008 and 2.419 patent allowed in 2007. For this year, it is expected that the total amount will reach 3.886 allowances. In 2010, INPI is committed to achieve the number of 4.250 favorable decisions.

This news is regarded as the recognition of INPI’s effort and commitment to decrease the time of the patent examination procedure and the current backlog, as this Agency used to take almost 8 years to grant or refuse a patent.

As to trademarks, INPI’s President – Mr. Jorge Ávila – promised in last October 22, to reduce trademark examination procedure up to 12 months already in 2010. This promise went public soon after a Report promoted by the American Chamber of Commerce (AMCHAM) in Brazil had stated that INPI is not a reliable Agency due to the continuous delays in trademark prosecution, which can take place up to 5 years.

In reality, it was not the first time that such announcement was made by the President of INPI. On April 2008, Mr. Ávila confirmed that this Office was taking stringent measures to improve trademark examination so that INPI can meet the required deadline of 18 months, as set out by the Madrid Protocol.

Further to that, the efficiency of INPI’s services in trademark prosecution will be valuable to effectively implement the cooperation agreement executed between the INPI and the Federation Internationale de Football Association (FIFA). This general cooperation signed in March 5 aims to provide a better protection to FIFA trademarks, as a preparation for the 2014 World Cup of Football that will take place in Brazil.

Terra Group acquires Shell’s operation in Central America

Patricia Covarrubia November 05, 2009 No comments:

Back in 2008, Shell, the oil company stated its intention of selling its Central American operations. One year later, the Honduran company has won the competition for Shell’s distribution and operation in Guatemala, Nicaragua and Honduras (it previously obtained the operations in El Salvador). The agreement establishes that the Terra Group will uphold and respect existing contracts with suppliers and with tenants (see press release here in Spanish).

The sale was confirmed by Fabricio Pereira, manager at Shell Costa Rica. He explained that "the agreement includes operation, marketing and sales in those countries, including Shell's strategic alliances”. The agreement also includes the acquisition and license to use the brand in these countries.

Will Terra Group start to buy Shell in South America? Have you heard the joke "when you’ve lost all your marbles, you’ve become a shell collector!" (man and mollusc jokes here)