The Guna people to Nike: Just don't Do It
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| @Isaac Larrier |
Monday, 27 May 2019
Friday, 3 May 2019
The first non-traditional trademark registrations have been granted in Mexico
This post was first published on The IPKat blog:
The Mexican Industrial Property Law was significantly amended last year through two batches of amendments. Read this Kat's reviews on the first batch here and the second one here and here.
The second batch of amendments to the Law entered into force on 10 August 2018 and modified a number of provisions related to trademarks. One such amendment provides that trade dress, scents, sounds, holograms, the combination of colors and certification marks are entitled to trademark protection under Mexican IP Law. Saturday, 27 April 2019
Non-traditional trademarks and other amendments to the Mexican IP Law (Second Part)
This post was first published on The IPKat blog:
This Kat summarizes in the second part of the report on the second batch of amendments to the Mexican IP Law, the highlights of the provisions thoroughly modified in relation to trademarks and administrative procedures. Read the first part here.
Trademarks
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| Let’s dive into the amendments to Mexican IP Law! |
Specific products and services. According to article 113 section IV, the specific products or services to be covered by the mark must be indicated in the application form.
Co-existence agreements and letters of consent. The grounds for refusal of a trademark registration established in sections XVIII, XIX and XX of article 90 (which inter alia refer to signs confusingly similar to another in respect of which a pending application has been filed or a trademark registration in force) are not applicable to confusingly similar trademarks when the “… consent is expressed, in writing, in accordance with the Regulations of … [the] Law”.
Wednesday, 24 April 2019
Non-traditional trademarks and other amendments to the Mexican IP Law (First Part)
This post was first published on The IPKat blog:
The Mexican Industrial Property Law was significantly modified last year through two batches of amendments. The first batch modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Geographical indications (GIs) are also now regulated under the Mexican IP Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI) will be created. Read this Kat’s review on the first batch here.
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| Let’s dive into the amendments to Mexican IP Law! |
The second batch of amendments to the Law entered into force on 10 August 2018 and thoroughly modified some provisions related to trademarks and administrative procedures.
This Kat summarizes in two posts the second batch of amendments.
Tuesday, 9 April 2019
Brasil más cerca de Madrid
La Cámara de Diputados de Brasil aprobó
el pasado 3
de abril el Proyecto de Decreto Legislativo nº 860/2017
sobre el tratado internacional "Protocolo referente al Acuerdo de Madrid
relativo al Registro Internacional
de Marcas", más conocido como Protocolo de Madrid. El texto ahora pasa
al Senado Federal.
El Sistema de Madrid permite proteger
una marca en gran número de países mediante la obtención de un registro
internacional que surte efecto en cada una de las Partes Contratantes que se
hayan designado. Consta actualmente de 104
Miembros y abarca 120 países, que representan más del 80% del comercio
mundial.
La preparación operativa
realizada por el INPI para la
implementación del Protocolo de Madrid abarca la modificación de los sistemas
de TI utilizados en el procesamiento de pedidos de marca, la creación y modificación
de procedimientos operativos, la edición de actos normativos y manuales, una
reestructuración interna y el dimensionamiento y capacitación de los equipos.
Brasil sería el 7º país del continente
americano que se adheriría al Sistema de Madrid.
Tuesday, 5 March 2019
How Venezuelan Crisis affects IP owners
HOW VENEZUELAN CRISIS AFFECTS INTELLECTUAL PROPERTY OWNERS People who believe that cryptocurrencies have no real utility should look carefully at what is happening in Venezuela.
By Alvaro R. Bonilla. Founder BR Latin American IP LLC
You have probably never heard about the Petro, a cryptocurrency launched in October 2018 by the government of Venezuela as a measure to fight against an out of control inflation of more than 1.000.000%.
The "Petro" was launched about a year after the "Rabbit Plan" didn't work out. The "Rabbit Plan" was a national campaign for people to raise rabbits in their houses so they could have access to animal protein, something very scarce in once the richest country of Latin America. The plan did not meet the expectations as most people were not capable of killing what became their furry pet.
Well, now Petro has become the payment method for official fees for foreign IP applicants, but there is more than a catch with this.
How did we get to this point?
First, the Chavist Venezuelan government has never been a fan of Intellectual Property. In fact, they are against any private property and even more if it is an income producer private property.
For years the Venezuelan IP authority, the SAPI, became a black box were applications were filed but nothing happened. Not even a single patent was granted for many years.
One day, following the example of their socialist friends in Ecuador, they discovered that they could make a good amount of money charging incredible high official fees to foreign applicants.
The SAPI opened bank accounts in the US and later in Puerto Rico to receive payments from foreign applicants as it was not possible for them to pay in the local currency.
Later, as the Venezuela huge humanitarian, economic, social, political and international crisis became a regional problem, the US government started to impose sanctions against their regime.
The time when the SAPI was receiving thousands of dollars for a single patent annuity came to an end as their US-based bank accounts got closed.
On February 2nd, 2018, the Venezuelan Patent and Trademark Office (SAPI) advised the public to stop making registration related fee payments in foreign currency until the authorities could clarify the exchange rate to be applied. In fact, their official exchange rate is so distorted that if used applicants will end up paying pennies for their applications.
On August 23, 2018, the SAPI approved a new set of fees that represented a price increase of 142,000%, a move that sparked outrage among the IP community in Venezuela, with several of its leaders calling for the repeal of the measure.
On top of this, the SAPI entered back in low-activity mode, virtually halting the IP registration proceedings.
The situation did not change much until February 1st, 2019, when the SAPI published a new set of fees, which ended the year-long suspension of payments enacted on February 2018.
Not all was good news: according to the SAPI announcement, foreign applicants and right owners would have to make their payments in "Petros", the government-sponsored cryptocurrency.
Legal challenges have been announced against the measure, but their success is far from guaranteed.
The SAPI directive meant a new hurdle for US-based applicants, since on March 19th, 2018 the US government had issued an executive order effectively prohibiting any US person or within the US to provide financing for or otherwise deal in "any digital currency, digital coin, or digital token that was issued by, for, or on behalf of the Government of Venezuela on or after January 9, 2018."
So foreign applicants are now in a delicate situation if they do not use the Petros they might lose their IP rights in Venezuela. But if they use them to pay their fees they are at high risk of getting a sanction from the US.
Even though the "Petros" payment platform is not yet available for the general public, we recommend our clients to seek regulatory advice in their countries in order to avoid potential risks.
As with everything now in Venezuela we are not sure what is going to happen. At least we know for sure that as the "rabbit plan" is no longer working we will not have to pay official fees with rabbits.
By Alvaro R. Bonilla. Founder BR Latin American IP LLC
You have probably never heard about the Petro, a cryptocurrency launched in October 2018 by the government of Venezuela as a measure to fight against an out of control inflation of more than 1.000.000%.
The "Petro" was launched about a year after the "Rabbit Plan" didn't work out. The "Rabbit Plan" was a national campaign for people to raise rabbits in their houses so they could have access to animal protein, something very scarce in once the richest country of Latin America. The plan did not meet the expectations as most people were not capable of killing what became their furry pet.Well, now Petro has become the payment method for official fees for foreign IP applicants, but there is more than a catch with this.
How did we get to this point?
First, the Chavist Venezuelan government has never been a fan of Intellectual Property. In fact, they are against any private property and even more if it is an income producer private property.
For years the Venezuelan IP authority, the SAPI, became a black box were applications were filed but nothing happened. Not even a single patent was granted for many years.
One day, following the example of their socialist friends in Ecuador, they discovered that they could make a good amount of money charging incredible high official fees to foreign applicants.
The SAPI opened bank accounts in the US and later in Puerto Rico to receive payments from foreign applicants as it was not possible for them to pay in the local currency.
Later, as the Venezuela huge humanitarian, economic, social, political and international crisis became a regional problem, the US government started to impose sanctions against their regime.
The time when the SAPI was receiving thousands of dollars for a single patent annuity came to an end as their US-based bank accounts got closed.
On February 2nd, 2018, the Venezuelan Patent and Trademark Office (SAPI) advised the public to stop making registration related fee payments in foreign currency until the authorities could clarify the exchange rate to be applied. In fact, their official exchange rate is so distorted that if used applicants will end up paying pennies for their applications.
On August 23, 2018, the SAPI approved a new set of fees that represented a price increase of 142,000%, a move that sparked outrage among the IP community in Venezuela, with several of its leaders calling for the repeal of the measure.
On top of this, the SAPI entered back in low-activity mode, virtually halting the IP registration proceedings.
The situation did not change much until February 1st, 2019, when the SAPI published a new set of fees, which ended the year-long suspension of payments enacted on February 2018.
Not all was good news: according to the SAPI announcement, foreign applicants and right owners would have to make their payments in "Petros", the government-sponsored cryptocurrency.
Legal challenges have been announced against the measure, but their success is far from guaranteed.
The SAPI directive meant a new hurdle for US-based applicants, since on March 19th, 2018 the US government had issued an executive order effectively prohibiting any US person or within the US to provide financing for or otherwise deal in "any digital currency, digital coin, or digital token that was issued by, for, or on behalf of the Government of Venezuela on or after January 9, 2018."
So foreign applicants are now in a delicate situation if they do not use the Petros they might lose their IP rights in Venezuela. But if they use them to pay their fees they are at high risk of getting a sanction from the US.
Even though the "Petros" payment platform is not yet available for the general public, we recommend our clients to seek regulatory advice in their countries in order to avoid potential risks.
As with everything now in Venezuela we are not sure what is going to happen. At least we know for sure that as the "rabbit plan" is no longer working we will not have to pay official fees with rabbits.
Wednesday, 27 February 2019
Colombia: the Superintendence of Industry and Commerce assumed IBEPI's Presidency
Since 01st January 2019, The Colombian Superintendence of Industry and Commerce (SIC) has assumed Pro Tempore, the Presidency of the Ibero-American Program on Industrial Property and Development Promotion (IBEPI). The programme subscribed to the Ibero-American General Secretariat (SEGIB) brings together the Intellectual Property National Offices of 14 countries of the region, including: Brazil, Argentina, Spain, Mexico, Peru, Portugal, El Salvador, Guatemala, Costa Rica, Ecuador, Uruguay, Paraguay, Dominican Republic and Colombia.
The IBEPI focuses on the promotion of the use of intellectual property as a tool for competition and development in the industrial, commercial and research areas of Ibero-American countries. Its general objective is the promotion of development of Ibero-American societies through the strategic use of intellectual property in support of public policies; it aims to use it as a tool for competitiveness in the commercial, industrial and research sectors of the region.
The program is currently developing five lines of action which will be promoted and articulated through the year. This include: (i) Technological Information, (ii) Modernization of Offices, creation of Human Resources and Training; (iii) Communications, CIBEYME and Advise to Users; (iv) Observance of Rights; and (v) International Cooperation with other Intellectual Property Programmes.
Sources SIC and IBEPI.
Post written by
Lina Marcela Tello Perlaza
lm.tello@hotmail.es
Lawyer (Icesi University, Cali Colombia)
LLM in International Commercial Law (Brunel University, London UK)
The IBEPI focuses on the promotion of the use of intellectual property as a tool for competition and development in the industrial, commercial and research areas of Ibero-American countries. Its general objective is the promotion of development of Ibero-American societies through the strategic use of intellectual property in support of public policies; it aims to use it as a tool for competitiveness in the commercial, industrial and research sectors of the region.The program is currently developing five lines of action which will be promoted and articulated through the year. This include: (i) Technological Information, (ii) Modernization of Offices, creation of Human Resources and Training; (iii) Communications, CIBEYME and Advise to Users; (iv) Observance of Rights; and (v) International Cooperation with other Intellectual Property Programmes.
Sources SIC and IBEPI.
Post written by
Lina Marcela Tello Perlaza
lm.tello@hotmail.es
Lawyer (Icesi University, Cali Colombia)
LLM in International Commercial Law (Brunel University, London UK)
Friday, 22 February 2019
Brazil: Geographical Indication gets e-application running
Yesterday, 21th February, 2019 the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has made available the electronic system for Geographical Indications (GIs). This was approved by Resolution No. 233 of January 18, 2019.
The system aims to speed the process and allows the applicant to file the petition from any place and any day of the week. Through the system, you could get assistance on how to complete the forms.
The system is available by using the same login and password registered in the (Union Collection Guide GRU) if you have one. If not, then you need to obtain a GRU number which is payable – you need to do so before starting the application.
A user’s guide can be found here.
The Industrial Property Law no. 9279/96, sets up the system for GI protection in Brazil. The law distinguishes between 2 types of GIs: Indication of Source (Indicação de Procedência) and Appellation of Origin (Denominação de Origem).
The INPI has registered 51 Indicação de Procedência (all nationals) and 20 DOs (9 of them are nationals).
They are:
Alta Mogiana
Altos Montes
Cachoeiro de Itapemirim
Canastra
Cariri Paraibano
Carlópolis
Colônia Witmarsum
Costa Negra
Cruzeiro do Sul
Divina Pastora
Farroupilha
Franca
Goiabeiras
Linhares
Litoral Norte Gaúcho
Manguezais de Alagoas
Maracaju
Mara Rosa
Marialva
Maués
Microrregião de Abaíra
Monte Belo
Mossoró
Norte Pioneiro do Paraná
Oeste do Paraná
Ortigueira
Pampa Gaúcho da Campanha Meridional
Pantanal
Paraíba
Paraty
Pedro II
Pelotas
Piauí
Pinto Bandeira
Porto Digital
Região de Corupá
Região da Serra da Mantiqueira
Região das Lagoas Mundaú-Manguaba
Região do Pinhal
Região de Própolis Verde
Região de Salinas
Região do Cerrado Mineiro (DO)
Região do Cerrado Mineiro(IP)
Região do Jalapão
Região Pedra Carijó
Região Pedra Cinza
Região Pedra Madeira
Região de São Bento de Urânia
Rio Negro
Sabará
São João del Rei
São Matheus
São Tiago
Serro
Sul da Bahia
Vales da Uva Goethe
Vale do Submédio São Francisco
Vale dos Sinos
Vale dos Vinhedos(DO)
Vale dos Vinhedos(IP)
Venda Nova do Imigrante
Source, the INPI.
The system aims to speed the process and allows the applicant to file the petition from any place and any day of the week. Through the system, you could get assistance on how to complete the forms.
The system is available by using the same login and password registered in the (Union Collection Guide GRU) if you have one. If not, then you need to obtain a GRU number which is payable – you need to do so before starting the application.
A user’s guide can be found here.
The Industrial Property Law no. 9279/96, sets up the system for GI protection in Brazil. The law distinguishes between 2 types of GIs: Indication of Source (Indicação de Procedência) and Appellation of Origin (Denominação de Origem).The INPI has registered 51 Indicação de Procedência (all nationals) and 20 DOs (9 of them are nationals).
They are:
Alta Mogiana
Altos Montes
Cachoeiro de Itapemirim
Canastra
Cariri Paraibano
Carlópolis
Colônia Witmarsum
Costa Negra
Cruzeiro do Sul
Divina Pastora
Farroupilha
Franca
Goiabeiras
Linhares
Litoral Norte Gaúcho
Manguezais de Alagoas
Maracaju
Mara Rosa
Marialva
Maués
Microrregião de Abaíra
Monte Belo
Mossoró
Norte Pioneiro do Paraná
Oeste do Paraná
Ortigueira
Pampa Gaúcho da Campanha Meridional
Pantanal
Paraíba
Paraty
Pedro II
Pelotas
Piauí
Pinto Bandeira
Porto Digital
Região de Corupá
Região da Serra da Mantiqueira
Região das Lagoas Mundaú-Manguaba
Região do Pinhal
Região de Própolis Verde
Região de Salinas
Região do Cerrado Mineiro (DO)
Região do Cerrado Mineiro(IP)
Região do Jalapão
Região Pedra Carijó
Região Pedra Cinza
Região Pedra Madeira
Região de São Bento de Urânia
Rio Negro
Sabará
São João del Rei
São Matheus
São Tiago
Serro
Sul da Bahia
Vales da Uva Goethe
Vale do Submédio São Francisco
Vale dos Sinos
Vale dos Vinhedos(DO)
Vale dos Vinhedos(IP)
Venda Nova do Imigrante
Source, the INPI.
Monday, 28 January 2019
The battle of Pisco
Peru has scored once more in the international recognition of Pisco, their national drink.
The Registry of Industrial Property of Guatemala recognized Pisco as a Denomination of Origin (DO) produced in Peru. By Guatemala recognising Pisco as a drink from Peru, it prevents the registration of the name and any marketing of Pisco within the Guatemalan market if it has not complied with the Peruvian national regulation.
Back in 2017, 'Pisco' was declared Cultural Heritage of the Peruvian Nation (Law 30639). In the same year, the DO Pisco was also granted (by The Peruvian Institute for the Defense of Competition and Protection of Intellectual Property INDECOPI) the character of ‘reputable mark’ due to its well-known status.
It is relevant to mention that Pisco is original to Peru as it is original to Chile – therefore there is a long battle between these two countries over the name ‘Pisco’. Pisco has obtained DOs in both jurisdiction as an original and native drink. Some countries would recognise Pisco as coming from Chile and others, from Peru, but not from both countries at the same time, except the EU. This is so because the EU registered Peruvian Pisco as a DO but acknowledged a previous trade agreement (2002) between Chile and the EU in which Pisco was recognized as a DO from Chile. 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.
Malasia recognizes Pisco as a DO from Peru as well as, Israel, Nicaragua, Algeria, Cuba, Georgia, Haiti, Bolivia, Colombia, Ecuador, El Salvador, Guatemala, Panama, Dominica Republic, Venezuela, Nicaragua and India (since November 2018). However, Costa Rica, United States, China, Malaysia, Singapore, Thailand and Vietnam recognize Pisco as a DO from Chile.
More information about Pisco here.
The Registry of Industrial Property of Guatemala recognized Pisco as a Denomination of Origin (DO) produced in Peru. By Guatemala recognising Pisco as a drink from Peru, it prevents the registration of the name and any marketing of Pisco within the Guatemalan market if it has not complied with the Peruvian national regulation.
Back in 2017, 'Pisco' was declared Cultural Heritage of the Peruvian Nation (Law 30639). In the same year, the DO Pisco was also granted (by The Peruvian Institute for the Defense of Competition and Protection of Intellectual Property INDECOPI) the character of ‘reputable mark’ due to its well-known status.It is relevant to mention that Pisco is original to Peru as it is original to Chile – therefore there is a long battle between these two countries over the name ‘Pisco’. Pisco has obtained DOs in both jurisdiction as an original and native drink. Some countries would recognise Pisco as coming from Chile and others, from Peru, but not from both countries at the same time, except the EU. This is so because the EU registered Peruvian Pisco as a DO but acknowledged a previous trade agreement (2002) between Chile and the EU in which Pisco was recognized as a DO from Chile. 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.
Malasia recognizes Pisco as a DO from Peru as well as, Israel, Nicaragua, Algeria, Cuba, Georgia, Haiti, Bolivia, Colombia, Ecuador, El Salvador, Guatemala, Panama, Dominica Republic, Venezuela, Nicaragua and India (since November 2018). However, Costa Rica, United States, China, Malaysia, Singapore, Thailand and Vietnam recognize Pisco as a DO from Chile.
More information about Pisco here.
Monday, 3 December 2018
Handicraft: Brazilian GIs
From Brazil, we would like to report the application for a Geographical Indication (GI) for a handicraft.
A GI is set to differentiate products due to their geographical origin; it could be environmental conditions i.e. natural conditions and or cultural conditions, which are present on a region that gives the product certain unique qualities.
In Brazil, The Normative Instruction (IN) No 25/2013 Article 2 defines as a GI an ‘Indicação de Procedência’ (Indication of Source) and a ‘Denominação de Origem’ (Denomination of Origin (DO)). DO is more valued because it depends on proof that the product has special characteristics due to its geographical environment, including natural AND human factors.
The application was for the ceramics and decoration of Porto Ferreira, in the form of Indication of Source. Porto Ferreira is located in the central region of the state of São Paulo. It is claimed that the ceramics and its decoration follow a century-old tradition. The handicraft pieces includes plates, bowls, cups, porcelain and others. The production of the ceramics involves around 80 local companies.
Some outside actors were present in the application, and this is common in developing countries. The rational is that they may assist in the GI recognition processes. In this particular case, the city's mayor, the president of INPI, the Secretary of Economic Development and Tourism, the head of the Innovation division, and the president of the local producers' union attended. Moreover, not only before the application or during the application the team is helpful, but also it is recognised that once a GI is documented, it can boost an entire economic system associated with a specific local resource. This means that the producers themselves benefit as well as the entire region e.g. tourism.
A GI is set to differentiate products due to their geographical origin; it could be environmental conditions i.e. natural conditions and or cultural conditions, which are present on a region that gives the product certain unique qualities.
In Brazil, The Normative Instruction (IN) No 25/2013 Article 2 defines as a GI an ‘Indicação de Procedência’ (Indication of Source) and a ‘Denominação de Origem’ (Denomination of Origin (DO)). DO is more valued because it depends on proof that the product has special characteristics due to its geographical environment, including natural AND human factors.
The application was for the ceramics and decoration of Porto Ferreira, in the form of Indication of Source. Porto Ferreira is located in the central region of the state of São Paulo. It is claimed that the ceramics and its decoration follow a century-old tradition. The handicraft pieces includes plates, bowls, cups, porcelain and others. The production of the ceramics involves around 80 local companies.
 |
| Photo: INPI |
Some outside actors were present in the application, and this is common in developing countries. The rational is that they may assist in the GI recognition processes. In this particular case, the city's mayor, the president of INPI, the Secretary of Economic Development and Tourism, the head of the Innovation division, and the president of the local producers' union attended. Moreover, not only before the application or during the application the team is helpful, but also it is recognised that once a GI is documented, it can boost an entire economic system associated with a specific local resource. This means that the producers themselves benefit as well as the entire region e.g. tourism.
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