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.