IPTango

Thursday, 26 June 2014

Mexican food brand received high status

Patricia Covarrubia June 26, 2014 No comments:

The Mexican Institute of Industrial Property (IMPI) has recognized ‘La Costeña’ as ‘famous mark’. Up to today IMPI has issued 33 declarations of ‘famous marks’. According to the reformed Mexican Law of Industrial Property, to be a ‘famous mark’, it must meet all the requirements set out in the said law and it need to prove to be known by most of consumers. With the reformed law (Chapter II bis), IMPI no only can rule on the 'notorious' or 'famous' character of a mark to resolve an administrative declaration procedure, but now, the law provides ad-hoc procedure to recognize such status i.e. 'notorious mark' or 'famous mark'.

In regards to ‘La Costeña’, Mr Rafael Celorio Otero, La Costeña’s director, noted that to be recognised as famous, it did “have to undergo surveys, market research and other means permitted by law, for purposes of that not only the population but the various sectors of the industry recognize the activities of the brand.” The evidence submitted consists of 118 folios.

Some of the aspects that IMPI considered to declare ‘La Costeña’ as a famous mark were:
• features relevant attributes such as flavour, quality, variety in their products and the hygiene which they are prepared;
• level of diffusion: use of different advertising executions carried out; such as broadcast television (public and private), mobile and internet advertising as well as sponsorships and participation in cultural and family events. It was confirmed that the advertising activities have been effective; the surveys revealed than even those that do not use the brand admitted they recognize it by advertisement.
• attributes such as convenience to use their products and the availability of the product across the country - without neglecting its fair price.
• always perceived as a Mexican brand of tradition, friendly and with a modern personality.
• position itself as a family, innovative and experienced brand - confirming that after 90 years they are still on the consumers’ perception.

The reform of the Law of Industrial Property grants, to famous marks, extended protection to all classes of the International Classification of products and services for trade mark registration in accordance with international standards.

Other famous marks already recognised by IMPI are: 'Red Bull', 'Microsoft', 'Bimbo', 'Gansito', 'Marinela', 'Pepsi', 'Jose Cuervo', 'BMW', 'Cohiba', 'Televisa', 'Batman', among others. You can check these marks in the electronic official Gazzette (e-Gaceta) - an electronic user-friendly database.

Source IMPI.

Argentina gets a bit more paperless

Jeremy June 19, 2014 No comments:

Argentina is making an impact on more than just the FIFA World Cup. IP Tango learns that the Argentine Trade Mark Office has now adopted the use of electronic certificates of registration and renewal. The implementation of electronic certificates was approved by Resolution 341/2013 and the new system became fully operative in November 2013. This is all part of a master plan to shift to a paperless environment and reduce the current significant backlog in the issuance of certificates of registration.

Argentina's Trade Mark Office might be going paperless,
but its football supporters are still some way behind ...

What this means in practice is that all certificates of trade mark registration and renewal issued after 3 September 2013 have been issued electronically and sent by email to the person for whom contact information has been given. However, as for design trade marks that have not been uploaded to the Trade Mark Office database, the Office will continue to issue hard copies.

Source: "Certificates of Trademark Registration and Renewal Now Issued Electronically", published in the INTA Bulletin, 15 June 2014, Vol. 69, No. 11 (information contributed by Juan M. López Mañán, of Marval, O’Farrell & Mairal, Buenos Aires, and verified by Diego Laurini, of Estudio Gold, Buenos Aires)

Mexico: (fake) Brazuca in transit....

Patricia Covarrubia June 12, 2014 No comments:

Source IMPI.

The Mexican Institute of Industrial Property (IMPI) reports the recent confiscation of 3,999 fake football balls -- with Brazuca's design (the official ball FIFA World Cup 2014 registered to Adidas AG).

The balls are retained in a container in the office of Lázaro Cárdenas, Michoacán. The balls final destination was Guatemala (addressed to the company Kingstar Inc.). At the request of the IP owners (through IMPI), the Mexican customs retained the balls. IMPI reports that in addition to this, the office in Lázaro Cárdenas, Michoacán still hold two containers with 16,798 fake Brazuca balls also intended to the country of Guatemala.

Article 199 bis Fracción V of the Mexican Industrial Property law, together with Art 234 – 235 of the Federal Law of Copyrights, and Art 148-149 Customs Act provide for the suspension of the free movement of goods of foreign origin.

Brazil World Cup 2014 news

Patricia Covarrubia June 11, 2014 No comments:

The waiting is almost over and the Cup is actually happen. Recent news about the forthcoming games has been without doubt full of controversy: stadiums not yet finished, workers been killed in construction sites; metro strikes; protest and more protest. Indeed, reading the news in Brazil has been overwhelming and many times I forgot what I was looking for (i.e. IP information).

At last, here there is some IP news:

Infringements:
Since 2010 FIFA has identified 450 cases of infringements relating to the illegal use of its exclusive brands. FIFA has an exclusive department that take care of the protection of its brands and it also has “offices in each of the 12 host cities of the World Cup”.
FIFA emphasises that official symbols, terms, and trade marks registered by the federation cannot be used without express permission of the said entity. It further notes that the special law ‘Lei Geral da Copa’ (12.663/12) penalises such acts by imprisonment from 3 months to 1 year.
Finally, the Brazilian authorities have already seized 2 tons of fake products containing a number of elements that linked them to the World Cup. There appears to be a commitment to intensify the fight against piracy. “The police, customs authorities and various government control and supervision promise to raise the siege against manufacturers, distributors and sellers of unofficial products. The National Council to Combat Piracy and Crimes against Intellectual Property (CNCP), attached to the Ministry of Justice, signed a cooperation agreement with the municipal governments of the 12 host cities - Rio de Janeiro, Sao Paulo, Brasilia, Belo Horizonte, Cuiaba , Salvador, Recife, Natal, Fortaleza, Manaus, Curitiba and Porto Alegre - to enable the public to identify unauthorized products agents.”

Registered Trade Marks:
The Brazilian National Institute of Industrial Property (INPI) informs that FIFA currently has 1,116 registered trade marks in Brazil – 400 of these were received after the entry into force of the ‘Lei Geral da Copa’.

Well-known marks:
The ‘Lei da Copa’ establishes a special regime for reputable marks. INPI did note trade marks of high reputation through a list provided and updated by FIFA. In this procedure INPI did not require the party claiming such a right (i.e. FIFA) to prove the condition of high repute.
According to the Brazilian Industrial Property Law (9.279/96) well know marks/a highly reputable mark has “special protection in all fields of activity. In cases related to the Lei da Copa, the highly reputable will cease to exist on January 1, 2015.”

A trade mark that did not go well with the Brazilian population:
One of the words that were registered was the term ‘Pagode’. This word refers to a style of music originating from Samba. After controversy raised by a Globo’s columnist, FIFA released a statement clarifying that the registration of the word as a trade mark does not related to the Brazilian rhythm, but to the typographic name of the brand of the World Cup. Therefore, the term is free to be used in a non-commercial use and moreover, “if already in commercial use, provided it does not confuse or associate with the phrase "Pagode" recorded by FIFA (or other companies) can, in principle, be used.” INPI has 126 trade marks with the word ‘pagode’ (between applications and registrations). The ‘pagode’ font was created by an artist hired by FIFA.

New blog on the block: Ip Lat Am

Jeremy June 10, 2014 No comments:

IP Tango welcomes another Latin American intellectual property law blog. Its name is Ip Lat Am. According to Pablo A. Palazzi (Allende & Brea, Argentina), Ip Lat Am proposes to blog news, cases and regulations. "For now we only have covered Paraguay, Argentina and Mexico", says Pablo, who is trying to contact local colleagues who may be interested in writing in the blog. The idea is to try to have the articles written in English or with an English summary. Good luck, Pablo and friends: I hope you have better fortune in securing a good flow of IP information from across the Continent than we have!

"The Happiest Days of Our Lives": Wall of evidence keeps PINKFLOYD! off Colombian TM register

Jeremy June 10, 2014 No comments:

According to Article 136(e) of Decision 486 of the Andean Community:

“Those signs the use of which in commerce may constitute an impediment to the rights of third parties, may likewise not be registered as trademarks, in particular where:

e) [they] consist of a sign that is capable of affecting the identity or prestige of legal entities, whether non-profit or not, or natural persons other than the applicant or identifiable by the general public as being such a different person, particularly in regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait, or caricature, where no consent has been obtained from that person or, if deceased, the declared heirs of that person ...”

This provision, which is not often invoked, came to the aid of vintage rock group Pink Floyd following an application for registration of the trade mark PINKFLOYD! for agricultural products (Nice Class 31). Pink Floyd (1987) -- the company established by band members David Gilmour and Nicholas Mason -- said it wanted to file an opposition even though it had no trade mark rights which could base an opposition in Colombia. Its only hope therefore was Article 136(e). Evidence of the group's history, sales, musical achievements, events, concerts, press articles, contracts and trad emark registrations in other jurisdictions was filed in order to prove that the band's name enjoyed worldwide recognition and that the members of the company had rights over it. This evidence was accepted by the Colombian Trademark Office, which concluded that the level of recognition of the band name transcended the language barrier and that Pink Floyd was well known by the Colombian consumer public -- even though the meanings of the English terms ‘pink’ and ‘Floyd’ were not common knowledge in the country.

On this basis, the opposition succeeded. The sign applied for and the name in conflict were confusingly similar, since the inclusion of an exclamation mark at the end of the sign was not sufficient to make it distinctive and any consumer could be confused as to the origin of the goods, due to the evident association with the band. Moerover, use of the mark PINKFLOYD! for the goods covered by the application in Class 31 would affect the identity and prestige of Pink Floyd (1987).

Source: "Pink Floyd successfully defends name without prior trademark registration" by Laura Michelsen and Andrés Medina (Triana Uribe & Michelsen, Bogotá), written for World Trademark Review, 10 June 2014

"The Happiest Days of Our Lives", here

Nuevo Sistema de Arbitrajes en Línea para dominios .CL de Chile inicia sus operaciones

Rodrigo Ramirez Herrera @ramahr June 05, 2014 No comments:

El registro de nombres de dominio ˂.CL˃, NIC Chile, dio inicio este miércoles 4 de junio al nuevo servicio de arbitraje en línea, que pone a disposición de las partes y de los árbitros para facilitar la tramitación y administración de los conflictos por nombres de dominio ˂.CL˃.

La plataforma electrónica fue dada conocer el pasado martes 3 en la Facultad de Ciencias Físicas y Matemáticas de la Universidad de Chile.

La implementación del nuevo servicio de arbitraje en línea forma parte de los cambios consensuados con el Consejo Nacional de Nombres de Dominio y Números IP, quien en el año 2011 apoyó la actualización propuesta por NIC Chile a la reglamentación del registro de nombres de dominio ˂.CL˃ y el procedimiento de resolución de disputas. Al mismo Consejo le cupo posteriormente un rol clave en la selección del nuevo cuerpo arbitral a través de un concurso público.

El nuevo servicio consta de una plataforma electrónica diseñada para facilitar la tramitación y administración de los expedientes arbitrales en un entorno digital seguro. Lo anterior, permite que toda la sustanciación de los conflictos genere un expediente digital, en el cual se tramita y se actúa en forma remota, tanto el juez árbitro como las partes.

Fuente: www.nic.l

The bread and...tequila: Guanajuato adds value to the region

Patricia Covarrubia May 27, 2014 No comments:

The Mexican Institute of Industrial Property (IMPI ) informs that its President and the governor of the state of Guanajuato recently met to award two particular collective marks in this region.

A collective mark was given to 'Pan Grande de Acámbaro' for bread producers in the town Acámbaro. By typing these words in the internet search box, I was overwhelmed by the quantity of information. From Wikipedia to a bakery in Chicago we can find interesting data as evidence of this traditional bread. In particular, the Acámbaro governmental web page tells the story of the ‘Art of Making Bread’ noting that while this came from the Old World, the people of Acámbaro started to recreate and perfect the bread (since the 1500s), giving their own expression. Accordingly, it is observed that ‘Pan Grande de Acámbaro’ has a “unique combination of knowledge and art of ancient roots.” The town annually celebrates a bread fair.

The other collective mark that was granted was ‘Tequila Huanímaro Exclusivo Grande’ to farmers of agave. Huanímaro is one of the seven municipalities involved in the production of tequila and yet, this is the first collective mark granted in the region of Guanajuato. It is reported that the mark would benefit over 120 families who “work in more than 800 hectares and have a capacity to daily process thousand litres of tequila”.

Finally, IMPI reports that during 2013 the state of Guanajuato received 3,675 applications to register distinctive signs and that more than 2,835 were successfully registered. IMPI remarks that collective marks “bring added value to what is produced and opens wide possibilities”.

Amazon region vs amazon.com

Patricia Covarrubia May 23, 2014 No comments:

This week the Government of Peru welcomed the decision of the board of the Internet Corporation for Assigned Names and Numbers Internet Domains (ICANN), which rejected the application for registration of the domain <.amazon>.

As reported last year (here) Peru and Brazil presented an early warning (EW) of rejection of the domain registration <.amazon> applied for by Amazon EU S.à r.l. (subsidiary of ‘Amazon.com Inc.’). The application (ID: 1-1318-83013) for a new generic top level domain (gTLD) was assessed by the board and received an evaluation result as ‘Pass IE’ (initial evaluation report here). However, it is noticeable that at the end of this report there is a disclaimer which indicates that the said IE does not ‘necessarily determine the final result of the application.’

One can observe that the date of the IE is March 2013 by which time ICANN had received (on 20 November 2012) an Early Warning (EW) submission by Peru and Brazil (ID:1-1315-58086 here). In this, the two countries expressed the reason for such an opposition as follows:

• "The Amazon region constitutes an important part of the territory of Bolivia, Brazil, Colombia, Ecuador, Guyana, Peru, Suriname and Venezuela, due to its extensive biodiversity and incalculable natural resources. Granting exclusive rights to this specific gTLD to a private company would prevent the use of this domain for purposes of public interest related to the protection, promotion and awareness raising on issues related to the Amazon biome. It would also hinder the possibility of use of this domain to congregate web pages related to the population inhabiting that geographical region."
• "This gTLD string requested ... matches part of the name, in English, of the “Amazon Cooperation Treaty Organization”, an international organization which coordinates initiatives in the framework of the Amazon."
• "The “.AMAZON” gTLD D has not received support from the governments of the countries in which the Amazon region is located ".

This submission is followed by ICANN explaining that an EW “is a notice only". That said, it continues to explain that it is “not a formal objection, nor does it directly lead to a process that can result in rejection of the application.”

While this proviso appears crystal clear and the whole administrative procedure as such is straightforward, I wonder what is the role of the ICANN in the early stages.I am particularly amaze by the fact that GAC submission was in Nov 2012 and the IE was in March 2013 -i.e. a couple of month to consider this matter. More specifically, ICANN was made aware that Amazon is a region in Latin America [is it just me who was taught this in school? or perhaps you have heard about the Amazon rainforest and/or the Amazon river]. The reservation is: in the IE the board gave the ‘pass’ note to the issue of geographic name.

Geographic Names Not a Geographic Name - PassThe Geographic Names Panel has determined that your application does not fall within the criteria for a geographic name contained in the Applicant Guidebook Section 2.2.1.4."

Isn't this peculiar? Am I missing something? Or is it just me who seems to recognise Amazon as a region and not just where I purchase products on-line.

Chile: promoting and protecting local development

Patricia Covarrubia May 21, 2014 No comments:

During May we notice the force of the Chilean program ‘Origin Mark’ (Sello de Origen). The program has been developed by the Ministry of Economy together with INAPI --aiming to promote and protect typical products and thus, endorse local development.

Denomination of Origin (DO)
In Chile, DO “identifies a good as originating in the country , region or locality of the country, when its quality , reputation or other characteristic it is essentially attributable to its geographical origin , taking into account especially the natural and human factors that mark the characterization of the product.

On May 8th two products were postulated to be recognised with this system i.e. DO:
1.- Bordados(embroidery) Isla Negra

Textiles and textile products created by the farmers’ and fishermen’s women who have become internationally known artists and their achievements have marked a milestone in Latin American art.
2.-Artesanias (crafts) in Coral Juan Fernandez
Craft produced with black coral Juan Fernandez which is located between 100 and 300 meters deep in the sea.

Both applications have been processed at INAPI and if granted, it is “expected to contribute to the rescue of local culture, increase the demand for these products and encourage the establishment of new tourist routes in these regions. “

Geographical Indication (GI)
GI refers to “the place or region of production, mining, farming or processing, which determines the specific qualities of the product from that place or region. Recognition should be credited for their reputation, quality or any relevant product characteristic attributable to their place of cultivation, extraction or production. Therefore, there must be a specific ‘link’ between the products and their original place of production, which is reflected in the name by which the product stands.”

On Monday May 12th INAPI received an application for GI for the agricultural product 'Aceitunas (olives) Azapa Valley', prepared in four different ways, as traditional practices of the particular area of the country .

The president of the Association of olive growers attended accompanied by other member from different institutions and associations. Moreover, the application was sponsored by the Foundation ‘Hacer Chile’ (Make Chile) and a social entrepreneur, who have collaborated with the Association of Olivocultores Azapa Valley to organize and raise this request for recognition.

If accepted, these three applications together with the recently submitted for watermelons (previous post here) will join Limón de Pica (lemon), Atún de Isla de Pascua (tuna), cangrejo Dorado de Juan Fernández (crab), Sal de Cachuil-Boyeruca-Lo Valdivia (salt), Alfarería de Pomaire (pottery) and, Dulces de la Ligua (sweets).

Source INAPI ( here for the DOs and here for the GI).