Winds of change are blowing in the international Copyright panorama

Rebeca Nieto
IP Expert at Latin America IPR SME Helpdesk

Francis Gurry, WIPO’s Director General, pointed out in a recent interview the challenges posed by new scientific and technological developments for IP administration, policy and governance.

In this sense, it is nothing new that Intellectual Property Law, as any other field of law, lags behind technological, market and social realities. For this reason, it is in the hands of law-makers, authorities and industry to take all the necessary steps to adjust current regulations to the existing scientific and technological development.

However, if we actually look at the European and Latin American national and regional legislation panorama, we can notice that most of them require an update and adjustment in their copyright regulation to match the new digital reality.

In this regard, the major challenges to be addressed are the digitalization and distribution of content over Internet, the improvement of access to online content and cross boarder access, the current and future development of the “Internet of the Things”, appropriate protection of creators and fair payment for the online use of their works, among others.

Nonetheless, the digital revolution not only involves difficulties, but also opportunities. As regards copyright, creators such as Imogen Heap, are becoming aware of the business prospects that new technologies like Blockchain can bring to them. Imogen Heap, through her Mycelia project, has been the first author that has distributed her song, Tiny Human, by means of a smart contract using block chain.

Given the current context, it is not surprising that the negotiating and adopting a new Copyright legislation is not a piece of cake.

In Europe, for instance, the proposal of the Directive on Copyright in the Digital Single Market, has received nearly 1,000 amendments. Even so, the approval of said Directive is getting closer. On the 10th of October, the Juri Committee is expected to vote on the content of the new EU Copyright Directive.

The key issues at debate are:

  • The creation of ancillary rights for press publishers (art.11).
  • The obligation for online service providers to monitor and prevent copyright infringements by users (art. 13).
  • The mandatory exceptions related to teaching activities, text and data mining and preservation of cultural heritage (art. 3-5).
  • Fair remuneration in contracts for authors and performers (art.14-16).

It must be note that In Europe, a Community Directive of 2001 is in charge of regulating the Digital Market.

In Latin America, most national and regional copyright legislations (such as the Decision 351 of the Andean Community) also require an update to match the requirements of the digital era. It should be borne in mind that the majority of them were approved long before the irruption of the information and communication revolution.

Nonetheless, these region are taking action as reflected in the last Regional Meeting for Directors of the Copyright Offices of Latin America held in Colombia. The participating countries (Argentina, Brazil, Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Paraguay, Peru, Dominican Republic, Uruguay and Venezuela) addressed current global issues. “Rights management in the digital environment: initiatives to make the management and ownership of digital rights more efficient” and “Orange Economy, Challenges and Opportunities in the Fourth Industrial Revolution, Intellectual Property Rights and Entrepreneurship” are one of the topics that were addressed during the Meeting.

Even though many Latin American countries have introduced modifications in their national Copyright laws over the last years, such as for Colombia, Ecuador or Brazil, as a rule of thumb, it can be said that digital challenges have not yet been fully addressed in this region.

Expect legislative changes in the near future. To be up to date about Latin America’s latest copyright and IP developments, do not forget to visit our news section or subscribe to our newsletter.

In addition, if you are planning to internationalize your creative business to Latin America, please read our Factsheet Copyright in a nutshell and our Factsheet Protecting your creations in the Andean Community, or contact our Helpline for further information.

How to overcome business challenges from a policy perspective: recommendations of the EU-LAC Business Forum

Latin America IPR SME Helpdesk
Protecting your Intellectual Property in Latin America

On 6 November, EUROCHAMBRES presented the recommendations of the Business Forum between the European Union (EU) – Latin America and Caribbean States (LAC) (click here to refresh what we highlighted one month ago).

In words of our Eurochambres colleagues, the conclusions of the document reflect that the “private sector pushes for deeper EU–LAC bi-regional economic relations as political agenda stalls”.

The recommendations focus on promoting inclusive and sustainable growth through enhancing the role of micro, small and medium-sized enterprises (MSMEs) in bi-regional economic relations.

The presentation took place during the seminar “The future is today: The European Union and the Americas facing a unique opportunity”, organized by the Euroamerica Foundation at the European Parliament in Brussels, with the participation of EU high-level authorities.

The Business recommendations are a result of the EU-LAC Business Forum, which took place in Mexico City on 12th October 2017 with around 200 participants from the business community, and financial institutions, as well as policy makers and academics from both sides. The event proved to be a successful example of economic diplomacy in a challenging bi-regional political environment which ultimately lead to the postponement of the EU-CEL that was planned for last month.

Arnaldo Abruzzini, CEO of EUROCHAMBRES, said: “These recommendations are a testament to the private sector’s continued commitment to deepening EU-LAC economic relations. Business as usual would be a wasted opportunity for our regions in times of rising global protectionism and political volatility. We need greater continuity in our bi-regional economic agenda, more deliverables in terms of trade deals and their implementation and stronger joint leadership in shaping globalisation based on our shared values”.

Recommendations of the EU-LAC Business Forum

The Declaration outlines tangible recommendations which should help guide decision-makers in adopting an EU-LAC policy framework that is conducive to sustainable growth. It covers key topics in the bi-regional economic relationship, such as trade and investment, a partnership for productivity, innovation, entrepreneurship and strengthening MSMEs.

The document –endorsed by EUROCHAMBRES, the IberoAmerican Association of Chambers of Commerce (AICO) and the Association of Latin American Industrials (AILA)– emphasizes the importance of establishing an institutional mechanism to guarantee an effective follow-up on proposals tabled by the public and private sectors from both regions. This mechanism should ensure continuity to the bi-regional strategic partnership.

The EU-LAC Business Forum was organized by EUROCHAMBRES and CAINCO (Chamber of Commerce, Industry and Tourism of Santa Cruz, Bolivia), as leader of the EC-funded AL-Invest 5.0 programme with the support of AICO, AILA and ProMexico.

You can check the entire text of the Recommendations of the Business Forum EU-Latin America and Caribbean here

Moreover, if you want to know more about any Intellectual Property related issue in Latin America, do not hesitate to contact our Helpline. Our experts will be delighted to provide you with free, confidential, fast, first-line assistance.

Enhancing the protection of Geographical Indications in Latin America

Lesly Nowak
IP expert at Latin America IPR SME Helpdesk

Spanish producers of “Turrón de Alicante” or “Sobrasada de Mallorca” fear no more! Producers of products protected under Geographical Indication in the European Union are getting closer and closer to have the protection of these Geographical Indications extended to Brazilian territory.

But what is a Geographical Indication? How can they benefit your business?

Geographical indications (GIs) are a specific Industrial Property Rights (IPRs) protecting products originating in a given geographical area whose quality or characteristics are due to a particular geographical environment (with its inherent natural and human factors) and all or part of the production steps taking place in the defined geographical area.

GIs involve regulating the already existing methods of production and traditions associated with the protected product so that only those companies producing or marketing products in compliance with the regulated standards can use the GI to distinguish their products. Unlike other categories of IPR, such as Patents (new inventions), Trademarks (new brand names) or Designs (new aesthetical characteristics), GIs do not require innovation. Instead, they tend to protect tradition (existing goods, existing methods of production and existing names of those goods) and are owned only in a collective manner.

GIs are a key tool for groups of SMEs producing local agri-food products in a defined geographical area. Indeed, consumer associate agri-foods with their place of origin and a certain guarantee of quality. In addition, their collective ownership and management (which fits with the nature of the rural and agricultural economy), the lack of innovation required and their commercial attractiveness make GIs one of the most suitable IP rights for agri-food SMEs.

In general, to register a GI you have to go through the following steps*:

1) Identify the specificity of the product, which may derive from its quality, characteristics or reputation.

2) Define the place, territory or region within which the product presents the specificity.

3) Identify the specific conditions of the geographical environment existing in the defined place, territory or region and make sure that the singularity of the product is essentially or exclusively due to those conditions.

4) Define and describe in detail the product and method of production.

5) Register the GI and enjoy the protection granted in the territory for which it has been registered.

GIs are still a sensitive subject. The first indicator is an international system of protection of GIs (Lisbon System). This system enables the applicant entity to obtain protection in several countries (as long as they are part of the Agreement) through a single application filed before the International Bureau. However, so far, this Agreement has had very limited success. In Latin America, only Cuba, Costa Rica, Nicaragua, Mexico and Peru are part of this system. As far as the EU is concern, only the Czech Republic, France, Hungary, Italy and Slovakia have ratified the Agreement.

Secondly, GI owners might have to deal with the fact that Trademarks consisting of or containing the expression protected by the GI (in the country or territory of origin, e.g. the European Union) might have already been registered and/or used in connection with the same goods in third countries. Unfortunately, applicable Law in most Latin America grants priority to those earlier trademarks, unless you can prove that earlier trademarks are deceptive or were applied for in bad faith.

Thirdly, GIs protected in the EU and, consequently, identifying products originating from a specific area and complying with specific characteristics, may, however, be considered generic names in third countries (“Queso Parmesano” in Argentina, for example). In such cases, the offices of third country will deny registration of these Geographical Indications. In some cases, it is the own national legislations that assigned a generic nature to the. This is the case of the Argentinian Food Code, which assigns a generic nature to several GIs protected in the European Union, e.g.: “Turrón de Jijona”, “Turrón de Alicante”. In these cases, registration of the GI will only be possible if it is preceded by negotiations between both parties’ Governments aimed at the mutual recognition of GIs and the abolition of that regulation.

Finally, whereas producers in the EU can benefit from a single registration procedure (with unitary effects in all Member States), recognition of GIs in Latin American countries, in most cases, requires a separate procedure before each national competent authority

It is in this context that bilateral agreements, concluded between the EU and certain Latin American countries, establishing mutual recognition of GIs, become important. In particular, the EU has concluded agreements for mutual recognition of agricultural GIs with Chile, Colombia, Peru, Mexico, Costa Rica, El Salvador, Guatemala and Honduras. We can now add Brazil to this list.

Indeed, as part of the negotiations between Europe and Brazil, in the framework of the MERCOSUR-EU negotiations, the Instituto Nacional da Propiedade Industrial (INPI) published the much-awaited Normative Instruction 79/2017. Take into account that this is all the more important since Brazil is not a member of the Lisbon Agreement or the Madrid System (for GIs protected through collective trademarks or certification mark). This Instruction, from October 30, established the first basis of this publication. The list of GIs was finally published on November 7, including well-known Geographical Indications, such as “Oporto” for Portugal, the Dutch “Gouda”, the Italian “Grana Padano” or even the French “Roquefort”. The list is accessible through INPI Brazil’s website. Be aware, though, that third parties have now 30 days to submit oppositions to the registration of these GIs in Brazil and you can expect opposition.

Take into account that producers are already commercializing most of these products in Brazil. Which leads to the following questions: how will the agrifood related industries be affected? Might this then generate some friction between local producers and GI’s owners in the EU? What EU Gi’s will be next? How will these IPR going to be really enforced? The situation will certainly lead to interesting developments and we will keep you informed from the Latin America IPR SME Helpdesk.

Do you want to know how your business can benefit from Geographical Indications? Are you planning to commercialize your products in Latin America? Do you require further information on costs or proceedings before taking the decision? If so, do not hesitate to check the Latin America IPR SME Helpdesk’s Factsheets on Geographical Indications (general or on Chile).

The EU-funded initiative will provide EU SMEs (either current or potential) with first-line, business focused information on any Intellectual Property related issue in Latin America.

If you require a tailor made consultation, please do not hesitate to contact the Helpline. It is free, fast and confidential! Moreover, the IP experts will support you in English, Spanish, French, German or Portuguese.

*(Source: Latin America IPR SME Helpdesk)

15 good practices about IP management in the machinery sector in Latin America

Rodrigo Ramírez Herrera
Partner at Larraín Prieto & Cía.

A well-planned, tailor made IP protection and enforcement strategy is key to success in every new business adventure, particularly when you are going abroad. Seek professional IP advice before you take any step if you want to prevent undesired situations and check our recommendations on some of the most important IP aspects to be included in your checklist before, during and after you enter the Latin American countries.

1. Use technology watch and competitive intelligence tools in the destination marketplaces

Fix your aims, set-up your monitoring activity according to your strategy, look for sources to watch your marketplace in publicly available information and commercial software and make your own key performance indicators of IP information collected or outsource these activities.

2. Determine the Freedom to Operate (clearance for technology, innovations, and patents)

A prior in-depth analysis of marketplace in Mercosur and Chile, by sectors of machinery technologies it is a sound decision (also known as a market clearance search). Take into account to performance searches on international databases is useful the IPC (International Patent Classification).

Keep in mind that can it be risky to attempt to bring an innovation in machines to Mercosur market without first conducting a freedom-to-operate search, as such products (and their patents, including parts and tools) may be vulnerable to infringement suits, potentially resulting in costly litigation procedures in other jurisdiction and/or forcing your company to withdraw a product from the market altogether.

3. Search prior art of your machinery and parts and define its novelty

If your firm is researcher/developer of technologies, should define the prior art for each innovation in order to avoid spending resources or commit infringement of third parties rights, or outsource this work.

4. Identify, inventory your IP assets, ensure its ownership and adopt appropriate mechanisms for their protection

Ensure that the agreements specify, in as much detail as possible intangible assets of intellectual nature (including references non-disclosure data, secrets and relevant confidential information) supplied before and during the operations in the Mercosur and Chilean market, through audits and inventories.

5. Register your IP rights before commercializing in the destination countries

Even if it may sound obvious, registering your IPR at an early stage of your entry into the Mercosur or Chilean market has a deterrent effect and makes enforcement more effective. It also helps to avoid other problems, such as bad faith applications.

6. Register your trademarks in the Customs Service (where available)

Registration will facilitate the detection and blockage of infringing goods through special service of Custom agency available for trademarks in order to apply border measures. This type of register is not provided by all the Latin American Customs authorities and is independent from the National Intellectual Property Office’s.

7. Renewal your IP registrations in a timely manner and appoint a local legal representative (an IP lawyer, preferably)

Normally, you can avoid cancellation of your IP Rights by paying an additional fee during a certain period (3 or 6 months after expiration). An expert with expertise on the local regulation and the field will allow you to prevent incurring in extra costs and even loosing your rights.

8. Communicate with public Intellectual Property-related authorities

A fluent relationship and communication with the IP authorities, such as the police or customs agents, will allow more agile decision-making and obtaining more detailed information in order to defend and enforce your rights. It is also recommended to send a representative to police raids and seizures.

9. Communicate with other IPR owners

Take into account that counterfeiters tend to use the same distribution channels, storage points and routes of entry. Joining efforts with other IPR owners could be beneficial for all parties.

10. Consider other alternatives before claim before courts

Sometimes sending a «Cease-and-Desist Letter» is sufficient to stop the infringement, especially in cases where the infringer is a small retailer.

11. Follow good practices from industries’ associations

Joining industries´ associations may be useful in order to join efforts and develop good practices based on the experience of each member. They are also used to develop joint awareness campaigns addressed to users and clients.

12. Off-shoring anti-counterfeiting support

Detecting the country of origin of counterfeited products may help you to block the goods in a very early stage of the distribution channels and can help you to save costs. This is particularly effective if your IPRs are also registered in the country of origin of the goods.

13. Monitor repeat offenders ( a counterfeit of machinery, parts, and tools)

In the case of repeat offenders a close monitoring could provide information regarding their distribution channels, suppliers, and clients.

14. Enforce your IPR before courts: combine criminal and civil actions

Even in the case of clear criminal behaviors, combine such criminal actions with civil actions (e.g against the most creditworthy of the infringers) to obtain as many damages as possible.

15. Sign Non-Disclosure Agreements, non-competence and other agreements in force after you leave the market

Check the legal force of agreements related to intellectual property, keeping in mind that trade secrets may not last for a specific term of years, according to as agreed.

For further information on the Machinery sector, you can check our Factsheet Machinery and IP in MERCOSUR and Chile or ask our experts.

The Latin America IPR SME Helpdesk team contributes to the EU-LAC bi-regional dialogue in the field of Intellectual Property

Latin America IPR SME Helpdesk
Protecting your Intellectual Property in Latin America

Micro, Small and Medium-sized Enterprises (MSMEs) are a fundamental component of the productive fabric of the majority of the world’s economies. The European Union, CAINCO (Chamber of Commerce of Santa Cruz in Bolivia), ECLAC (the UN Economic Commission for Latin America and the Caribbean), EUROCHAMBRES (the Association of European Chambers of Commerce) and PROMÉXICO organized a series of thematic events in Mexico City on 10th– 14th October in order to share experiences and to consolidate the cooperation between the European and the Latin American and the Caribbean private and public actors that support the development of the MSMEs. Other EU-funded programmes, such as the Latin America IPR SME Helpdesk, ELAN Network, ELAN Biz and ADESEP for Central America have also been involved in the organization of the economic cooperation week.

The EUROMIPYME seminar “Latin America and Europe facing technological disruption: a new era of policies and institutions for MSMEs” organized by ECLAC opened the series of events. The seminar facilitated the discussion on how to build a common language for the design of a new generation of development tools for MSMEs, where cooperation between both regions, supported by a fluid public-private dialogue, can become a key factor for transformation. Eli Salis, IP expert of the Latin America IPR SME Helpdesk intervened as panellist during the session on public private dialogue.

On the 11th of October, Paolo Baldan, from EUROCHAMBRES, as partner of the Latin America IPR SME Helpdesk, presented the services of the Helpdesk to the CEOs of the European Bilateral chambers and EUROCAMARAS of the 7 countries covered by the ELAN BIZ programme (Argentina, Brazil, Chile, Colombia, Costa Rica, Mexico and Perú). He reiterated the full availability of the Helpdesk to organize free of charge training modules on Intellectual Property (IP) on use and protection of trademarks, designs, patents and copyright in Latin America. The Helpdesk will obviously adapt the session according to the priority countries, sectors and topics and time availability. The Helpdesk was also represented on the 12th of October at the EU-LAC Business Forum organized by CAINCO and EUROCHAMBRES bringing in the role of IP protection in the market access facilitation and innovation process. The importance of the bi-regional cooperation on building information schemes on Intellectual Property and the provision of training and capacity building programmes such as the Latin America IPR SME Helpdesk was underlined in front of an audience of 200 EU and LAC private and public sector representatives. The event was also an occasion to outline a series of business driven proposals and recommendations which should guide decision-makers in adopting an EU-LAC policy framework for a business friendly environment that is conducive to sustainable growth.

Lastly, César Elvira Fernandez, IP expert of the Latin America IPR SME Helpdesk, presented the Helpdesk services and business cases of success at the annual event of the AL-Invest 5 programme, organised by CAINCO on 13 October 2017.

Compulsory licenses in Latin America

Lesly Nowak
IP expert at Latin America IPR SME Helpdesk

Issues regarding competition law and IP can, on their own, provoke sever headaches. However, these are not isolated subjects that never cross paths. Problems can grow exponentially when they do and require every bit of our attention and perspicacity.

Competition law and IP cannot be considered as pursuing opposite goals. Quite on the contrary, they must be seen as complementary. Granting exclusive rights through IP promotes innovation and competition between undertakings, the final beneficiary being the customer. This affirmation is also true when talking about Competition law: ensuring competition on the merits and avoiding distortion of the competition, which in the end will promote general economic welfare. In their dynamic relation, competition does not seek to impede the existence of exclusive rights, rather it seeks to avoid an abuse in the exploitation of those rights.

Compulsory licensing is one of the important ‘flexibilities’ recognized under Article 31 of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS). This is true since it makes it easier for WTO members with insufficient or no manufacturing capacities in the pharmaceutical sector to avoid the trouble of negotiating expensive licenses with big pharmaceutical companies who are in a clear position of power in these negotiations. So far, only two countries in Latin America (Brazil and Ecuador) have made effective use of compulsory licensing provisions.

A compulsory license is generally ordered as a remedy when intellectual property law is not capable to offer a suitable remedy to a situation, usually because the owner of the IPR and the licensee are incapable of reaching a satisfactory settlement. Through these licenses, the owner of intellectual property is required to provide at least one other firm or a government with a right to import, reproduce, and/or sell the intellectual property.

Patent legislation in Latin America provides for different grounds for the granting of compulsory license:

  • Failure to exploit (ANDEAN, Argentina, Brazil, Dominican Republic, Mexico, Chile, Uruguay and Costa Rica).
  • Public interest (ANDEAN, Brazil, Dominican Republic, Honduras, Mexico, Chile, Uruguay and Costa Rica).
  • National emergency (ANDEAN, Argentina, Brazil, Dominican Republic, Honduras, Mexico, Chile, Uruguay and Costa Rica).
  • As a remedy against anti-competitive practices (ANDEAN, Argentina, Brazil, Dominican Republic, Chile, Uruguay and Costa Rica).
  • In case of failure to obtain a license under reasonable terms (Argentina, Dominican Republic and Uruguay).
  • In case of dependent patents (ANDEAN, Argentina, Brazil, Dominican Republic, Honduras, Chile, Uruguay and Costa Rica).

Although some Free Trade Agreements (FTAs) have been signed between Latin American countries and Europe (with Mexico, Chile and Colombia, for example) such agreements have not introduced any limitations on the possible grounds for compulsory licenses.

When granting a compulsory license, the competent authority will face a number of different challenges. First, it must justify the grant of such a license under one of the conditions above mentioned. Second, the authority will have to establish the life of the compulsory license. Finally, setting a correct level of royalty payment is another challenge to ensure proper retribution of the patent owner.

Real life cases: Brazil and Ecuador

In 2007, Brazil decided to override the patent on an AIDS drug in order to make it available under the country’s free treatment program.

Prior investigation lead the government to note that Merck was selling its drug at cheaper prices in countries at the same development level but with fewer people in need of treatment than Brazil; the Indian generic versions were much cheaper than Merck’s product.

Prior to the grant, the Brazilian government engaged in negotiations with the patent holder in order to achieve an acceptable price reduction. During these negotiations, Merck offered a price reduction from US$1.59 to 1.10 per dose, which was deemed unsatisfactory by the Brazilian government. Hence, through Presidential Decree No. 6.108 (4 May 2007) the government decided the grant of a “compulsory license, on the ground of public interest, of Efavirenz’s patents, for public non-commercial use” for a period of 5 years (renewable for the same period31) and a royalty fee for the patent owner of 1.5 % of the finished product.

This decision was far from popular. Although health activists, such as Médecins Sans Frontières, reacted positively, pharmaceutical industries were not pleased with the decision.

In Ecuador, the granting of compulsory licenses is based on the Presidential Decree No. 118 of November 16, 2009, that established “of public interest, access to medicines used for the treatment of diseases that affect the population of Ecuador and that are priorities for public health”. It also specifically specified that compulsory licenses could be issued for patents protecting medicines for human use that are necessary for the treatment of such diseases.

Following this Presidential Decree, the IEPI (Insituto Ecuatoriano de la Propiedad Intelectual) issued a Resolution (Resolution No. 10-04 P) with Guidelines on how to issue a compulsory license in the case of pharmaceutical patents.

Thanks to these instruments, on April 2010, the government of Ecuador granted a compulsory license for an anti-retroviral drug, to Eskegroup SA, a local distributor of a generic produced by an Indian company.

The government of Ecuador, on June 2012, granted a second compulsory license to Acromax Laboratorio Quimico Farmaceutico S.A. regarding a drug protected by and held by the Glaxo Group. After confirmation by the Ministry of Public Health that the pharmaceutical was a priority medicine, the compulsory license was finally granted. The compulsory license is available until the expiry of the patent in May 2018. This action was taken in order to enable the government to further expand access to more affordable treatments for HIV and facilitate local production of the product, leading to an important reduction in costs.

Conclusion

As examined above, although only used in three cases so far, compulsory licenses have been used against pharmaceutical patents. The European Court of Justice has been more inclined to use compulsory licenses as a “punishment” in cases of abuse of dominant position, rather than as a pressure element. In Europe, case law on the subject is rather abundant starting with Magill, which set the basic requirements, later on developed through IMS Health.

In any case, this opens up an interesting debate about pharmaceutical patents, drug prices, health imperatives and incentives. Some medicines are not even available -period- in some markets. One of the reason is that our current patent system does not provide sufficient incentives in R&D for solutions to problems that mostly affect the poor. Another challenge arises from the very nature of the patent regime: innovators are rewarded with a temporary monopoly. In the context of life-saving drugs or vaccines, this monopoly will have a more meaningful impact on poor people who cannot afford the essential drug.

One solution to face this challenge might be voluntary licensing involving contracts with generic manufacturers to distribute and sell drugs in markets where there is no profit to make for branded companies. Voluntary licensing could present several advantages: generic manufacturers would be able to distribute patented medicines in certain countries; multiple licensees can be granted allowing to sell generic versions at prices freely established in certain low and middle-income nations; royalties will be paid to patent owners or economies of scale can be made. All the above would avoid raising competition concerns by creating effective competition through licenses offered to multiple generic manufacturers.

Anyways, the topic surely gives food for thought…

Marcas no convencionales: Unión Europea vs América Latina

Eli Salis
Partner at DISAIN IP

Aquellos que nos dedicamos a la propiedad intelectual tenemos la fecha del 1 de octubre señalada en rojo en nuestros calendarios desde que se aprobara el nuevo Reglamento (UE) Nº 2015/2424 que modifica reglamentos anteriores sobre la marca comunitaria, ya que será el momento en el que entren en vigor las últimas novedades del mismo, introduciendo importantes cambios en cuanto a la representación de las marcas europeas se refiere, con la finalidad de modernizar el sistema de marcas dentro de la Unión Europea, haciéndolo más accesible, eficiente y coherente en su conjunto.

Como ya es sabido por todos, el nuevo Reglamento hace desaparecer el requisito de la representación gráfica para los signos que se pretendan registrar, sustituyéndolo por los criterios adoptados oportunamente por el TJUE en el caso Sieckmann, según los cuales será suficiente con que la marca pueda reproducirse en el registro de manera “clara, precisa, completa en sí misma, fácilmente accesible, inteligible, duradera y objetiva”, por medio de cualquier tecnología generalmente disponible.

De este modo se abriría a priori la puerta al registro de marcas no convencionales que, hasta el momento, veían privado su acceso registral al no poder superar el obstáculo de la representación gráfica. Sin embargo, debemos tener presente que, a partir de ahora, determinadas marcas no convencionales podrán representarse mediante el uso de medios electrónicos de reproducción. Tal es el caso, por ejemplo, de las marcas sonoras, de movimiento, de posición, hologramas o multimedia.

Sin embargo, si bien es cierto que se presagia un nuevo futuro para determinadas marcas no convencionales, otras, como las olfativas, táctiles o gustativas, seguirán encontrando dificultades, ya que no existe actualmente tecnología disponible que permita su representación de forma precisa, inteligible y, sobre todo, duradera y objetiva.

Además de la falta de medios técnicos, otro obstáculo de nuevo cuño introducido por la propia reforma del Reglamento (y de la Directiva) es la inclusión de la muletilla “y otras características” a la prohibición absoluta recogida en el artículo 7.1 (e), que originalmente se refería en exclusiva a la forma del producto y ahora se extiende a otros tipos de marcas, en un intento por contrarrestar el efecto flexibilizador de la supresión del requisito de la representación gráfica. Tendremos que estar a la práctica de la EUIPO y de los Tribunales para ver cómo se interpreta esta nueva disposición.

Por otra parte, si bien estos estándares se van a aplicar de manera uniforme dentro de la UE, en el ámbito extracomunitario -y más concretamente en Latinoamérica- los requisitos para el registro de marcas varían de un país a otro, por lo que estas marcas pueden encontrar nuevos obstáculos al tratar de ampliar la protección a nivel internacional.

De este modo, encontramos que en casi la totalidad de países latinoamericanos (con algunas excepciones) sigue vigente el requisito de la representación gráfica (o de un signo visualmente perceptible), aunque gran parte de ellos plantean una definición amplia del concepto de marca, posibilitando la entrada, si bien de forma progresiva, a las marcas no tradicionales.

Así, en Argentina es posible registrar marcas sonoras desde hace varios años, existiendo incluso alguna decisión favorable de los Tribunales sobre la registrabilidad de marcas olfativas. También en Uruguay se permite el registro de marcas sonoras. En la Comunidad Andina, como en Chile, algunos de estos tipos de marcas están expresamente enumerados en sus correspondientes disposiciones legales como signos que constituyen una marca. Así encontramos que, por ejemplo, en Colombia se han registrado más de 850 marcas no convencionales, entre las que se encuentran marcas tridimensionales, de color, de posición, sonoras e incluso gestuales y táctiles aunque no se ha concedido ninguna marca de olor. En otros países, sin embargo, como es el caso de Brasil o México, las marcas no tradicionales todavía tienen un largo camino por recorrer.

Por tanto, y retomando la práctica europea, habrá que esperar a ver cómo se interpretan estas nuevas modificaciones y, sobre todo, la restricción comprendida en el nuevo artículo 7.1 (e) antes de augurar un futuro prometedor a las marcas no convencionales en Europa que realmente suponga un avance considerable con respecto a las legislaciones de otros países de nuestro entorno.

Este artículo ha sido elaborado en colaboración con Gracia Tordesillas.

Freedom of speech through the Internet in Mexico

Sergio Rangel
Intellectual Property Expert at Latin America IPR SME Helpdesk

 

Background

On June 2017, the Mexican Supreme Court of Justice (@SCJN) analyzed an Amparo suit filed by Alestra, S. de R.L. de C.V., a well known Mexican internet service provider (ISP), filed against the §199 Bis. Industrial Property Law preliminary injunction granted by the Mexican Institute of Industrial Property, also known as IMPI. The preliminary injunction rationale was the alleged infringements by storing and disseminating copyrighted music works, via a webpage.

In order to stop the allegedly infringing activities of said webpage, IMPI ordered Alestra and other ISPs to block the IP address in Mexican territory.

Alestra challenged IMPI’s preliminary injunction, in lower federal courts via an Amparo suit (Constitutional appeal) and lastly the case reached the highest Court in the country.

Supreme Court Justice Alberto Pérez-Dayán, member of its Second Chamber, drafted the opinion which resulted in two precedents. [1] [2] Per the opinion, blocking a webpage may violate the freedom of speech (recognized human right in the Mexican Constitution as well as in international treaties). It is mandatory for any Mexican government agency to take into account the freedom of speech as part of the limits to impose preliminary measures. Likewise, the injunctions shall be deemed in the law, grounded in a legitimate purpose, as well as necessary and proportional.

Because freedom of speech shall be a major concern to the Mexican State, any limitation cannot be unreasonably wide or generic. So a general block may be suitable only when exceptional circumstances raise, including inducement to terrorism, hate, racism, discrimination, genocide, violence, child pornography, etc.

Likewise, the threat of potential distribution of illegal copyrighted material is not per se a valid argument to entirely block a webpage since this blocking may include legal contents and protected speech, resulting in censorship.

Concerned of the application of the aforementioned precedents, the Mexican Association for the Protection of Intellectual Property (@AMPPI_AC) organized on September 1st, 2017, the conference: “#LibertadDeExpresión. Supreme Court criterion related to blocking of webpages and its interaction with the Intellectual Property”.

Justice Alberto Pérez-Dayán was the speaker on behalf of the Mexican Supreme Court of Justice.

In my opinión:

In the last months, Intellectual Property Rights owners and colleagues have been shocked due to the opinion of the Mexican Supreme Court of Justice, regarding the blocking of webpages. Apparently, the opinion blocks most of the online enforcement administrative actions. I disagree.

Seems clear that the Court is not restricting the authority of IMPI to grant preliminary injunctions against webpages, but establish rules.

Because the generic block is an extraordinary measure, it demands also extraordinary work to justify it.

Blocking webpages is constitutional when the authority properly rationale that the measure is adequate to prevent violations to intellectual property rights.

The blocking of a webpage must be reasonable and proportional. As Justice Pérez-Dayán said; a block may be applicable when the transit through the webpage is impossible without run into illegal contents.

Therefore, the matter is not to face a technical matter v. Human Rights, or to confront Freedom of Speech v. Copyrights. The matter is to prevent a government agency to misuse authority that may result in a disproportional   enforcement action or censorship… is to work hand-in-hand with IMPI to obtain rational injunctions that may result in a partial or even in total block of alleged-illegal contents.

Total block of webpages may be constitutional, but depends in how the block is carried out.

[1] BLOQUEO DE UNA PÁGINA ELECTRÓNICA (INTERNET). DICHA MEDIDA ÚNICAMENTE ESTÁ AUTORIZADA EN CASOS EXCEPCIONALES.

[2] LIBERTAD DE EXPRESIÓN EJERCIDA A TRAVÉS DE LA RED ELECTRÓNICA (INTERNET). LA PROTECCIÓN DE LOS DERECHOS DE AUTOR NO JUSTIFICA, EN SÍ Y POR SÍ MISMA, EL BLOQUEO DE UNA PÁGINA WEB.

Overview of the LATAM IP systems from the Special 301 Report perspective

Rebeca Nieto
IP Expert at Latin America IPR SME Helpdesk

Every April since 1989, the Office of the United States Trade Representative (USTR) publishes the Special 301 Report. This report evaluates the level of adequacy and effectiveness provided by U.S. trading partners’ countries on Intellectual Property Rights (IPRs) protection and enforcement.

Although the Special 301 Subcommittee received IP data and information from more than 100 trading partners, this current edition is focused on 34 countries, which have been placed either on the Priority Watch List or Watch List.

Eleven countries are on the Priority Watch List: Algeria, Argentina, Chile, China, India, Indonesia, Kuwait, Russia, Thailand, Ukraine and Venezuela. Under this category fall those countries that do not provide an adequate level of IPR protection, enforcement o market access, according to the USTR standards.

Twenty-three countries are on the lower-level Watch List: Barbados, Bolivia, Brazil, Bulgaria, Canada, Colombia, Costa Rica, Dominican Republic, Ecuador, Egypt, Greece, Guatemala, Jamaica, Lebanon, Mexico, Pakistan, Peru, Romania, Switzerland, Turkey, Turkmenistan, Uzbekistan and Vietnam.

As regards Latin America, the Report highlighted the efforts and positive actions taken by these countries to face the existing IP challenges. Let’s see briefly some of them:

  • Mexico and Costa Rica are committed to use licensed software in their government agencies.
  • Brazil, Argentina, Dominican Republic are reducing their patent and trademark application backlogs by hiring new examiners, digitalizing internal procedures and increasing the efficiency of their online applications management systems.
  • Brazil has made significant progress in combating online piracy.
  • Ecuador, besides updating its IP system with the Ingenuity Code, had lowered its patent fees.
  • Costa Rica has improved its inter-agencies IP coordination mechanisms and increased IP criminal prosecutions.
  • Many countries are also enhancing their IP regimes by enacting new provisions -it is the case of Mexico, who has recently introduced a sui generis opposition procedure for trademark applications- or by entering into Patent Prosecution Highway (PHH) agreements -as for example the Pacific Alliance (Colombia, Mexico, and Peru) and PROSUR (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay), in order to accelerate patent proceedings-.

On the other hand, the Report also detected a wide range of concerns that, according to the Office of USTR, may restrain innovation, competitiveness and investment on those countries. Some IP issues that remain unsolved or that have not been properly addressed are, among others, the following ones:

  • The fight against online piracy remains insufficient in many countries like Argentina, Venezuela, and Colombia.
  • Piracy and counterfeiting are particularly widespread throughout Venezuela, Mexico, Dominican Republic, Guatemala, Bolivia, Brazil or Colombia.
  • Illicit camcording, to be considered as a major way to obtain unauthorised copies of new movies, is spreading on Mexico and Peru.
  • Enforcement against suspected infringing goods at the border must be improved in many countries of this region. In this respect, different enforcement mechanisms are deemed essential, such as the creation of a formal customs recordal system in Costa Rica, enhance border control in Peru or authorization to Mexican customs agents for taking ex officio actions for goods in-transit.

The IP concerns and issues raised in this Report are dealt by the U.S. through bilateral dialogue or enforcement tools, including the WTO dispute settlement procedures.

Finally, it must be appointed that over the last years, the annual classification of countries made by this Report has remained almost unchanged in relation with Latin American countries. In this sense, the last alteration was 2015, when Ecuador switched from the Watch List to the Priority Watch List, place which occupied only once during the last decade.

However, and considering the continuous efforts and positive steps given in many Latin American IP systems, significant changes are expected on this list in the near future.

Global Innovation Index: Latin America highlights

Vicente Zafrilla Diaz-Marta
Intellectual Property expert at the Latin America IPR SME Helpdesk

WIPO, together with Cornell University and INSEAD, has recently published the 2017 edition of the Global Innovation Index under the title Innovation Feeding the World, with a special focus on innovation in the agri-food sector.

According to the Index, the most innovative country in Latin America is, not surprisingly, Chile (ranked 46th), followed by Costa Rica (53rd), Mexico (58th), Panama (63rd) and Colombia (65th).

Apart from general information concerning innovation ecosystems in each Latin American country, the publication devote two chapters – Chapter 7 and Chapter 10- to some Latin American specificities related to innovation in the agri-food sector. The former deals with “Policies and Institutions Fostering Innovation and Agriculture Technologies in Brazil” including a description of the innovation ecosystem in Brazil- policies and institutions- as well as different proposals to improve it, with a special focus on agri-food production.

Chapter 10, titled “Innovation in the Agri-Food Sector in Latin America and the Caribbean” offers an overview of the evolution of innovation in the Region, including a briefing of the value chain in the sector with the most relevant innovative fields for agri-food sector, as well as an update of the status of biotechnology and Genetic Modified Organisms (GMOs) in most Latin American countries, from both a technological and policy perspective.

Should you need more information with regards how to manage innovation and IPRs in Latin America, please read our FS on IP in the Agri-food sector (I): Geographical Indications and our – soon to be released- FS in bio and nanotechnology.

Stay tuned.