IPTango

Monday, 26 April 2010

More on Bacardi – who owns a brand?

Patricia Covarrubia April 26, 2010 1 comment:

I need to refer today to the previous blog re: Bacardi Rum Havana Club. I have been contacted by Amy Federman, for Bacardi USA Inc., who has kindly sent me a better bottle image for the rum - I am afraid I do not know how to post a big picture (literally), so I hope you can see the label (right). She adds, “Puerto Rican Rum is clearly labelled on the front of the bottle”.

On the case, the judge held that the company was not misleading consumers. However, apart from the question of infringement is the issue, I believe, of using a well known geographical indication for the product –rum.

Now leaving aside these two issues, I found another one. By reading the label I noticed that underneath the words ‘Havana Club’ there was the term BRAND. The question then is who owns the brand? To answer this we are back to square one. A Geographical Indication may belong to a group of individuals or producers that share the ‘goodwill’. The real question is: Does Bacardi have any rights to use the words Havana Club? I would like to hear your views in this matter so don’t be shy and write a comment. It will be very helpful for my forthcoming seminar.

Chile: promulgación de la nueva Ley de propiedad intelectual

Aurelio Lopez-Tarruella Martinez April 23, 2010 1 comment:

Hoy se promulgará en Chile la Nueva ley de Propiedad Intelectual, luego de casi tres años de discusiones en el Congreso. El Proyecto de ley que se promulga modifica la ley 17.336 de 2 de octubre de 1970 y desde su presentación ha tenido más de 250 indicaciones.

Su texto se refiere, principalmente, a la protección del derecho de autor en el entorno digital, nuevas tecnologías y protección de ciertas formas de acceso a la cultura. Con relación a la web, la norma contiene un Capítulo sobre Limitación de Responsabilidad de los Prestadores de Servicios de Internet que desliga de responsabilidad al proveedor de Internet por obras publicadas sin consentimiento del autor si se cumplen ciertas condiciones de aplicación, siendo responsable el usuario que ejecuta las subidas de los contenidos a la red, cuestión que se resolverá en sede judicial. El prestador de servicios sí puede ser sujeto pasivo de ciertas medidas procesales prejudiciales y judiciales según regula el artículo 85 R de la ley.

El Proyecto de ley fue aprobado en el control de preventivo por el Tribunal Constitucional en una sentencia de 31 de marzo de 2010. Luego de su promulgación sólo resta su publicación en el Diario Oficial para que tenga rango de ley. La noticia acá.

Prepared by Rodrigo Ramirez (Abogado de Ramos Pazos, Montecinos & Díez, Chile), posted by Aurelio

Bacardi Rum Havana Club – clearly not made in the Havana, uh?

Patricia Covarrubia April 23, 2010 No comments:

A federal judge dismissed a lawsuit by Pernod Ricard against Bacardi. Pernord Richard, the premium spirits and wine company in the U.S., requested for an injunction stopping Bacardi U.S.A. from using "Havana Club" as the name for a rum that is made in Puerto Rico, rather than in Havana, Cuba. The U.S. District Court in Delaware dismissed the lawsuit.

Who has the right to the Havana Club brand?
The Arrechabala family, a Cuban family, created the brand of rum in Cuba in 1935.
On one hand, Pernod argument was that by using the name Havana, which is a well-known city for rum, for non-Cuban rum would mislead consumers. On the contrary, Bacardi believes that they are entitled to the name because it uses the Arechabala formula to make its rum.

The judge ruled that Havana Club rum Barcadí has a "Cuban heritage,'' derived from the family recipe Arrechabala. The judge also ruled that, Bacardi labels indicate ''that the rum is distilled in Puerto Rico'' and so the company is not misleading consumers.

In a statement John Esposito, president of Bacardi USA based in Coral Gables, explains the importance of this decision. He said that it “protects our ability to properly introduce Cuban heritage and geographical origin of our rums”.

Some points
• Geographical Indication(GI): this is the thorny question. The reason being that I am trying to prepare a paper for the forthcoming seminar in Alicante and guess what? It is a mess. I did have a simple definition for it and I did understand quite well until...I start reading all the Latin America literature regarding this issue. It is so confusing how they (or us) interchange words and thus the result is, as my mother use to said, a ‘letter soup’. Or, is a GI the same as a Designation of Origin (DO), or a DO the same as an appellation of origin or GI the same as Appellation of Origin? and I also found geographical appellation! When I finished reading the material collected I could not remember what a GI was!

I then read the TRIPS where clearly states what is Geographical Indications – indications that identify a good as originating in a particular territory, region. This is indeed a very broad concept. For example the EU regulation in this matter identify between Designation of Origin, Geographical Indication and traditional speciality guaranteed. The first two are the most common. DO protects and cover products which are produced, processed and prepared in the said geographical area and GI which is the most common one, protects and cover products which at least one of the stages have taken place in the said geographical area.

Now, under which principal can Bacardi claim any right? There is the situation as in here where a group of manufacturers and associations can share the ‘goodwill’ of a product and thus are entitled to use the ‘mark’. But the question is, could a ‘recipe’ be the link claimed here?

There are many cases in the EU (Champagne, Sherry, Advoocaat, upon others) that said NO. There are also cases of parallel import where even same companies can stop the same product for entering the country (Colgate Palmolive- toothpaste case). The idea is that Geographical Indication indicates more than a simple link; it indicates quality that a particular area has.

• The United States generally opposes to the protection of Geographical Indications considering that they are commonly used as generic terms e.g. parmesan cheese, feta, camembert, champagne. Yet, it protects some of its own products, e.g. Florida orange juice, Idaho Potatoes, Vidalia onions.

I leave you then with some ideas, I am going to make a cake for my kids - I will follow my granny’s recipe and it will be the same!

Colombia counterfeit liquor industry – from a simple garage to a proper manufacture!

Patricia Covarrubia April 21, 2010 No comments:

Browsing for IP news, I read with interest a report written by CAROL MALAVER from the Colombian newspaper EL TIEMPO. The statement informs that in Bogotá, the illegal business of counterfeit liquor has been transformed from a crime produced in a garage to and organised crime which operates in well equipped spots.

Diana Garcia, a pharmaceutical chemistry expert on the subject, said that this type of crime is nowadays controlled by organized criminals. She explained that the bottles used are often original and filled with a mixture of alcohol, water, dyes, and in some cases cheaper liquor. "The criminals would buy the bottles to recyclers. Therefore, we ask consumers to break their bottles from being used for crime". She also adds that lids, boxes and labels can be reused.

In another part of the report CAROL notes that Garcia adds that this crime "not only is affecting the industry and trade marks, but also Treasury departments and nationals, namely, health and future investments in education and sport departments.” To fortify this statement, the journalist also quotes Harold Parra Ortiz, revenue Director for the Government of Cundinamarca, who appears to agree with the previous statement. He said that this type of sell - counterfeited liquor, no only affects the department's economy but also the population at large:
1.- It is detrimental to business because they discredit their brands and reduce their income
2.- It affects public health because they put at risk the lives of people consuming adulterated liquor and,
3.- It reduces tax revenue that trade contributes to the department.

Jorge Baquero, Police Commander of Kennedy, explains that his department had dismantled 14 criminal groups in 2009 and 2 this year. He tells that on May 2009 he was stunned when he found a counterfeit liquor industry in the south of the capital. He explains that the manufacturing did have “nothing to envy to those operating legally”. There was a truck full of empty bottles (15,000) of different brands, ready to be repackaged with adulterated liquor. Inside the store, there was specialised machinery for the production, blending and packaging, as well as 12,000 lids, 800 labels and 150 bottles of whiskey ready for market. "There was even a section on quality control, sealing system and x-rays”.

The report basically deals not only with the situation of counterfeit and the industry in general but opens the mind of consumers – the risks. The blog in several occasions have mentioned the problem with counterfeits in medicines, foodstuff and alcohol and thus, I believe that the article on the newspaper is approaching the right audience. I believe that counterfeit will exist as long as it has consumers. We as a population are also responsible, don’t you think?

The article can be read here (Spanish).

México: Multas por publicidad engañosa

Gilberto Macias (@gmaciasb) April 21, 2010 No comments:

Desde principios del 2009 a la fecha, la Procuraduría Federal del Consumidor (PROFECO) ha multado a 11 empresas de distintos giros económicos que operan en el país por difundir publicidad engañosa. El monto total de las sanciones fue por 7 millones 367 mil 357 pesos.

Estas multas indican que los códigos de autorregulación publicitaria del sector empresarial en México no han probado ser herramientas eficaces, no obstante, la Profeco considera que existen las condiciones adecuadas para que ese ejercicio [el de la autorregulación] sea eficaz o que consiga su objetivo.

Entre las empresas sancionadas por mentir a los consumidores en sus campañas publicitarias figuran Telmex, Genomma Lab, Kellogg’s México, Reckitt Benckiser, Nissan, VivaAerobus, Nacional Monte de Piedad, Industrias Alen, Clorox de México, el jardín de niños Mundo Chiquitines y Venta Universal.

A Telmex se le multó con 800 mil pesos por la campaña “inviértale”, que lejos de ser cierta “timó” a sus consumidores. Nissan por su parte tiene una multa de 32,000 por no ofrecer información completa sobre sus planes de financiamiento. Kellogg’s por ofrecer propiedades excepcionales después de consumir su producto. Viva Aerobus por ofrecer boletos con costo de un peso.

Sin lugar a dudas son unos buenos comienzos en la materia, aunque siempre sería de agradecer que los consumidores afectados recibieran una contraprestación de parte de las empresas sancionadas o de las multas recabadas (utopía?).

Ecuador's compulsory licensing regime for medicines

Jeremy April 20, 2010 No comments:

Writing for International Law Office ("Compulsory licences for medicines"), Santiago R Bustamante of Tobar & Bustamante Abogados explains that, last November, Ecuador's President Rafael Correa issued Decree 118: this declares that it is in the public interest to have access to medicines used for the treatment of illnesses affecting the Ecuadorian people. The decree was drawn up in response to the suffering endured by people in various areas of Ecuador (in particular in its tropical regions) following severe outbreaks of mosquito-borne dengue fever and other diseases. But what is the legal basis of the decree?

"Article 32 of the Constitution, which establishes that health is a right guaranteed by the state;
Article 31 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which recognizes the right of countries to grant compulsory licences for patented medicines in order to combat and mitigate the effects of illnesses;
and the Doha Declaration regarding the TRIPS Agreement and public health, which states that each World Trade Organization member state "has the right to grant compulsory licences and the freedom to determine the bases upon which such licences may be granted".

The country's Intellectual Property Institute has now issued an Instruction on the Granting of Compulsory Licences for Patented Drugs, in accordance with local IP legislation and is open to receive applications for the grant of compulsory licences, whether for commercial or non-commercial public use. It is for the applicant to show that the product or medicine which it will produce or import is primarily intended for supply within the domestic market. In the case of
an application for commercial public use, the applicant must show that it tried to obtain authorization from the rights holder on "commercially reasonable terms and conditions" and that a favourable response was not obtained within a period of 45 days.

For further details, please refer to the article.

Bolivia: winery industry asks for stronger sanctions against falsification and adulteration

Patricia Covarrubia April 20, 2010 No comments:

The president of the Competitiveness Committee - Chain Grapes, Wine and Singanis, Jorge Canedo, requested to the MP (Tarija sector) to bring before the Legislature amendments to the Criminal Code. The purpose is to reinforce sanctions against smuggling, counterfeiting and adulteration of these products.

Mr Canedo also is seeking for resources which are freely available as a contribution of the regional government. The idea is to promote the industrialization of this sector in order to keep pace in international competition. He explains that this sector “contributes to the country with over 50 million dollars a year”. Therefore, it is important tougher penalties against people who damage productivity and the development of this industry.

Canedo lamented the lack of central government support. He claims and requests that the State recognise the designation of origin of products from this geographical area (note however that Singani was recognised in 1992 as a DO). The objective being to achieve better entries in both domestically and internationally markets.

15-16 April - my whereabouts

Patricia Covarrubia April 19, 2010 No comments:

This past week (15-16 April) I attended the IV International Graduate Legal Research Conference (IGLRC) hosted by King's College London School of Law and Graduate School. Although the Conference and papers were not regarding IP in Latin America, I would like to share with you some ideas.

At the IP Session, chaired by Dr Tanya Aplin, I delivered a paper entitled “Registrability of Chemical Senses as Trade Marks – Looking Beyond Graphical Representation”. While the subject resulted on an interesting discussion and critiques, I would like to talk today about a paper that was delivered in the same session by Fiona Batt from Bristol University. The title of her paper was “Ancient Indigenous Deoxyribonucleic Acid (DNA) and Intellectual Property Rights”. I believe that the paper launches a fascinating and attractive topic which because of the time, resulted in a short discussion and debate. For this reason I would like to hear you opinions on this matter.

On the paper, Fiona mentions that because of the developments in science, body parts and genetic material are becoming ‘property’ which is protected and controlled by IP rights. She starts from the obvious, Patent, and then explores Traditional Knowledge and even Trade Secrets. But at the end, the question is: who is the owner of ancient indigenous DNA when extracted? While this appears to be somehow clear, the main challenge is: who would be the owner to prevent such extraction? She brought into attention the American and Western cultures.

When she finished her speech I was the first to raise my hand, I was not sure if I wanted to ask a question, or make a comment or just to praise her for such a remarkable paper. However, my intervention was more as to asking what was sought. The situation is, I believe, a delicate one. On one hand, we have a community that according to philosophy of social justice owns such information and are entitled to any compensation; moreover, this is something that the indigenous people finds offensive in the first place. On the other hand, we have investigators and industries that invest to change information into useful commodities. Yet, I sometimes wonder if IP is too intrusive and thus would be nice for a change to see a prohibition within IP that ‘protect’ rather than exploit such heritage.

We just need to wait for the Intergovernmental Committee on Intellectual Property
and Traditional Knowledge, Genetic Resources and Folklore to submit to the September 2011 WIPO General Assembly a text of an international legal instrument regarding this and other matters.

The fight against counterfeit of medical products

Patricia Covarrubia April 19, 2010 No comments:

An International Conference called “Towards the practical implementation of the Council of Europe's Convention on Counterfeiting of Medical Products and Similar Crimes involving threats to public health (Medicrime Convention)” has taken place in Basel, Switzerland this past weekend -15-16 April. More than 140 participants, senior officials from health, law enforcement and judicial authorities from around 40 states, international organisations and institutions from around the world came together to examine the future MEDICRIME Convention.

The aim of this conference is to enhance significantly the fight against counterfeit medical products and similar crimes in Europe and worldwide by ensuring the required political support for the implementation of the future MEDICRIME convention.

This is indeed, the first international instrument providing for the
criminalisation of counterfeiting of medical products and similar crimes in order to protect public health and establishing a framework for international co-operation on criminal law matters between Parties in this regard. The convention includes not only members of the Council of Europe but also will be open for accession to states which are non-members.

Speaking at the closing session of the Conference was the advisor of the Mexican Federal Commission for Protection Against Health Risks (Cofepris), Agustin Alberdi Angeles. He described the situation in Mexico. He started by saying that the most consumed and confiscated counterfeit drugs in Mexico are Viagra, Cialis, and Aspirin. Adding, he said that free medical samples are also sold, the most common being: Humulin, contact lenses and condoms. In addition, he mentioned that pharmacies sell medicines to which the expiration date has been removed. He mentioned that Mexican authorities seized 25 tons of drugs between January and March 2010.

The substantive criminal law provisions included in the MEDICRIME Convention cover more than the counterfeiting of medical products; it as well covers the supplying and trafficking, the falsification of documents (linked to medical products). It also establishes preventive measures such as the introduction of quality and safety requirements for medical products and measures ensuring their safe distribution. This too includes awareness-raising campaigns, supervision of the distribution chain,
agreements with Internet service providers and domain registrars.

The final declaration calls for the counterfeiting of medicines to be considered "a violation of the right to life”, a right which is recognised by the Declaration of Human Rights and the European Convention on Human Rights.
The Convention after all, brings everybody attention - an international cooperation to successfully combat counterfeit medical products.

The draft of the MEDICIRIME Convention can be read here.

More info here and here.

México. La piratería será perseguida de oficio y con mayores penas.

Gilberto Macias (@gmaciasb) April 19, 2010 No comments:

Como el IP tango informó anteriormente, la llamada ley antipiratería aprobada por el pleno de la Cámara de Diputados sigue (y seguirá) dando de que hablar.

De dicho proyecto, se destacan las importantes reformas al Código Penal Federal y a la Ley de la Propiedad Industrial para establecer la persecución de oficio al delito de piratería y endurecer las penas contra quien venda en vía pública objetos falsificados.

Ratificada por 359 votos, 26 en contra y 12 abstenciones, el dictamen turnado al Ejecutivo federal para su publicación en el Diario Oficial de la Federación y entrada en vigor, precisa:

“Se impondrá de dos a seis años de prisión y multa de 100 a 10,000 días de salario mínimo general vigente en el Distrito Federal, al que venda a cualquier consumidor final en vías o en lugares públicos, en forma dolosa y con el fin de especulación comercial, objetos que ostenten falsificaciones de marcas protegidas por esta ley".

“Si la venta se realiza en establecimientos comerciales, de manera organizada o permanente, se estará a lo dispuesto en los artículos 223 y 224 de esta ley. Este delito se perseguirá de oficio”.

Sin duda se trata de un paso importante en la batalla contra la piratería, pero dichas reformas ya están siendo cuestionadas por tratarse de medidas parciales, ya que, según la redacción de las mismas, se refieren únicamente a la piratería física, dejándose completamente de lado el tema de las descargas ilegales (piratería digital).

Otros, como era de esperar, las cuestionan completamente.