IPTango

Monday, 13 July 2015

China and the Latin American Market

Patricia Covarrubia July 13, 2015 No comments:

Many in the IP-addicted community, and several others looking East most of the time have been and are used to see China and IP as a difficult marriage in a game of endless catch-up: domestic regulations striving to meet international standards, drafting and redrafting laws and regulations, complying with Western standards and accumulating enormous backlogs, breaking IP filing records, leading in counterfeiting and piracy world records, showing impressive recovery and determination, and occasionally falling behind again.

Since the “reform and opening up” policy initiated by the visionary Deng Xiaoping of 1978, the patent and the trademark laws alone went through a total eight amendments while the Central Government started including IP in every agenda of nearly every quinquennial plan until when in 2008 the most ambitious, aggressive and long reaching IP plan was enacted and pointed at reaching unprecedented goals by 2020. Targets were and remain enforcement, standards, domestic innovation, government procurement and more.

The same people, whom, as me, have acknowledged the heroic and speedily race of the dragon in building muscle, recently discovered a more subtle tone to the roar: the role of China in international, multi- and bilateral negotiations on IPRs. The undisputed role as factory of the World for years, as benchmark, as dealmaker- and breaker, has now become a rather vocal presence also in negotiations on IP protection and its enforcement, and in trade agreements.

China’s pragmatic approach to the international chessboard of trade has made another move as it became clear how the country would steer into the direction of securing resources and economic alliances, through regional trade and formalizing them in agreements (RTAs). China started the process in 2003 when it signed the CEPA (Closer Economic Partnership Agreement) with Hong Kong and carried on in negotiating more with Iceland, Pakistan, India, Macau, New Zealand, ASEAN, Australia and Chile. The main feature of these agreements indicates how China has started to drift away from being just an FTA-standard setting contributor with its vast weight, and rather becoming a pioneer for trade integration.

One would suppose that the recent China-Switzerland FTA could become a model for how much importance China poses to questions of IP protection, enhancement and opportunity in trade agreements. The reality seems to be that China remains a very selective and picky player and adopts a criteria based on the strengths of the contracting party. Agreements with countries such as Pakistan, Singapore, Macau, Iceland do not actually spell out well defined IP provisions or programs or include none at all. In RTAs with three countries of the Americas, such as Chile, Costa Rica and Peru, the documentation unveils only a mild approach on IP interaction with China, relegating IP matters to just a few articles and preferring more broad assumptions such as social and economic welfare enhancement and so on. With Chile in particular, the parties have set out articles regarding Geographical Indications (Art. 10); encouraged research in science and technology (Art. 106.1) and, just shortly after provisions on Cultural Cooperation, an article denoting a generic tone of cooperation between the countries (Art. 111) which makes it ever more evident that for these countries it is not yet time to expect a far reaching an agreement as the one between China and Switzerland which regulates IP, to a large extent covering copyrights, trademarks, patents, and plant varieties.

Probably the most relevant provision and its Annex, for IP related issues in the agreement with Chile is to be found under Geographical Indications. The products at stake are less numerous than what was hoped for, where the GIs covered are only a wine from Shaoxing the Anxi Tieguan Yin tea, and pisco from Chile.

China imports about 23% of all Chilean yearly trade and is the second largest exporter to Chile, after the U.S., counting for 18% of overall Chilean imports by country. Given the strong impetus of Chilean economy and foreign direct investment into China, it is likely that not too long down the road from now Chile may play even a more crucial role for China in South America, hence gaining more credit for farther reaching agreements in the area of IP with China.

Post written by Ricardo Benussi (Business Advisory Associate --Italian Desk -- Dezan Shira & Associates)

Chile first from Latin America to sign up for Aufiovisual Treaty

Jeremy July 09, 2015 No comments:

Chile has become the first Latin American nation to commit itself to the Beijing Treaty on Audiovisual Performances, as IP Tango learns from today's WIPO media release:

Beijing Notification No. 7
Beijing Treaty on Audiovisual Performances

Ratification by the Republic of Chile

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Chile, on June 22, 2015, of its instrument of ratification of the Beijing Treaty on Audiovisual Performances, adopted at Beijing on June 24, 2012.

The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 26 of the said Treaty.

The full list of countries signed up for Beijing can be accessed here. The tally now stands at 8. By Article 26 the Treaty comes into force three months after 30 "eligible parties" have signed up for it.

Innovación, cuenta pendiente de Latinoamérica

Gilberto Macias (@gmaciasb) July 01, 2015 No comments:

A pesar de que las economías latinoamericanas han gozado de buena salud durante la última década, con crecimientos económicos superiores a la media mundial, Latinoamérica tiene un una importante cuenta pendiente. La falta absoluta de innovación

Si bien medir la innovación no es una tarea del todo sencilla, existe un indicador que es muy revelador para conocer el nivel de innovación en un país. El número de patentes registradas por cada país.

Resulta lógico creer que cuando un inventor hace un descubrimiento que tiene un importante potencial comercial, por lo general lo registra, además de en su país, en la Oficina de Patentes y Marcas de Estados Unidos (USPTO), o a nivel internacional ante la Organización Mundial de Propiedad Intelectual de las Naciones Unidas (OMPI).

Las últimas estadísticas de ambos registros de patentes muestran que los países de América Latina, aunque están aumentando su número de patentes internacionales, no lo están haciendo al ritmo que debieran para cerrar la brecha que los separa de otras partes del mundo.

Según nuevos datos de la USPTO, que clasifica las patentes por el país de origen de los inventores, Estados Unidos registró 159,000 patentes el año pasado, Japón 56,000, Corea del Sur 18,000, Alemania 17,000, China (incluyendo Hong Kong) alrededor de 8,700, Gran Bretaña y Francia 7,100 cada uno, Israel 3,600, India 3,000, Singapur 1,000 y España 900.

Los 32 países de América Latina y el Caribe en conjunto registraron alrededor de 836 patentes.

Dato que resulta muy llamativo dado que América Latina y el Caribe, con una población de casi 600 millones y dos países — Brasil y México — que respectivamente son la séptima y decimoquinta economías del mundo, registraron menos del 5 por ciento de las patentes registradas por Corea del Sur, y apenas el 23 por ciento de las registradas por Israel. Las estadísticas de la OMPI reflejan una disparidad similar.

La mayor parte de las patentes de América Latina fueron registradas por Brasil (362) y México (222). Le siguen Argentina (81), Chile (64), Colombia (25), Costa Rica (32), Cuba (19), Venezuela (14), Trinidad y Tobago (8), Perú (5), Ecuador (3) y Bolivia (1).

Algunos países latinoamericanos como Brasil, México y Chile, han más que duplicado sus patentes internacionales en los últimos cinco años, pero su crecimiento queda muy lejos del de otros países con economías emergentes como la India, que ha logrado triplicar sus patentes internacionales durante el mismo período.

Ojalá que en los próximos años algo cambie en la región y los indicadores revelen un crecimiento en el número de patentes internacionales. La economía crece si la Innovación crece.

Fuente: Artículo de Andrés Oppenheimer (@oppenheimera) publicado aquí y aquí.

The New European Patent by Alfredo Ilardi

Patricia Covarrubia June 24, 2015 No comments:

"On 17 December 2012, following a complex negotiation which lasted 12 years, the
European Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union. This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement."

The Author
Alfredo Ilardi is former Head of the Collection of Laws and Treaties of the World Intellectual Property Organization.

Published May 2015

164pp Hbk 9781849468336
RSP: £65 / US$130 / CDN$130
Discount Price: £52 / US$104 / CDN$104
Order Online
UK, EU, ROW: If you would like to place an order you can do so through the Hart Publishing website (link below). To receive the discount please quote the reference ‘EPLAWBLOG’ in the voucher code field and click ‘apply’.
http://www.hartpub.co.uk/BookDetails.aspx?ISBN=9781849468336
US: If you would like to place an order you can do so through the Hart Publishing website (link below). To receive the discount please quote the reference ‘EPLAWBLOG’ in the special instructions field on the credit card screen.
http://www.hartpublishingusa.com/books/details.asp?ISBN=9781849468336
Hart Publishing Ltd, 16C Worcester Place, Oxford, OX1 2JW
Telephone Number: 01865 517 530
Fax Number: 01865 510 710
Website: http://www.hartpub.co.uk

Why is this book relevant to the iptango followers?
While the blog is happy to publish any IP material of good quality, one needs to be careful. At the end of the date the blog is for the Latin American market and if one is to endorse a book, it needs to do so with property as to establish a link why the book should be in the Latin American reading list - especially since the book is about the new European Patent system.

Here is my summary: matter that covers the book can be reflected in some discussion heard on the South and Central American continents. The blog has sometimes referred to main trade blocs that do exist in Latin America such as the Andean Community (CAN) and Mercosur. CAN for instance has ‘Decision No. 486 Establishing the Common Industrial Property Regime’ and has a Community trade mark system – similar to the Community trade mark (CTM). The patent system is also regulated and harmonised through Decision 486. In this line when reading the book it was easy to reflect on how the new European Patent can be followed (or not) by the Latin American region.

The book contents and material helpful to have it in your intellect [can I add this to my skills in linkedln?] are: ‘global protection of IPRs. The project for the revision of the Paris Convention for the protection of industrial property and the TRIPS agreement.’ The section gives an overview how certain legislations marked the beginning of the changes to come. Going deeper into the heart of the book and putting aside the negotiation of the unitary patent system one can indulge in the analysis of the legal instrument. In this chapter one can make some comparisons with Decision 486 which for example address priority claims - granting same priority rights as those granted by the Paris Convention. Moreover, a chapter is dedicated to the European Unified Patent Court similar to the one established by CAN [CAN created a uniform court procedure that allows simultaneous actions to be brought for infringements to patents as well as other IPRs]. Indeed one can compare and contrast the expression of ideas found in the book with some cases in Latin America. In my case, I am more aware of CAN but perhaps some of you can also place some similarities with other trade blocs IP system. At the end what is sought with the Unitary Patent is the same aim i.e. ‘regional cooperation on patent harmonization’ and at this stage, going further that just an adoption of a common patent law, by having an agreement on the interpretation and practical application of the law.

Thanks Emma Swinden (Marketing Manager @ Hart Publishing) for the book and for the support and trust given to this blog.

Peruvian well-known trade marks

Patricia Covarrubia June 23, 2015 No comments:

The Peruvian Institute for the Defence of Competition and Protection of Intellectual Property (Indecopi), recently announced the recognition of various national trade marks as well-known trade marks.

These well-known trade marks have achieved such status after a rigorous evaluation made by the Directorate of Distinctive Signs, and based on Article 224 of Decision 486 of the Andean Community.

The criteria followed by the Andean legislation is as followed: the degree of knowledge about the the mark by the population of the member state; the duration, extent and geographical scope of its use and promotion inside or outside any member country; advertising, presentations at fairs, exhibitions or other events; the value of the investment made to promote the brand.

INDECOPI notes that “recognition of notoriety of a brand is an exceptional situation that very few brands reach.” It adds that such recognition brings “stronger protection not only against risks of confusion but also against the risk of misappropriation of the reputation of the brand and dilution of its distinctive force.”

Attention should be brought to the fact that the Andean legislation regulates the possibility of derogating from the principle of territoriality, protecting well-known marks beyond the country in which they are registered.

Recently recognized brands as notorious in Peru include: Cantol, Inca Kola and Asu Mare. Foreign brands include Coca Cola, McDonalds, Google, among others.

A final point which is important to raise is that a well-known mark may lose this status over time since notoriety is “conditional upon the owner to develop efforts to keep the degree of brand awareness that allowed him to reach this special recognition.”

Source INDECOPI.

IP Pharmaceutical and Biotechnology Issues in Brazil: a lecture in London

Jeremy June 18, 2015 No comments:

"No Boring Day: IP Pharmaceutical and Biotechnology Issues in Brazil" is the title of a public lecture by Gustavo de Freitas Morais which the Centre for Commercial Law Studies (CCLS), Queen Mary University of London, is hosting in collaboration with the Department of International Development, LSE. This public lecture takes place on 3 July 2015 at 5:00 pm. The venue is the CCLS itself, 67-69 Lincoln's Inn Fields, London WC2A 3JB. According to the organisers:

"The Brazilian intellectual property scene is constantly changing and the source of conflict, particularly with in the life sciences. These conflicts are the result of, among other things, conflicting perspectives regarding the appropriate level of IP rights: some stakeholders regard weaker IP rights as beneficial for local innovation and economic and social development, while some see stronger IP rights as essential for achieving these outcomes.

These conflicts are manifest in the case of pharmaceuticals, where Brazil has a system whereby the health regulatory agency (ANVISA) also examines patent applications, and in the case of biodiversity, where the legal framework regulating access to and use of genetic resources for biotechnology research is being revised".

Gustavo, a partner of Dannemann Siemsen since 1999, is both an engineer and an attorney at law licensed in Brazil. He has an academic profile too, as a Law Lecturer for the Lato Sensu Post-Graduation Course of Law at the Escola de Direito de São Paulo (GV Law) - Fundação Getúlio Vargas (FGV) and visiting professor at the Escola Superior de Advocacia (ESA) / OAB-SP on Intellectual Property. Gustavo is experienced in Litigation, Licensing, Regulatory and IP Prosecution in various areas but with an emphasis in the Life Sciences and Telecommunications areas.

Attendance is free but prior registration is required if you book by clicking for the registration form here.

Make Way for Modernization in British Virgin Islands – Complete Overhaul of Current Trademarks Regime as of September 1, 2015

Patricia Covarrubia June 04, 2015 No comments:

On September 1, 2015, the British Virgin Islands’ new Trade Marks Act, 2013 and Trade Marks Rules, 2015 will go into effect, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in BVI on the basis of an existing UK registration.

I wish I was here

For many years, this has been a relative fast track to registration for UK mark owners. For trademark owners without an existing UK registration, the current regime requires application within the local system. At present, the local system allows new filings for goods only, and all goods must be classified according to the antiquated British classification system.

Long outdated, this classification system does not afford adequate protection for many mark owners. Under the new regime, all applications will be made within the local filing system, and finally it will be possible to register both goods and services according the International Classification system. New fees have not yet been set but should be determined before the September 1st implementation of the new trademark laws.

Post written by Katherine Van Deusen Hely (Caribbean IP).

Chile registered its own prosciutto #yummy

Patricia Covarrubia June 04, 2015 No comments:

Back in 2012, the Chilean President, Sebastián Piñera, together with the Minister of Economy and the National Director of the National Institute of Industrial Property (INAPI) launched the program ‘sello de origen’ (Origin Mark or ‘Label of Origin’). The program aims to recognize and protect via industrial property Chilean products. The origin mark recognizes a products’ traditions, reputation or geographical locations.

More specifically, the program aims to promote the use and protection of Chilean products through the registration of geographical indications (GI), denominations of origin (DO), collective marks and certification marks and thus, promoting entrepreneurship and productive development of communities.

On May 2015, three years after the launch of the program and on the occasion of the inauguration of the stand "Label of Origin" in the food fair CHILE A LA CARTA, INAPI granted yet another DO (the fifth for a Chilean product) and a ‘Label of Origin’ (the fourteen) to the ham ‘Prosciutto de Capitán Pastene’. The certificate was handed in by INAPI’s director and received by representatives of the Regional Government of Araucanía, who together with the producers of the ham started the DO process (January 2014).

In Chile a DO identifies a “product as originating in the country, region or locality of the national territory, where the quality, reputation or other characteristic thereof is essentially attributable to its geographical origin, taking into consideration natural and human factors that affect the product’s characterization.” The definition is indeed a resemblance of Art 2 Lisbon Agreement.

The application was based on “the quality and uniqueness of this ham, which is historically associated with their geographical origin in the town Capitan Pastene, and using processing techniques inherited from the Italian immigrants [then it makes sense why they call it ‘prosciutto’ rather than ‘jamon’], supplemented by the local culture and the particular climatic conditions due to the geographical location where it occurs. It is a product made by hand, incorporating the smoked wood as part of its process, the maturation takes place in natural conditions and in the presence of cold air from the Nahuelbuta Mountains allowing long periods without loss of moisture, using only salt and no added preservatives, which is made exclusively from the rear legs of the pork.”

Finally the note indicates that this recognition (as many others) is expected to “contribute to the rescue of the local culture, increase the demand for these products originating and encourage the establishment of new tourist routes in the region.”

Other products that are waiting to be granted a recognition are: ‘Sal de Cahuil’ – a salt (DO) ‘Dulces de La Ligua’ – sweet (GI) and ‘Aceitunas de Azapa’ – olives (GI).

Use on related goods may save registered mark from partial cancellation, rules Colombian court

Jeremy June 02, 2015 No comments:

In January of this year the Colombian Council of State, reversing a decision of the Superintendencia de Industria y Comercio, held that the use of a trade mark in connection with related goods is a valid ground on which to resist an application to cancel, in whole or in part, that mark's registration.

In this case Museo El Turron sought partial cancellation of the registration of El Lobos's trade mark EL LOBOS, which was initially registered for all products in Class 30, based on non-use. The application was upheld and the registration confined to sugar, flavour, yeast and baking-powder -- for which use of the mark was proved. El Lobos sought to have this decision annulled on the basis that the goods excluded from the trade mark registration were competitively connected to those goods for which use was proven.

Following a request to the Andean Community Tribunal of Justice for a preliminary ruling on the interpretation of the applicable law, the Council of State held that, where the related goods for which use is proved have the same purpose as the excluded goods and are foodstuffs of plant origin prepared for consumption or conservation and marketed in the same channels, partial cancellation should not be ordered.

Source: "COLOMBIA: Use of Related Products Prevents Cancellation" by Jorge Chávarro (Cavelier Abogados, Bogota, Colombia), verified by Danilo Romero (Romero Raad Abogados, Bogota, Colombia), INTA Bulletin, 1 June, vol.70l no.10

Brazil: The absence of the Commissioner and Public Notes

Patricia Covarrubia June 01, 2015 No comments:

Such Public Note points out that since the former Commissioner, Mr. Brandelli, has left the office in April 10 no replacement has been appointed. Before closing the Public Note by claiming to the federal government for a quick appointment, the note suggests the current officials of INPI should be considered as candidates for occupying the position currently vacant.

Within the Note, the Brazilian Bar argues that a strong dynamic system of protection to the industrial property is necessary for the social, economic and technological development of the country. Also, it is noted that since 2012 the current president Dilma has promised to change and modernize INPI. On developing that point, it is recalled that Art. 239 of the Brazilian IP Law foresees financial autonomy for the Institute, which has never been implemented. Moreover, it is noticeable the recent constitutional amendments that raised innovation as a constitutional goal (as per the new writing of the Art. 218 of the Brazilian Constitution).

In May 13, a Public Note was issued by the Brazilian Bar Association against the vacancy of the position of commissioner of the Brazilian Instituto Nacional da Propriedad Industrial (INPI). This was initiative of the Commission for Industrial Property and Anti-Piracy Matters of its Rio de Janeiro section.

The Public Note claims that the vacancy of the position prevents INPI to adopt the urgent and necessary steps for solving several issues such as the backlog. And for such a purpose, it is essential that the new Commissioner must be a person well skilled in the area.

While it might be true that the appointment of a new Commissioner will be important for the future of the INPI, they have actually been quite busy in recent times. This week, they have just launched the ‘beta test’ on its new website. Since late April, INPI launched the electronic filing system for industrial designs.

The hearsay is that the Brazilian government is having difficulties in finding someone suitable that is willing to accept this position, which is not seen as an easy one. Let's hope, however, that a person that can lead the Brazilian IP practice to a new level is found.

Post written by Roberto Carapeto (Licks Attorneys' Tokyo Office).