IPTango

Friday, 30 October 2009

The right to a hearing – more news from Ecuador and the ‘compulsory licenses’ Decree

Patricia Covarrubia October 30, 2009 No comments:

Surely the first part of the title does not sound quite IP related. However, following Ecuador news in the issue of ‘compulsory licenses’, it was the only principle of law that cross my mind. Yesterday, the Pharmaceutical Industry Research (IFI in Spanish) has accepted the Government’s decision to regulate pharmaceutical patents, considering it to be democratic. However, it its statement there were two issues that are relatively attention-grabbing.

Firstly, IFI agrees that patents prevent the production of cheap medicines but needless to say, it emphasises that patents are the means to achieve balance between innovation and public interest. Point that I agree with.

Secondly, IFI regrets for not having been invited to participate in the process. I completely disagree with this action. Isn’t it a general rule that persons whose interest are visible affected by a decision taken by a public authority must be given the opportunity to formulate their own views? I believe that this right must be respected even if the relevant proceedings were merely administrative proceedings. This procedure clearly affects the Pharmaceutical Industry. Specifically, those 177 transnational companies which control 82% of the medicines industry in the country.

It is my understanding that the Decree is in line with the Ecuadorian Constitution and international agreements, and that it incorporates requirements of the WTO’s TRIPS Agreement and the Andean Community legislation. However, is it just this tango dancer who is moving alone and seeing a violation of a well developed principle of law?

Nevertheless, we need to wait for clarification about the process. Will the Instituto Ecuatoriano de la Propiedad Intelectual (IEPI) notify the request to the owner of the patent concerned? Article 5 of the Decree establishes so. However, will the Institute invite the owner of the patent to submit any observations on the said request? In the same vein, as the EPI makes the first instance decision, shall a civil court have the right to review whether the procedure was correctly followed?

I believe that the arguments of the patentee shall be taken notice of. The reason is that, in one hand, it will be helpful in deciding the terms and conditions for granting such a licence and on the other hand, it will be helpful in avoiding the abuse of the provision.

'Made in Mexico'

Patricia Covarrubia October 29, 2009 No comments:

Industries that prepare, manufacture and/or produce products in the region may apply to use the logo ‘made in Mexico’ (see press release in Spanish here)

The move comes, according to the Ministry of Economy, to be more recognised by consumers. This appears to be a wakeup call for the population, since it seems that consumers prefer international marks rather than national ones.

Manufacturers can download the application online (but need to be submitted in person). Once submitted in the respective office (Secretaria de Economia (SE)) a receipt will be given. An answer is expected in no more than 5 working days; if no reply is heard, authorisation is automatic!

The process appears to be straightforward. There is no much burden for the industries apart from the fact that they have to acknowledge the description of the product in question. At this stage, there is the need to indicate in which way the Mexican parts (raw material or process) are used in the making of the product (Art 8 I (d)).

This is clearly a good move from the Mexican industries; however how it this logo seen by the IP advisors? Is this a PGI but without the fuss? Or is this a collective mark? One thing I am sure of is that it is not a certification mark. There are not technical or quality standards required. May I emphasise that the only requirement is that there must be one issue that need to be ‘Mexican’.

Forthcoming IP Forum in Mexico City

Patricia Covarrubia October 28, 2009 No comments:

If you happen to be in Mexico City between 18 and 19 of November do not miss this approaching meeting. The title seems to involve IP finance and surely sounds attractive:

‘LA PROPIEDAD INDUSTRIAL COMO ELEMENTO DE COMPETITIVIDAD. LA VISIÓN DE LAS EMPRESAS IBEROAMERICANAS’ (Industrial Property as a competitive element. The vision of the Ibero-American industries).

The conference is organised by the WIPO, together with the Oficina Española de Patentes y Marcas (OEPM) and Instituto Mexicano de la Propiedad Intelectual (IMPI). This conference seeks to discuss, according to the program , the key of having and securing IP rights for the international success of your company.

For more information click here or to register, email ddri@impi.gob.mx

Brasil demandará a la Unión Europea por medicamentos genéricos.

Gilberto Macias (@gmaciasb) October 27, 2009 No comments:

Brasil, junto con la India, prepara un contencioso contra la Unión Europea (UE) en la Organización Mundial de Comercio (OMC), que tiene como telón de fondo el desarrollo de la producción de medicamentos genéricos en los países en desarrollo.Brasilia acusa a los europeos de frenar sistemáticamente genéricos en tránsito para países en desarrollo, violando el derecho, por las reglas de la OMC, que toda nación tiene que importar esos medicamentos, que son más baratos y están libres de patentes.

La acción europea es vista como desestabilizadora cuando se considera que varios medicamentos que son producidos por grandes laboratorios, generando US$ 30 mil millones en ventas anuales, van a perder sus patentes en los próximos años. "Un número importante de patentes va a caer en dominio público y es evidente que habrá más producción de genéricos", afirmó el embajador brasileño en la OMC, Roberto Azevedo. "Esas incertidumbres en el tránsito de genéricos por Europa son prejudiciales y violan obligaciones previstas en el Acuerdo de Trips (patentes)."

Los europeos defienden el derecho de controlar medicamentos que pasan por su territorio para combatir eventual comercio de medicamentos falsificados e insisten en que no violaron los acuerdos de la OMC.

Más información aquí, aquí y aquí

Its official – Ecuador grants obligatory patent licenses

Patricia Covarrubia October 27, 2009 No comments:

The Presidential Decree which grants obligatory patent licenses to some pharmaceuticals has been enacted. Since October 23, Ecuador woke up to a new patent system where approximately 2000 medicines may be affected.

Under this system, the State can oblige patent owners to release an authorisation by which third parties are allow to copy the patent and thus, compete at the same level. According to the Instituto Ecuatoriano de la Propiedad Intelectual (IEPI) there has been more than 2000 patent applications but when reviewed only 480 were registered. From these, it is considered that only 200 will be enter on the list of obligatory licenses which are those that attack illnesses relating to cancer, AIDS, diabetes, hypertension, among others.

The IEPI claims that they are ready to start granting obligatory licenses but they are waiting for the ‘list’. The Health Minister is the institution which is elaborating the file of medicines that are to be under this new system. Then, once they pass the list, the IEPI will start receiving applications from those nationals that would like to produce the medicines.

There are 243 pharmaceutical working in Ecuador and 87% of these are transnational companies. As expected there are notorious opinions. The School of Chemist and Biochemist explains that they are concerned with the quality control of the medicines. One owner of a pharmacy affirms that there will be shortage since only 5% of the stock is from national labs.

Observing closely, the Presidential Decree set up in Art 4 that those who opt for an obligatory license must paid to the patent owner some royalties. The amount will be decided (hopefully case by case) by the IEPI. It seems pretty clear however, that this will raise concerns. Transparency and adequacy of this process may be tainted by corruption (Corruption perception index 2008:2.0 - 151 out of 180). What is more of concern is that Art 1 establishes that ‘the decree will not apply to cosmetic, aesthetic and cleaning medicines and generally, those that are not use for treating illnesses. For the rest, specifically those illnesses that affect the Ecuadorian population and are considered priorities for the public health, licenses will be granted.’ Clearly, the list appears to be open. In fact, the question is: what is to be considered ‘priorities’? Once again, the issue of corruption comes to mind.

The Pharmaceutical Research Industry (IPI in Spanish) in Ecuador said that they did not wish to comment on the issue until they did not know the extent of the Decree. (see comments here).

Ecuadorian Decrees can be accessed here, see No 118 for more info.

Mexico --Football legends to be trade marks for beers

Patricia Covarrubia October 26, 2009 No comments:

Entrepreneurs in Mexico have united efforts to launch a series of beers named ‘la liga cervezera’ (the beer league). Their first beer label, named after the Argentinean footballer Diego Maradona, has already been registered. The trade mark is a composite mark comprising a word, a number and colours. Specifically, the label is represented by the number 10 which appears directly over the word ‘Maradó’. These are written over vertical lines comprising the colours white and light blue (the t-shirt colours of the Argentinean team). The manufacturers affirm that there are more to come but have yet not been registered. Because of that, they prefer not to disclose the others footballer.

Now then, if we analyse the trade mark, many questions are brought into mind. Firstly, is this a strong mark? Clearly, the colours resemble the t-shirt of the national team. Moreover, the number 10 and the depicted name of the player (not in full) is an illustration of his personal t-shirt. These issues, in a case of infringement, will be considered when determining whether two composite marks are sufficiently similar to support a likelihood of confusion claim. Secondly, is this launch a type of merchandise? Indeed, there is an image and personality involved in the label and thus, some countries do not allow registration of this type of signs. Lastly, we could ask: are the players informed?

We just need to wait the other labels to get underway to see whose t-shirt would be a trade mark in ‘the beer league’ and to come back with answers regarding the distinctiveness of such marks.

Telefonica Chile to operate under the trade mark Movistar

Patricia Covarrubia October 25, 2009 No comments:

From today onwards the Chilean company, which is the main telecommunication company in the country, will start working under the trade mark Movistar (see press release in Spanish here). However, note that Telefonica SA owns Telefonica Chile Ltd and, as some of you may know, Telefonica SA is a Spanish company which is one of the largest land lines and mobile telecommunications operators companies in the world.

Telefonica SA operates the Movistar trade mark through Latin America which provides only mobile phone services. In Europe for example, the company works under the trade mark O2. That said, Telefonica SA owns several line operators in the Americas and in Europe and has received quite a few fines under unfair competition laws due to its dominant position (see the European Commission fine here).

Chile will be the first country in which the Spanish company will unite all telecommunications under the same trade mark, namely Movistar. Will the company’s bubble burst? I believe that with this action, there is a great possibility that governments would like to investigate this deal.

Argentina: Innovar 2009. ¿Quién dijo que ser creativo no tiene recompensa?

Aurelio Lopez-Tarruella Martinez October 25, 2009 No comments:

El día viernes 16 de octubre culmino la muestra de los proyectos de la Quinta Edición del Concurso Nacional de Innovaciones, Innovar 2009, de los Premios Innovar organizado por el Ministerio de Ciencia y Tecnología e Innovación Productiva. Se seleccionaron alrededor de 400 proyectos sobre un total de 2630 presentados.

Lo importante de este tipo de eventos es la posibilidad de difundir la protección de la propiedad intelectual y su importancia estratégica para las innovaciones.

Los ganadores principales del 2009 se llevaron cada uno $15.000 (aprox u$s 4.000) más $20.000 Multitouch (aprox u$s 5.000) y $10.000 Yogurt (u$s 2.000) y fueron:

1. Victor Suarez Rovere con una presentación en la categoría “Producto Innovador” denominada “Nueva y exclusiva tecnología multitouch”. La Pantalla Multi-Táctil permite operar dispositivos en forma gestual con los elementos gráficos visualizados, utilizando varios dedos a la vez. Adicionalmente tiene la capacidad de discriminar distintos niveles de presión, lo que permite es apreciar correctamente las intenciones del usuario.

2. Graciela Font de Valdez, a cargo del “Yogurt probiótico: un proyecto solidario” de la categoría “Tecnologías para el desarrollo social”. El yogurt fue desarrollado por el CERELA-CONICET - Sistema Provincial de Salud- CERROS TUCUMANOS –Ministerio de Desarrollo Social (Gob. de Tucumán) y permite el mejoramiento del estado nutricional de niños con necesidades básicas insatisfechas. Se implementará en programas sociales. El público al que esta dirigido se vera favorecido por el aumento de las defensas, disminución de infecciones respiratorias e intestinales.

Los restantes ganadores: aquí

Prepared by Guillermo Navarro (Abogado en Argentina), posted by Aurelio

Chile - Google facing court battle on copyright

Patricia Covarrubia October 22, 2009 No comments:

Google is found yet again in court for posting material online. It has been reported (see newspaper in Spanish here) that a claim was brought against Google Chile for distributing, in Video and YouTube, a documentary film titled ‘El diario de Agustin’ (Agustin’s Diary). Google was made aware that the material infringed the owners’ copyright since it was making the documental available without prior authorisation and without payment. Yet, Google desisted to remove the allegedly material from the sites. For that reason, the producers brought legal criminal action against the Company. However, it is early days since the case needs to be studied by the public prosecutor and to be decided on whether such behaviour constitutes a crime/offense or not.

It would be interesting to see, if the public prosecutor allows the action to proceed, the outcome of the dispute under criminal law. Does this particular violation of the IP law count as a crime? Or is it just an ‘offence’ to be resolved by civil law?

Colombia – Legal victory for Coca Cola over trade mark

Aurelio Lopez-Tarruella Martinez October 21, 2009 No comments:

Coca Cola has won a seven-year legal battle maintaining therefore the mark ‘Santa Clara’ for mineral water. The Consejo de Estado acted under the Tribunal de Justicia de la Comunidad Andina (TJCA) guidance and annulled the registered mark ‘Agua Santa’.

The case goes back to 2001 when Juan Carlos Arango registered the trade mark ‘Agua Santa’ for natural water. To this stage, Panamco SA (Coca Cola’s representative Industry for this country) opposed to the registration considering that it was similar to ‘Santa Clara’. The Superintendence dismissed the allegations in view that they were unfounded.

Panamco SA appealed to the Consejo de Estado (Registry Control Organisation) claiming that the marks were similar when assessed. Moreover, it was alleged that there were no added extras to the word ‘Santa’ which will make the mark distinguishable from ‘Santa Clara’. On the contrary, the Superintendence insisted that when the marks were examined there was not phonetic similarity.

The Consejo de Estado consulted the TJCA which held that when assessing composite marks, a global appreciation test must be applied. Such a test, continued the Court, needs to examine the visual, aural or conceptual similarity of the marks in question. To this end, the Consejo de Estado held that the marks were visually and phonetically similar and annulled the disputed mark.

In my opinion, the TJCA was right to apply a global appreciation test and to direct the national institution to an appropriate conclusion. Moreover, there was the need to consider that the goods were identical and thus factors such as trade channels, use, and users were the same. Added to this, there is the fact that the word ‘Agua’ (water) was a generic term. Yet, the Court asked to apply correctly the global appreciation test to the compose mark – leaving aside any salami slice approach.

The decision of the TJCA in Spanish can be accessed here.

Prepared by Patricia Covarrubia (Visiting Lecturer University of Buckingham), posted by Aurelio

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