IPTango

Friday, 25 July 2014

Infringement, not consumer deceit, is the key to criminal prosecuition, says Argentine court

Jeremy July 25, 2014 No comments:

Matos Berna, Beatriz Noelia s/ Recurso de casación, Docket No. 361/2013, is a ruling of 26 February 2014 from the Argentine Federal Criminal Court of Cassation involved an action brought by the public prosecutor against Beatriz Matos Berna, who was accused of selling counterfeit trade marked products on the street.

The trial court acquitted the defendant on charges of sale of counterfeit trade marked goods under Law No. 22,362, Section 31(d), following earlier decisions to the effect that the circumstances of the case (in this instance the street sale of ostensibly counterfeit products in small quantities) excluded the possibility of consumer deceit, posed no harm to the trade mark holder and did not therefore constitute a criminal offence. After the prosecutor's appeal to the Federal Court of Appeals failed, the prosecutor appealed further to the Federal Criminal Court of Cassation, arguing that consumer deceit was not a requisite element of the crime in question. Division IV of Federal Criminal Court of Cassation agreed in its majority decision and reversed the lower courts’ rulings, ordering that the criminal proceedings continue.

Said the majority, the risk of consumer confusion is not a requisite for a successful prosecution on charges of criminal trade mark counterfeiting -- but the violation of the trade mark owner’s exclusive rights over the mark is.

Source: "Consumer Deceit Is Not Required to Prosecute Counterfeiting at Criminal Courts", by Martín Chajchir (Marval, O’Farrell & Mairal, Buenos Aires), pubnlished in the INTA Bulletin July 1, 2014 Vol. 69 No. 12

A sign of the times -- or assign of the times? Venezuela at last allows recordal of deals with applications

Jeremy July 23, 2014 1 comment:

Following the withdrawal of Venezuela from the Andean Community, its Patent and Trademark Office (PTO) decided to revert to that country's Industrial Property Law of 1955. Since no regulations were promulgated under that law for the assignment of pending trade mark and patent applications, it transpired that their assignment was no longer admissible. Accordingly, until a trade mark or patent is actually granted and recorded on the register, there is no property right but only a petition to grant a property right -- and only property rights (ie registered patents and trade marks) could be assigned.

On 31 March of this year the Venezuelan Autonomous Intellectual Property Service (SAPI) published a notice indicating that, owing to business dynamics, and the fact that IP rights are property of a private nature, the applicant for a patent or trade mark registration has a priority right. Thus, since 9 April 2014 (when that notice became effective) , SAPI has allowed the recordal of assignments or any other changes of ownership (merger or change of names) against pending applications.

Source: "Trademark Office Now Accepts Assignment of Pending Applications", by Richard N. Brown (De Sola Pate & Brown Abogados--Consultores, Caracas), published in the INTA Bulletin, 1 July 2014 Vol. 69 No. 12, which contains further details and welcomes this change.

ABPI 34th Congress: coming soon

Jeremy July 17, 2014 No comments:

The 34th International Intellectual Property Congress of ABPI, the Brazilian Intellectual Property Association, takes place this year at the WTC, São Paulo, Brazil, from 24 to 26 August 2014. This year's theme is "Intellectual Property as a Driver for Economic Growth, Industrial Competitiveness and Investment Attraction".

O Congresso deste ano debaterá, sob vários ângulos, a propriedade intelectual como fator de desenvolvimento econômico do país. Precedido por reuniões das 14 Comissões de Estudo da Associação e workshops inéditos, que ocorrerão nos dias 22 e 23 de agosto, serão objeto de debate nos diversos painéis e plenárias do Congresso, os seguintes temas:

Abertura de capital e outros mecanismos de financiamento dos projetos de inovação
Importância econômica da indústria intensiva em conhecimento e Propriedade
Intelectual no Brasil
Empresas de base tecnológica e Empresas com centros de pesquisa e desenvolvimento
Acervos digitais e acesso ao patrimônio cultural
Marcas fluidas (“fluid trade marks”)
IP Markets – O novo mercado de licenciamento e comercialização de tecnologia – como identificar casos de patent trolls
Games como modelos de negócio
Novos nomes de domínio – Uso de marcas como top level domain names
Evoluções nos Desenhos Industriais
Crowdsourcing e seus desafios na Propriedade Intelectual
A ANCINE e Distribuição de conteúdo audiovisual pela internet
Reivindicações de patentes implementadas por programas de computador
Lojas virtuais e Propriedade Intelectual – venda de produtos falsificados e uso de marcas de terceiros
O valor das marcas que deixam de ser usadas após fusões e aquisições e estratégias de mercado

For further information and registration, click here for details.

Ranking 2014 de las Marcas Mexicanas más Valiosas

Gilberto Macias (@gmaciasb) July 17, 2014 No comments:

La consultora Interbrand acaba de publicar la edición de 2014 de las mejores y más valoradas marcas de México.

Los rankings de Interbrand se han convertido en uno de los estudios de mayor referencia para CEOs, dueños de las marcas, líderes de opinión a nivel mundial, así como para todo aquel vinculado con la Propiedad Industrial e Intelectual.

En este estudio, se ha analizado la evolución de las grandes marcas de México, su importancia y desempeño en el entorno económico actual así como en el mediano y largo plazo identificar el progreso en la gestión de marcas y aquellas tendencias y prácticas que están influenciando la relación entre las marcas y los consumidores.

Este año el Ranking es encabezado por Telcel (telecomunicaciones), Corona (bebidas), Telmex (telecomunicaciones), Oxxo (retail) y Bimbo (alimentación).

El Ranking de las 25 marcas más valiosas puede consultarse aquí, y el informe completo aquí.

GLAMOUR fends off potentially confusing mark in Argentina

Jeremy July 10, 2014 No comments:

In Vi Da Producciones SA v Advanced Magazine Publishers Inc (Court Files 432/07 and 4392/09, May 13 2014), the Civil and Commercial Federal Court of Appeals, Argentina, refused an application to register the words TENDENCIA GLAMOUR DISEÑO VANGUARDIA as a trade mark in Nice Classes 16, 35, 38 and 41, following an opposition by Advanced Magazine Publishers Inc, the owner of the registered trade mark GLAMOUR.

Said the court, the two marks shared the word ‘glamour’ -- but the addition of the words ‘tendencia’, ‘diseño’ and ‘vanguardia’ did not confer distinctiveness on Vi Da's mark. It was recognised that, in the fashion and beauty sectors, products are usually identified with terms that are apparently “weak”, but which -- when used in these sectors -- may gain strength and recognition. This was the case with GLAMOUR, which was a well-known trade mark in the fashion and publication sectors. Accordingly, TENDENCIA GLAMOUR DISEÑO VANGUARDIA would evoke the magazine owned by the owner of the earlier mark and would mislead consumers into believing that it had started to publish another fashion, beauty and lifestyle magazine. Registration of the mark applied for would thus lead to confusion regarding the source of the publication.

Source: "Advanced Magazine Publishers prevents registration of mark containing 'glamour'" by Fernando Noetinger (Noetinger & Armando, Buenos Aires), written for World Trademark Review, 3 July 2014

Pisco: ensuring its authenticity

Patricia Covarrubia July 04, 2014 No comments:

The Peruvian Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI) informs the seized of more than 7000 bottles filled with liquor that exhibited the denomination of origin (DO) ‘Pisco’ without having such authorization.INDECOPI can prosecute cases of DO misuse with fines.

Through the Directorate of Distinctive Signs and the Supervision and Auditing Administrative office, the goods were seized at a customs warehouse in a Peruvian Port Terminal as part of a case against the manufacturer of the product which was intended for exports.

Back in 2011 INDECOPI awarded to the National Association of Producers of Pisco, the authorization to operate as the Regulator of the said DO. The Regulatory Council guides, monitors and control the production and processing of Pisco. Moreover, if a manufacturer wants to use a DO, it needs to be authorized by the Directorate of Distinctive Signs at INDECOPI.

Some facts about Pisco as a DO:

• Chile and Peru has disputed the DO Pisco for many years --one of the main differences between the spirit is the alcohol content.
• In 2013, after more than a decade of litigation, El Salvador (Supreme Court) ruled in Peru’s favour agains Chile in the proceedings regarding the legitimate use of pisco as a DO. The judgment annulled the 2005 decision of a lower court which recognized Pisco as a DO originating from Chile.
• In 2009, Malasia recognized Pisco as a DO from Peru.
• Trade agreement between Chile and Nicaragua recognized Pisco as a DO from Chile.
• Trade agreement between Peru and Costa Rica recognized Pisco as a DO from Peru.
• Trade Agreement between Peru and the EU recognized Pisco as a DO from Peru.
• In 2013, the EU registered Pisco as a DO from Peru. However, there is a note which acknowledged a previous (2002)Trade Agreement between Chile and the EU in which Pisco was recognized as a DO from Chile! Therefore, the note clarifies that the protection granted to "Pisco" as a DO to Peru does not hinder the use of that name for products originating in Chile.

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.