Monday, 12 October 2015

The Caribbean: ready to separate trade mark registration

Thanks to Katherine Van Deusen Hely who  brings us a report from the Caribbean
Since the Netherlands Antilles dissolved in 2010, all trademark filings for St. Maarten have been handled by the Bureau for Intellectual Property Curacao. Over the last several years, St. Maarten has been preparing to handle their own trademark and other IP filings. As of October 1, 2015, Curacao is no longer handling St. Maarten trademark matters – all filings now go directly through the Bureau for Intellectual Property St. Maarten. The fees have increased pursuant to this change. Registration fees have gone up by approximately 33% for an application filed in up to three classes, and additional class fees (after the third class) have doubled. Besides the change in fees, most everything else remains the same. Trademarks in St. Maarten are protected on a first-to-file basis, and the term of registration is still 10 years.

Katherine Van Deusen Hely can be contacted at
Caribbean IP
Katherine Van Deusen Hely, P.L.L.C.
224 Datura Street, Suite 513
West Palm Beach, FL 33401
T: (561) 283-1800

Friday, 9 October 2015

Extension of GIs for non-agricultural products in the EU: is it important to Latin America?

On September 22, 2015 the European Parliament reported ‘on the possible extension of geographical indication protection of the European Union to non-agricultural products’. The Parliament urges the European Commission to draft legislation on this matter. As noted in a previous post, in a recent symposium on the same topic many participants had one or two things to say about this. However, this post is about why this news is important to the Latin America region (noted in the report under the sub-title 'Relations with third countries').

In the era of globalization one cannot escape several trade agreements between the EU and some Latin America countries. Many of these agreements contain specific clauses for Geographical Indications (GIs) products. However, from the Latin America side they would have negotiated agricultural products and wines and spirits, leaving non-agricultural products aside. This happens for example in the case of Peru and Colombia when negotiating the FTA with the EU. At the time (2010) Peru and Colombia did not have many GIs to negotiate (comparing with the EU that did have over 1200). For instance Colombia did have 3 GIs: cafe de Colombia (already registered in the EU), 'Cholupa del Huila’ (fruit) and ‘Artesanía de Guacamayas’ (handycraft). Peru did have 4: ‘Pisco’(spirit) , ‘maíz gigante blanco del Cuzco’ (corn), ‘Cerámica de Chulucanas’ (clay craft) y ‘Pallar de Ica’ (bean). Therefore, ‘Artesanía de Guacamayas’ and ‘Cerámica de Chulucanas’ were not part of the negotiation since non-agricultural products were (and still are) not recognised as GIs in the EU.

Today, in the Latin American market the registration of non-agricultural products has increased. For example, Chulucanas has been recognised as a GI in other countries, such as Chile and Colombia.
Since 2010, Colombia has recognised more denominations of origin (DO) for handycraft, 9 to be exact (Cerámica Artesanal de Ráquira Colombia; Cerámica del Carmen de Viboral’; Mopa Mopa Barniz de Pasto; Tejeduría Wayuu; Tejeduría San Jacinto; Sombrero Aguadeño; Sombreros de Sandoná; Tejeduría Zenú; Sombrero Suaza). In Colombia there are 10 out 22 registered GIs that belong to non-agricultural products.

Brazil has quite a range of variety for non-agricultural products, from stones to leather; and from services to pottery indeed it has registered 14 out of 45 GIs for non-agricultural products. According to the EU Commission, the ‘EU is Brazil's first trading partner, accounting for 19.5% of its total trade’ and there is ongoing negotiations for a free trade agreement with MERCOSUR (Brazil is part of this bloc).

Therefore, for products that are looking for marketing their goods (agricultural and anon-agricultural) in other countries such as the EU, it would be important to register their GI. Is it worthy? Does it really work? In 2012 there was a case brought by the Colombian Coffee Growers Federation against the registration of the name ‘Café Nariño’ as a trade mark (in Spain). The case related on the enforcement of a Colombian GI in Spain: the GI in question was "CAFÉ DE COLOMBIA", which was enough to prevent registration of a local applicant's CAFÉ DE NARIÑO trade mark, given that Nariño is a coffee-growing region included within the protected geographical indication (PGI) "CAFÉ DE COLOMBIA".

Monday, 5 October 2015

Latin America’s Most Valuable Brands 2015

For the first time, Brazilian beer brand Skol  is the most valuable brand in Latin America, according to the fourth annual BrandZTop 50 Most Valuable Latin American Brands ranking announced by Millward Brown.

This performance reflects the consistency in brand positioning of Skol, targeting its products to younger audiences more willing to adopt a brand for a lifetime and supporting its strategy with sponsorships of music festivals, which has strengthened the brand relationship with this audience.

Once again Beer, Retail, Communication Providers and Banks categories took the top 5 positions: Skol (Beer – Brazil), Corona  (Beer – Mexico), Telcel  (Communication Providers – Mexico), Bradesco   (Banks – Brazil) and Falabella  (Retail – Chile).

The beer category dominated the ranking again in 2015, conquering five of the top ten positions – four of the brands belonging to AB InBev: Skol, Corona, Brahma and Modelo.

The ranking reveals that Latin America’s leading brands have continued to defy tough economic conditions, growing the Top 50’s cumulative value to $132bn, an increase of 2% in US dollar terms.

The ranking is once again dominated by Mexican brands with their contribution by value rising from 33% last year to 37% in 2015, led by the strong performance of Corona, Telcel and Televisa. Brazilian brands took 24% of the listing value, with Beer, Food and Personal Care brands contributing 47% of that total. Chile lost share down to 15% from 20% in 2014, Colombia declined one point year on year to 15%, while Peru and Argentina both gained a single point to contribute 5% and 2% of the total value respectively.

For more information please consult the following documents:

Sunday, 4 October 2015

Brazilian Politicians will vote for new Pharma Laws

Last month IP Tango was delighted to host a guest post from our Brazilian friend Magda Voltolini, on the topic of sham litigation.  Now we are pleased to welcome her back with her perspective on the chances of Brazil applying the flexibilities of the Doha Declaration. This is what she writes:
Are Brazilian politicians applying the flexibilities on the basis of the Doha Declaration?  The Brazilian National Congress is apparently ready to reform Law N. 9279 of 14 May 1996 (Law 9279/96) regulating rights and obligations relating to industrial property.  In fact, the Committee on Constitution, Justice and Citizenship (CCJC) will soon vote Bill N. 139 of 2 February 1999 (Bill139/99) and its annexes, which aim at modifying the provisions concerning rights awarded by the patent and conditions that grant compulsory licenses including those relating to pharmaceutical products and processes.

On 17 September Deputy Andre Moura, Rapporteur of the Bill 139/99 voted to amend Law 9279/96 repealing the sole paragraph of art. 40, altering arts. 10, 13, 14, 31, 43, 68, 195 and 229-C and adding arts. 31-A and 43-A to art. 4 of the Law 9279/96. However, the Brazilian Fine Chemicals, Biotechnology and Specialty Industries Association (Abifina) and the Pharmaceutical Research Industry Association (Interfarma) support opposite views. If the proposed Bill passes, Abifina ideas will prevail and the Brazilian generic industry will certainly benefit from the new law.

For instance, the proposed Bill is also expanding the grounds of Government non-commercial use of patents and patent applications on the basis of public interest. In its article 43.A(6), it forbids the Judiciary Branch to decide on matters concerning whether the objectives of public interest were established to justify the Government authorization of the non-commercial use of the object of a pharmaceutical patent or patent application. However, as a fundamental right and guarantee,  the Brazilian Constitution stipulates that  “the law shall not exclude any injury or threat to a right from the consideration of the Judicial Power”. (art. 5, XXXV)

The table below illustrates a snapshot of the changes proposed by Bill 139/99 amending Law 9279/96.

Law 9279/96
Bill 139/99
40. An invention patent shall remain in force for a period of 20 (twenty) years, and a utility model patent for a period of 15 (fifteen) years from the date of filing.

Sole Paragraph. The term shall not be less than 10 (ten) years for an invention patent and 7 (seven) years for a utility model patent, beginning on the date of granting, unless the INPI has been prevented from examining the merits of the application by a proven pending judicial dispute or for reasons of force fmajeure.

10. The following are not considered to be inventions or utility models: I. discoveries, scientific theories, and mathematical methods;

10. ........................................................................... .............................................................................................
X.  any new property or new use of a known substance or mere use of a known process, unless such known process results in a new product;
XI. new forms of known substances, which do not result in the enhancement of the known efficacy of the substance.

Single paragraph. For the purposes of this article, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other known substance derivatives should be regarded as the same substance, unless they differ significantly in properties as regards efficacy. (NR)

13. An invention is endowed with inventive step provided that, to a technician versed in the subject, it is not derived in an evident or obvious way from the state of the art.

13.  An invention is endowed with inventive step provided that, to a person skilled in the art, it is not derived in an evident or obvious way from the state of the art, and since it represents a significant technical improvement over the state of the art. (NR)

14. A utility model is endowed with inventive act provided that, to a technician versed in the subject, it is not derived in a common or ordinary way from the state of the art.

14. A utility model is endowed with inventive act provided that, to a person skilled in the art, it is not derived in a common or usual manner from the state of the art, and since it represents a technical improvement over the state of the art. (NR)

31. After publication of the application and up to the end of the examination, interested parties may submit documents and data to assist the examination.
Sole Paragraph. The examination shall not begin before 60 (sixty) days from the publication of the application.

31. After publication of the patent application and up to the end of the examination, any person may submit an opposition.

(1) The applicant will be notified of the opposition, through publication in the official gazette, and may respond within sixty (60) days from the publication date of the opposition.

(2) In cases where an opposition to a patent application has been submitted, INPI is allowed to request technical opinions from the Public Administration, organizations recognized by the Government as consultation bodies and members of the faculty and students of higher education universities.

(3) After a complaint is filed, the examiner may, on the basis of a grounded requirement, request any further clarification as it deems necessary, as well as the submission of additional documents.

(4) The examiner must necessarily give an opinion on every filed opposition, indicating the reasons why it accepts or rejects the information there presented ...................................

43. The provisions of the previous Article do not apply:
IV. to a product manufactured in accordance with a process or product patent that has been introduced onto the domestic market directly by the patentholder or with his consent;

43.  ................................................................................. ......................................................................
IV.  to a product manufactured in accordance with a process or product patent that has been introduced to the domestic or international market directly by the patent holder or with his consent;

68. The titleholder shall be subject to having the patent licensed on a compulsory basis if he exercises his rights derived therefrom in an abusive manner, or by means thereof engages in abuse of economic power, proven pursuant to law in an administrative or judicial decision.

(1) The following also occasion a compulsory license:

I. non-exploitation of the object of the patent within the Brazilian territory for failure to manufacture or incomplete manufacture of the product, or also failure to make full use of the patented process, except cases where this is not economically feasible, when importation shall be permitted; or

II. commercialization that does not satisfy the needs of the market

(2) A license may be requested only by a person having a legitimate interest and having technical and economic capacity to effectively exploit the object of the patent, that shall be destined predominantly for the domestic market, in which case the exception contained in Item I of the previous Paragraph shall be extinguished.

68. ............................................................................... .............................
(1) .........................
I. non-exploitation of the object of the patent within the Brazilian territory for failure to manufacture or incomplete manufacture of the product, or also failure to make full use  of a patented process; or

II. .............................................................................
(2) A license may be requested only by a person having a legitimate interest and having technical and economic capacity to effectively exploit the object of the patent, that shall be destined predominantly for the domestic market.

195. A crime of unfair competition is perpetrated by anyone who:
XIV. divulges, exploits, or utilizes, without authorization, results of tests or other undisclosed data whose preparation involves considerable effort and that were submitted to government agencies as a condition for obtaining approval to commercialize products.
Penalty—imprisonment, for 3 (three) months to 1 (one) year, or a fine.

195.  ...........................................................................

(3) The provisions of item XIV do not apply to the use of results of tests or other undisclosed data, by government agencies, for marketing approval of equivalent products to the product for which they were originally presented.

229. The provisions of this Law shall apply to pending applications, except as regards patentability of substances, materials or products obtained by chemical means or processes, and alimentary or chemical-pharmaceutical substances, materials, mixtures or products, and medications of any kind, as well as the respective processes for obtaining or modifying them, which shall only be privileged under the conditions established in Articles 230 and 231.

229-C.  The granting of patents for pharmaceutical products and processes shall depend on the prior consent of the National Health Surveillance Agency - ANVISA, which shall examine the object of the patent application in the light of public health.

(1) It is considered that the patent is contrary to public health, according to regulation, when:

I. a product or pharmaceutical process contained in the patent application presents a risk to health; or

II. an application for a product patent or pharmaceutical process is of interest to medicines or pharmaceutical care policies within the Unified Health System - SUS
and does not meet the patentability requirements and other criteria established by this law

(2) Following the examination of prior consent and published the result,  Anvisa shall return the request to the INPI, which shall carry out the technical examination of the approved application and shall shelve permanently the non-approved applications.

4. The provisions of treaties in force in Brazil are equally applicable to natural and legal persons who are nationals of or domiciled in this country.

31-A. The INPI must offer intuitive electronic channel, easily accessible, interconnected to the global computer network, wherewith anyone can, free of charge, present evidence or proof of previous existence, in Brazil or abroad, of the claimed invention or state of art.

Single paragraph. Even after the possible grant of the patent, and especially during the process of opposition and administrative nullity proceedings, it is authorized the submission of evidence or proof of previous existence, in Brazil or abroad, of the claimed invention or state of art.

43-A. The Government, through an Ordinance of the Ministry of State concerned, may make non-commercial use of the object of patents or patent applications without the consent or authorization of the patent holder or the patent applicant, directly or by hiring or by authorization to third parties for the purposes of public interest, including those of national defense and social interest.

(1) If the invention is a process, the public non-commercial use of the patent or patent application will cover the use in connection with any product that can be obtained by the process that is protected object  by the patent or patent application;

(2) The Government shall notify the holder of the patent or patent application when making non-commercial use;

(3) The non-commercial public use will meet the following conditions:

I. it will not prevent the full exercise of other rights of the holder of the patent or patent application;

II. it will not be exclusive, sublicensing not being permitted;

III. it will be made exclusively to meet the objectives of the Ordinance that authorized the use, being forbidden any other use, not related to the non-commercial public use,
matter contrary to Art. 42 of this Law;

(4) The remuneration for non-commercial public use, which will be fixed by the Government according to the circumstances of each case, take into account the percentage that could be routinely determined in a voluntary license between independent parties, applied to the cost for the Government resulting from the use of the object of the patent or patent application and weighted by the contribution made by the holder in the transfer of technology of manufacturing or employment;

(5) In the case of patent applications, the amount of compensation will be deposited in escrow until the grant of the patent;

(6) The Judicial Branch is forbidden in the case of public non-commercial use to decide whether the purposes related to the general interest are established;

(7) Non-commercial public use will not be suspended, limited or interrupted by a  judicial dispute concerning the fixed remuneration.

Tuesday, 29 September 2015

How explicit a logo can be?

Checking the Peruvian newspaper La Republica, I encountered with the recent registration (No 618011-2015) of the word mark ‘Guti’  and its respective logo in Class 10 of the Nice classification system (including in particular: hygienic rubber articles). The registration refers to condoms under the sub-title product. Now so far so good….but wait…who is Guti? What is the logo?

Image result for guti condom
Guty Carrera is a famous Peruvian model who has participated in modelling for underwear labels; he also has participated in reality tv shows, and even took part in a campaign celebrating the International Condom Day aiming to encourage the responsible use of condoms reducing sexually transmitted infections and unwanted pregnancies. He is renowned as a love rat and his lovers claim that he is ‘gifted’, alluding to his manhood. Then, appreciating Guty’s story we acknowledge the clever use of the ‘t’ in the logo.

The analysis comes towards Art 135 of Decision 486 CAN referring to signs that are not capable of been registered. In this case Art 135(p) refers to signs that are contrary to public order and morality. Is the logo against morals? This simple question open a Pandora box: who can actually determine if a sign breaches the public order and morality clause? Should it be a centralized definition of what is to be caught under this bar? In reality we open the debate:  what is considered to be profane or vulgar? The beauty of this blog is that we come from different backgrounds, religion, sexual orientations, ages (and eras) and what can be moral to me, it may be vulgar to you (or vice versa).

The logo

Is the logo vulgar? Offensive? Objectionable? One need to analyse who will be expose to the logo.  While the logo may contain quite a ‘graphic’ representation, it may be approved (as it was). Q&A go in the line that children and elderly are not the target market; they are not sold in toys shops; tv advertisements would be limited. A mere offence to a section of the public cannot be enough to bar a sign from registration. It has to be something that causes outrage, or it is considered by the society that it is against social values. In this case, the logo has sexual implications but it works for the goods applied for. A different story would be if the logo is for clothing, don’t you agree?