IPTango

Monday, 5 July 2010

Plum D’Agne - Geographical Indication: Chile’s sweet and tasty business

Patricia Covarrubia July 05, 2010 No comments:

On May 14, farmers in the area of D'Agen in France formally requested the Geographical Identification (GI) for Prunes D’Agne in Chile. If the registration succeeds, this will prevent the domestic industry to market the product under that name. The request was formalized by publication in the Official Journal in Chile. Note that ‘Pruneaux d'Agen’ is a registered PGI in the EU since 2002 and also in France as GI since 1999.

The article in the 'Revista del Campo' by the newspaper 'El Mercurio' mentions that the name has become almost a generic name for dried plums and that is used internationally by many countries. In Chile, almost all its production is being exported under that name. The Association of Processors and Exporters of Chile Prunes (Apecs) explains that over 90% of it production goes under the name D'Agen and the rest is under the name/type ‘President’.

Representatives of D'Agen in France argue that the production of that area has specific qualities and other markets have used the name to take advantage. The petition states that "the New World producers (Chile, Argentina, California, Australia and South Africa) have tried to link their products with the image of the French plums, using the same name." He continues to say that the production process in France is twice more expensive than in California, three times more than in Chile and five times more than Argentina, which would justify its request that only they can market it - it is not the same product.

Chile is the second largest producer of dried plums in the world, after California. It reported revenues of U.S. $ 120 million annually. It is reported that France does not export because it uses its production to supply the high domestic consumption.

The Chileans are looking for tools to oppose the measure and defend a market that for the past eight years has had tremendous growth in the continent. They have until July 23 to respond on the request.

A note in GI – the EU and Chile
Chilean producers may oppose to registration under Ley 20160 (modifying Ley 19039 – Propiedad Industrial). They can argue for instance:

Article 95 .- It cannot be recognized as geographical indications or appellations of origin
signs or expressions:
[...] d) that are common or generic as to distinguish the product concerned, it being understood
those that are considered as such by connoisseurs of matter or the general public, unless it has been recognized as a geographical indication or Appellations of Origin under an international treaty ratified by Chile.. "

Chile and the EU has in place a Free Trade Agreement in which there is a specific section which cover GI but only regarding ‘wines and spirits’ (section 6, Annex V and VI) – no agriculture and foodstuff were discussed.

The EU pushing?
Back in October 2009, the blog reported the intention of the EU to re-negotiate GI in the dairy product. The Chilean producers refused such negotiation. Would this be the way? At this stage, I believe that by looking for individual and national registration is the way to go. However it is indeed tedious and expensive and it would be for every producer to do so - there are more than 900 agriculture and foodstuff products registered at the EU level.

Bolivia and revalidation patents: can anyone help?

Jeremy July 02, 2010 1 comment:

Can anyone help? A reader who practises patent law outside Latin America has written to IP Tango with the following question:

"We have something called a revalidation patent in Bolivia that is pending and some regular Bolivian cases that have been considered abandoned. The system there appears to be a little quirky.

Anyway, I am wondering if revalidations are still possible? Will the existing application be voided eventually as they will cancel the type of patent, etc.

It does not concord with TRIPS but Bolivia has not honoured the TRIPS Agreement in a meaningful sense.

I would be grateful for any knowledge or advice that your readers can share".

If you can be of any assistance, please email me here and I'll forward your comment, or post your response below.

Colombia’s adhesion to the Madrid Protocol - a decade to act

Patricia Covarrubia June 30, 2010 No comments:

Last night I was trying to finish a paper regarding the new signed FTA between the EU and Colombia/Peru on Geographical Indications and I noticed something. In the draft, under the Provisions concerning Intellectual Property Rights, International Agreements (Art 195), the FTA establishes the following:

2. The European Union and COLOMBIA shall adhere to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) within a ten years period from the signature of this Agreement. PERU shall make all reasonable efforts to adhere to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989)

Therefore, following yesterday's blog regarding Colombia and the Bill 234/2009, I presume that after all Colombia will debate in favour (or not – pursuing Marmite slogan ‘you either love or hate it’) of Colombia adhering to the Madrid Protocol.

Colombia: the Madrid Protocol - is it all over?

Patricia Covarrubia June 29, 2010 No comments:

The Bill 234/2009, concerning the adoption of the Madrid Protocol, failed to be discussed at meetings of the Colombian Congress. Was this a temporal matter or a permanent one?

It is reported that the Bill has been put on hold because it did not fulfilled the relevant legislative procedure, so it is a temporal situation. It is clearly a set back that appears to be fair - need to comply with certain requirements. However, is this really what is happening?

Some time back, Adam Smith wrote an article on the WTR (issue 23) asking whether 2010 would be the year in which Latin America adopts the Madrid Protocol. In a latter issue some of us were invited to write a letter to the editor regarding this situation (issue 24). There is of course many ideas and hypothesis, pros and cons, but we have not heard yet a concrete answer why it has taken so long.

Now, going back to today’s news, at the time I noticed that in the FTA between the US and Colombia (pending ratification from the US Congress), there was a footnote where there was a commitment by Colombia to ratify or accede to the Madrid Protocol. So, what happen there? Are they playing the same cards as the US Congress? Everything is in stand-by.

I believe that another point to consider is that perhaps Colombia has lost interest in the FTA with the US; I do not blame them – it has been more than 4 years since it was signed. At the moment Colombia is negotiating FTAs with South Korea, Israel and Panama. This year, it concluded negotiations with the EU and last week the Canadian Parliament approved the FTA (Canada-Colombia). Next step for Colombia is to negotiate with Australia, Japan and Russia. That said, I presume that while the US is an important market for Colombia, it is not a priority, at least not now.

The query is: are they going to debate the Bill? I, to be honest, dislike uncertainty; for me everything should be answered with a ‘yes or no’. It is like the marmite commercial ‘you either love it or hate it’. There is not in between. The Bill is not a sandwich.

Giant fee increases in Ecuador

Jeremy June 28, 2010 No comments:

From Santiago R Bustamante (Tobar & Bustamante Abogados) comes the depressing news for IP owners that Ecuador's Intellectual Property Institute has, from 1 June, hugely increased the official fees which it charges for its services. Details can be found in this article on International Law Office. The biggest jump is for fees for patents for inventions, where the application fee has increased from $108 to $404 – an increase of 374%, with the certificate issuance fee rising from $54 to $204 – an increase of 378%.

These fee increases, together with special fees for a 'well-known trade mark declaration' and for three-dimensional marks, rather suggest that Ecuador sees IP as a tax on foreign IP owners rather than as a means of stimulating and encouraging the use of IP registration by local applicants.

Little Indemnification for IP Infringement: Are the Judges Undermining the Strength of the Brazilian Fashion Industry?

José Carlos Vaz e Dias June 25, 2010 No comments:

The Brazilian fashion industry is recognized as one of the fastest growing in international market. From fashion lingerie, beachwear to haute couture, Brazilian clothing may be found nowadays in the main centers of Europe, the US and Asia. Export of Brazilian fashion products are expected to reach approximately US$ 10 million by the end of year while in 2005, the same industry exported US$ 6 million.

Further to that, fashion shows are held in Rio de Janeiro and São Paulo every year, which opens up good opportunities for business. Such results make one to believe that Brazilian fashion is catching up to other global and well reputed designers label.

Such growth is mostly due to the creativity of Brazilian designers, represented by Almir Slama, Alexandre Herchvovitch, Isabella Capeto, Mara Mac, Fernanda Yamamoto, Walter Boaventura, among others. They have aligned the charming and daring features of clothing and apparel with the quality requested for the international market.

Nevertheless, it seems that Brazilian courts are not following properly the development of this industry nor recognizing the importance of creativity and IP to the local fashion designers. It is very common to see the courts dismissing allegations of copyrights and/or industrial designs infringement, as the judges do not understand properly IP matters. Furthermore, indemnification in the fashion industry is frustrating.

A recent case worth mentioning is the decision rendered by the judges of the 4th Civil Chamber of the State Court of Rio de Janeiro on June 1, 2010 (published on June 23, 2010) involving the local fashion designer Gilson Martins (Appellation n. 0072174-63.2004.8.9.19.0001). Accordingly, the known department store C&A copied and sold women hand bags in exquisite formats, such as mouth and beach sandals among others, created by the designer. The mouth and beach sandals bags were registered at the Institute of Arts and protected by copyrights.

Those bags were extensively sold in several department stores of C&A throughout the country.

Although the judges of the 4th Civil Chamber recognized the originality of the bags (yes, some judges are attempting to address the minimum contribution of creativity, what a contradiction!!), their copyright protection and violation, losses and damages were fixed in the amount of R$ 15.000,00 (approximately US$ 7,000), not more than that. The judges’ argument for such little amount was the non-existence of severe economic or social effects accrued from the infringement, which means that the violation was not expressive notwithstanding the extensive exposure of the bags in more than 200 C&A Department Stores spread out in Brazil.

The indemnification amount has caught the attention of IP scholars and attorneys, leading to the conclusion that the Brazilian courts are too permissive to violation of intangibles. One has to remember that indemnification granted by the courts has educational besides compensatory character. Can this permissiveness harm creativity in the fashion industry? Should the local authorities be worried by educating judges of the main commercial centers of Brazil? It seems so, since holding an effective court system is as important as producing a good standard of IP laws and regulations.

Acuerdo de cooperación entre el IMPI y la OEA

Gilberto Macias (@gmaciasb) June 25, 2010 No comments:

El día de hoy se celebró la firma del acuerdo de cooperación entre el Instituto Mexicano de la Propiedad Industrial (IMPI) y la Secretaría General de la Organización de los Estados Americanos (SG/OEA) a través del Departamento de Desarrollo Económico, Comercio y Turismo de la Secretaría Ejecutiva para el Desarrollo Integral (SEDI).

El acuerdo tiene por objeto establecer un marco de colaboración en temas relacionados con la propiedad intelectual, comercio e innovación, con la finalidad de promover espacios de diálogo sobre políticas públicas, además de promover la evolución de los sistemas nacionales de la región y de sensibilizar al público en general acerca de los aspectos relacionados con la propiedad intelectual, el comercio y la innovación.

El tema de la propiedad intelectual ha sido identificado como una de las áreas clave para mejorar la competitividad, fomentar la innovación y complementar los esfuerzos de creación de capacidades para la obtención de beneficios económicos generados por los activos intangibles.

Más info aquí y aquí.

The Colombian Law called ‘Fanny Mikey’ is not funny business

Patricia Covarrubia June 24, 2010 2 comments:

Last week (17/06) the Colombian Congress approved the ‘Fanny Mikey’ Law which seeks to protect economic rights (royalties) to soap opera actors and actresses when productions are later sold and broadcast in Colombia and abroad. The Law now waits for presidential approval.

The law called “Fanny Mikey ", named after a Colombian-Argentina actress who died over a year ago, was approved in the Senate by 57 votes in favour and 5 against.

The Minister of Interior and Justice, Fabio Valencia Cossio, said that this initiative recognizes that artists “have the right to receive royalties for their performance and work, as their contributions to the cultural heritage of Colombia must be translated into economic and social aspects”. I could not agree more. It is my understanding that Colombia is one of the major Latin American exporting countries of television productions, including soap operas, dramas and other series. Therefore, while the law appears to grant economic rights to just the artist, it is I believe of importance to the Colombia country as well. The reason is that the development of a country is to distribute the resources generated in all regions and in all sectors.

Maria Eugenia Penagos, actress and now director of the Actores Sociedad Colombiana de Gestión (Society Actors Management) achieved to unite 183 artists for the support in moving forward the Fanny Mikey Law. She mentioned that with this law, "We will raise the right to remuneration for public communication”. Penagos explained that for each broadcast of a drama in which an actor participates, he receives a percentage. If at home, the money raised will go to the Actores Sociedad Colombiana de Gestión; if overseas, to their societies. She adds that the amount to be paid will be set up by the parties involved (producers and actors) and it will be done in accordance with international agreements. If no agreement is reached, a judge will set it up. She gives an example from Argentina where last year it started collecting royalty for actors at 0.8 percent.

There is clearly a difference between paying fees for services that have been agreed in the contract concerned and another matter is royalty – don’t you think?

Yet, many questions arise from this law, for instance: will the royalty be for the actors’ lifetime or for a defined time period like cinematographic works that are protected for 80 years calculated as from the completion of the production (Art 26)? Who will be controlling later broadcasting and international sales? To this effect, how will it be controlled?

Colombia Copyright Law here.

Brazil: billion dollar damages for improper use of software – will the Superior Court of Justice uphold the first instance decision?

Patricia Covarrubia June 23, 2010 No comments:

The Third Chamber of the Superior Court of Justice (STJ) is hearing an appeal with the aim of changing compensation for inappropriate use of software that can reach the value of $ 1 billion - one of the highest ever of its kind in Brazil. The decision came from the Court of Justice of São Paulo (TJSP), which held that Rede Brasileira de Educação a Distância S/C Lta has breached the Centro de Estratégia Operacional Propaganda e Publicidade S/C Ltda’s intellectual property rights.

The Rede Brasileira has been accused of using, without authorization, a software authored by researchers from the Centro de Estratégia and distributing it to 10 Brazilian universities and 33 foreign universities. This, according to the news, represents access to the software of approximately 17,000 teachers and 190,000 students.

On one hand, the defence, asking the STJ to reduce the amount of the damages, asserted that "the amount escape all the standards already required in the context of justice." On the other hand, the Centro de Estratégia Operacional Propaganda e Publicidade S/C Ltda claims that the amount of compensation is calculated based on the universe of people who may have had access to the software.

Minister Sydney Benet, from the STJ, proposed in his vote, to form a committee of arbitration to make a calculation of the compensation more in line with reality. While I am not familiar with IP finance and the system of monetary compensation, I like the reasoning of Mr Benet. At the end of the day, I believe that the ‘reality’ check should be about market return and so, the actual compensation and not a theoretical one. Any thoughts?

Perú: Proyecto de Ley de Protección de datos

Aurelio Lopez-Tarruella Martinez June 21, 2010 No comments:

Oscar Montezuma (Miranda y Amado Abogados) nos ha hecho llegar información muy interesante acerca del Proyecto de Ley de protección de datos personales, recientemente aprobado por el Ministerio de Justicia, y que se está discutiendo en el Congreso del Perú.

Como cuenta Oscar, una Ley de protección de datos personales constituye un complemento para el desarrollo del comercio y otras iniciativas interesantes como la notificación electrónica y los expedientes digitales. Además, resulta necesario la adopción de un marco normativo integral (y no sólo sectorial) que otorgue protección a sus ciudadanos sobre su información personal en consonancia con la tendencia internacional sobre la materia.

Aquí un interesante artículo de Oscar sobre la cuestión en su blog Blawyer. Tambien, si lo preferís, lo podeis ver en video.