Beware of fraudulent invoices regarding your patent application or your trademark registration

INPI Portugal
Instituto Nacional da Propriedade Industrial

In the last years, we have noticed in Europe an increase in the number of fraudulent invoices being sent to users relating to trademarks or patents applications. If you receive an invoice that is unexpected or from an unfamiliar entity, please contact your Industrial Property (IP) Office or attorney before paying the invoice.

While many of the fraudulent invoices are sent via regular mail, some are sent by email. In Brazil, for instance, users are also receiving phone calls from people pretending that they belong to the legal department of the IP Office and that the applicant is at risk of losing his trademark. Typically, the invoices seek payment for various services related to applications: registration fees, filing fees or monitoring fees.

Such invoices —which are intentionally designed to look like real invoices from an official source— have nothing to do with the processing of your patent application or trademark registration, and the services they purport to provide have no value beyond the services already provided by your national, regional office or an international organization, such as WIPO, EPO or EUIPO.

National Patent and Trademark offices, as well as relevant international organisations and user associations, are working to inform users about this trend and to help them avoid falling for such scams. For example, warnings have been posted on several websites that include names of known perpetrating “companies” and examples of misleading letters. The Trademark International Index and Trademark Info Corp. became very popular in Mexico a few years ago.

As regards criminal proceedings, the EUIPO closely cooperated with the Swedish public prosecutor’s office who brought to Court an extensive scam scheme principally targeting EUTM owners. The Court passed four custodial sentences ranging between two months and one year for four of the defendants for attempted aggravated fraud.

The more this practice spreads over the Latin American countries, (in Brazil has some significance), the more important it is for applicants of international trademarks or patents from these countries to be aware of this situation.

If you are a PCT or an International Trademark applicant and you receive one of these invoices, first check WIPO’S warning page and see if it matches any of the examples. If not listed there, send an e-mail to WIPO with a copy so it can be added to the collection.

If you registered by yourself, you are also recommended to contact the National Intellectual Property Office involved to be sure that there is no scam and make a complaint, if afirmative. Most of them provide assistance on this issue (i.e. Brazil), but if you want to know more about what to do in case you receive one of those invoices, do not hesitate to contact our free of charge, confidential, fast Helpline. Our experts will be happy to support you.

And most importantly: Do not pay!

2017 in review: summary of INDECOPI’s innovation in the field of Trademarks

Ernesto Barzola
Lawyer at Barreda & Moller

In recent years, many Intellectual Property Offices of Latin America have been enacting new provisions as to harmonize their IP systems according to the international standards. Countries such as Peru, through the National Institute for the Defense of Competition and Intellectual Property (INDECOPI), have implemented new measures in order to improve the efficiency and speed of the registration and granting procedures of IPRs.

In this regard, it must be highlighted that INDECOPI ended 2017 with a total of 34.213 registered trademarks, which represents a grow th of 27,3 % with respect to 2016. This increase was achieved as part of INDECOPI’s resolution to reduce registration time for trademarks from 6 months to less than 4 months.

One of the measures taken by the INDECOPI (covering both trademarks and patents) was the online publication of the applications. The online publication not only reduced time of registration proceedings but has also helped reduce the costs associated to such proceeding. Before online publication, applicants had to pay an additional fee (between 40 to 150 euros, depending on the size of the publication).

Early 2017, rules regarding Industrial property proceedings were modified. Some of these modifications, aiming to reduce processing times are the following:

– Adoption of measures to reduce the workload of Administrative Courts. Mainly through a better allocation of competence regarding grounds of appeal. The Administrative Court will hear of appeals of opposition, revocation, nullity actions and infringement actions. Directorates and Commissions will hear about appeals regarding denial of registration when no opposition has been filled.

– To avoid further delays during a proceeding, there is now a prohibition to file additional documents or briefs when a proceeding is ready to be resolved. Unless it provides an out-of-court settlement satisfactory to the parties (for example, coexistence agreement or an agreed suspension of proceedings).

Regarding infringement actions, henceforth the Administrative Court will not be able to increase a fine imposed on the defendant unless the plaintiff had appealed the amount of the fine. This practice, which arose in the courts, has now been included in the Peruvian Trademark Law.

Finally, the Peruvian Trademark Office uploaded its database to the TMview instrument allowing interested parties in filling application in Peru to have access to this registry. Not only it simplifies the procedures but it also allows to reduce the costs.

Two decisions issued last year by the Andean Community are also worth mentioning.

First, the Andean Court of Justice clarified the difference between a well-known trademark and a renowned trademark. The importance of the decision is due to the fact that Decision 486 does not regulate the renowned trademarks and its rules are limited to the well-known trademarks.

According to this Decision, there is no need to prove the “renowned” character of the trademark in order to be recognized as such. Notwithstanding the aforementioned, the specification made by the Andean Court of Justice consist on a quotation as a footnote, hence, it is very likely that the National Courts continue to require proof of the alleged well-known character of the trademarks. We will have to wait for a modification of the Andean Trademark Law which is expected for a near future.

Second and finally, regarding revocation proceedings (also known as cancellations for non-use) when complying with the required proof of use, the following should be taken into account:

–       Revocation proceedings are not intended to punish trademark owners who advertise and make their products available to the public if the number of sales is not as elevated as expected. Therefore, the analysis should not be limited to accountable documentation but also take into account advertisement and presence in the media or the market.

–       Sales should be analyzed on a case-by-case basis in order to determine whether or not the pause of sales is justified or not.

–       Given the above, if the owner of the trademark can prove the use of the trademark at any moment within the relevant period, revocation must be dismissed.

The repercussion of the latest decision is due to the reticence from the Trademark Authority to consider proven the use of a trademark, if the documents filed were not able to demonstrate an elevated quantity of sales or if the sales were sporadic.

In conclusion, 2017 was important for the Peruvian Trademark Office in terms of innovation and for the Andean Community in terms of a new vision on how to apply the different concepts of the Decision 486. We can expect the impact of these measures to be felt as of 2018 and, given the improvements implemented in 2017, further legislative developments can be expected for 2018.

Brazil new regulation proposal and measures for reducing patent backlog

IDS
Instituto Dannemann Siemsen de Estudos Jurídicos e Técnicos

This article has been written by Natália Barzilai and Gisela de Lamare de Paiva Coelho

As a result of the massive backlog of two hundred and forty-four thousand patents applications as of May, 2017, the Brazilian Patent and Trademark Office (BPTO) has been studying multiple measures to continually reduce the already famous tardiness of its examinations. The BPTO has come up with some controversial ideas.

Successfully, the BPTO has created categories in order to speed up its process, the first one being the “Green Patents”, reducing by 90% the processing time regarding the analysis of environment related innovations. After such a positive outcome, in June, 22, the BPTO extended this project to innovations from the Science and Technology Institutions (STI). Although it is still a temporary strategy limited to a certain number of “STI Patent” applications, the BPTO seeks to reduce from the average time from 10,8 years to 10 months as it is already the case with “Green Patents”.

Another conservative approach to reduce the backlog created by the reduce number of technical examiners, is to join forces with ANVISA (Brazilian Health Agency). As required by the Brazilian IP Law, the BPTO must send all pharmaceutical patents to the Health Agency to be analyzed and check out if there is no forbidden substance in it. Only after obtaining prior approval the BPTO’s technical exam can start. Having such a relevant role in the process of the analysis, the BPTO has proposed ANVISA to send its examiners to the BPTO facilities. Such small measure can help optimize the proceedings not only because the BPTO has an automatic system but because it also prevents losing time between Agencies’ transfers. In addition, the BPTO and ANVISA have established two guidelines in 2017 to fasten ANVISA’s analysis. Now granting of prior approval is based only on the presence of forbidden substance – not on the patentability of the innovation as it used to be. These guidelines not only shorten the analysis period but also provide more legal security as the Health Agency is obliged to grant the approval based only in public health requirement.

Besides those measures, facing the original source of the backlog, the BPTO is studying the possibility of implementing the successful method applied by the Japan Patent Office (JPO). As presented by Takuya Yasui in December, 2017, Japan successfully tackled its backlog by adopting two measures. First, by sub-contracting all preliminary activities, such as research before technical decisions. Today JPO has 10 companies providing its research and, even though they are private companies, supervisors are often retired JPO’s examiners. Second, hiring temporary examiners for 5-year periods which can be renewed for 5 more. With such changes, the time until the exam was reduced from 2,4 years in 2008 to 10,4 months in 2014.

Regarding the most controversial proposals, the BPTO has issued Resolution nº 193 seeking to expedite the examination of Brazilian patent applications under the PCT. In this Resolution, the BPTO has regulated that it will not perform a search of its own and will only incorporate the search already performed by an “office of reference”, meaning, International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA).

The BPTO also started a public consultation for a proposal establishing that patent applications filed or with the national phase initiated up to the date of publication of the future regulation, will be granted 90 days, following a notice of admissibility, to decide whether they want to opt or not for a simplified patent application procedure, provided that they meet certain requirements and are not the subject of third-party observations (also called pre-grant oppositions). Patent applications for pharmaceutical products and processes are, in principle, excluded from this simplified procedure, potentially for political reasons and because of the scrutiny of ANVISA regarding these patents.

As reported in a previous publication at Dannemann Siemsen News[1], according to the proposed simplified procedure, the patent applications to which it applies will be automatically allowed without substantive examination, provided that a few requirements are met:

  1. Certificates of addition, divisional applications and, as above-mentioned applications covering pharmaceutical products and processes are not eligible;
  2. The filing of the patent application or request for entry into the national phase (in the case of PCT applications) should have occurred before the publication date of the proposed regulation;
  3. The application has been published or the early publication requested up to thirty days from the date of publication of the future regulation;
  4. Examination of the patent application should have been requested within 30 days following the publication date of the future regulation;
  5. Annuities payments must be in order; and
  6. No official actions regarding patentability have been published.

Our general advice would be to remove patent applications related to important inventions from the simplified procedure due to the following reasons: (i) the future patents are more likely to face validity challenges; (ii) BPTO’s delay would be compensated somehow since our IP Law currently guarantees a minimum of 10-year patent term from granting date; and (iii) it is possible to put an application to a fast-track examination in case of unauthorized exploitation or through a writ of mandamus.

In particular applicants having a large number of pending patent applications in Brazil should begin to chart a strategy in relation to their portfolio in view of possible new regulations. Meanwhile, we are hoping for the best.


[1] Ahlert, I. B., Murari Calazans, S. “Brazilian Government considers adopting simplified procedure for granting patents without substantive examination”, 1st december 2017, http://www.dannemann.com.br/dsbim/Biblioteca_Detalhe.aspx?&ID=1094&pp=1&pi=1

Food labelling vs Trademarks in Chile: a conflict not yet settled

Diego José Acuña Domínguez
Associate lawyer at Beuchat, Barros & Pfenniger, Abogados

When two constitutional rights are at odds, it is always a difficult conflict to solve, not only for the Government authorities but also for the Courts of Justice, which are often responsible for settling the dispute.

This is precisely the current situation in Chile, which has taken the decision to go further than the rest of the countries in terms of food labelling. Chile has, indeed, decided to implement a legislation that restricts both the nutritional composition of the same, as well as the way to advertise and offer them to the consumer of the relevant market, especially in those cases where aimed at minors.

The Government is basing its decision on the need to protect public health, due to the obesity pandemic that has been afflicting Chile for a decade now and which is causing 1 in 11 deaths in Chile. In fact, according to national studies, one person dies every hour from obesity and 5 out of 10 children are overweight.

The problem is under the spotlight because of the new Health regulation. The new regulation establishes that no manufacturer can disseminate “advertising” aimed at attracting the attention of children under 14 years old regarding products whose nutritional composition includes concentrations of nutrients that exceed the established limits, and which ultimately is an indicator of high levels of sodium, saturated fats or sugars.

In turn, companies manufacturing, distributing and marketing this type of products claim that their industrial property rights regarding the trademarks used on their packaging is being restricted, without previous expropriation or compensation by virtue of such limitation.

The conflict has escalated and has eventually reached the Civil Courts of Justice. The claims were filed by the affected companies against the administrative decisions of the Ministry of Health (under which fines have already been filed against these manufacturers of foodstuffs), requesting for these fines to be waived and to be authorized to use their figurative marks on the packaging of their products.

One of the arguments put forward by these private companies refers to the fact that they are complying with the current legislation on food labelling. They have done so by incorporating the so-called “HIGH IN” warning disclaimers on the packaging of their products in compliance with the “daily food guide”.

They also point out that they have terminated their involvement in the “advertising” activity aimed at children under 14 linked to the “HIGH IN” products, calories, saturated fat, sugars or sodium. Currently, these figurative elements are only used on the packaging of the products and in retail outlets, but not in mass media such as television, newspapers or similar media.

The main argument is that the registered figurative trademarks used on their products cannot be consider as “advertising” directly targeting children under 14, since Trademarks are used to identify or distinguish their products on the market from the ones of their competitors. In other words, the main use for trademarks is to provide distinctiveness, not for advertising purposes.

According to them, the concepts of “brand” and “advertising” are not synonyms; they have a different nature. The main function of a trademark is to “distinguish” products (emanating from the very definition in the Industrial Property Act), not to “advertise” them. The main purpose of advertising is to “promote the consumption of a given product”.

There, the use of the mark on the packaging is for distinguishing purposes, not advertising (mark cannot be placed on the food product itself). It is this distinctive function that allows the consumer in the relevant national market to associate or identify a certain product with the figurative mark that represents it (such as Nike’s check or Apple’s chewed apple), and the quality associated with the product and the producer.

They also pointed out that, according to previous statements from the administrative authority trademarks would not be affected by the new legislation when used for identification purposes. However, it appears that there has been a unilateral change of criterion.

This new interpretative criterion produces effects similar to an expropriation. It prevents the use of an industrial property right, who was previously granted registration by the trademark authority, and which, is now being denied the use, which is at the very essence of the exclusivity granted by IPR (as established in the Chilean Intellectual Property Act and in the TRIPS agreements). On this regard, companies point out that limitations based on public health reasons must be established by law, in compliance with the Constitutional principle of legal reserve regarding limitations on dominance (as is the case, for example, with tobacco, where the law expressly refers to trademarks), a requirement that is not met in this case.

Finally, they claim that the use of the marks complies with the authorization granted through registration by the Trademark Office, and only for distinguishing purposes of the protected goods in accordance with the International Classification. Therefore, there would be no legal ground for the prohibition.

On the other hand, the Chilean Government relies on the preventive nature of the legislation regarding the fight against obesity in Chile and the need to transform the current environment into a healthier one that protects the population.

One of the option to achieve this purpose is by providing clearer and more comprehensible information to the consumer through the “HIGH IN” warning discs. These labels indicate that the foods bearing them contain high levels of sodium, saturated fats or sugars, therefore exceeding the limits established by the Ministry of Health. Another option is to protect children under 14 from overexposure to food “advertising” exceeding health limits established by the Ministry of Health. In this sense, advertising should be understood as any form of promotion, communication, recommendation, propaganda, information or action aimed at promoting the consumption of a given product.

The Food Health Regulations prohibit all kinds of advertising directed to children under 14 “regardless of where it is carried out”. They consider that some elements lead to the conclusion that this age group is the main target of the advertising campaign: “characters and or childish figures, animations, cartoons, toys, children’s music, if it contemplates the presence of people or animals that attract the interest of children under 14”. Furthermore, the legislation also prohibits offering or delivering these products free.

Thus, and even though it is true that trademarks have a distinguishing purpose, it is nonetheless also true that they fulfil multiple functions. One of them is advertising, which allows to position the distinguished product or service and thereby facilitate its promotion, influencing the purchase decision of the final consumer (catchy trademarks are more likely to attract the interest of consumers).

The Government also claims that industrial property rights are not absolute, they do admit limitations. According to the Doha Declaration on TRIPS and Public Health itself, IP rights do not and should not prevent Member States from taking measures to protect public health.

In addition, the definition of “advertising” given by the Food Labelling Act and the Health Regulations is broad enough and does not distinguish whether or not a figure constitutes a trademark. Otherwise, registration as a trademark would be enough to escape the application of the rules set out by the regulation.

Finally, they assert that if these products were to adjust their ingredients and composition to the tables drawn up by the Ministry of Health, they would be free to use the figurative elements on their packaging, even for advertising purposes directly directed to children under 14.

This is an ongoing discussion and both sides have already exposed their arguments. For now, all that remains is to wait for the outcome of these cases and the opinion of the Chilean Courts of Justice. Regardless of the outcome of the claims, the real impact of this legislative change is to be seen on the long term (one or two decades), after which Chile must analyze whether or not they had the intended effect: is there a reduction in obesity rates? Has physical inactivity decrease?

Meanwhile, Chilean consumers are getting used to a new packaging, where classic figurative elements that used to accompany them have disappeared (such as Tony the Tiger on the Frosted Flakes or the colorful M&M’s). The packages are now “plain” and the predominant element is the word mark.

Save the date: International IPR SME Helpdesk Annual Stakeholder Meeting 2018

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

The China, Latin America and South-East Asia IPR SME Helpdesks are holding their Annual Stakeholder Meeting in Brussels on the 31st of January 2018. The event will include live case-study sessions with SMEs, training on the role of IP in a Technology Transfer strategy when going international and an interactive panel on Enforcement Strategies and Future Trends.

This meeting will be a key opportunity to have your say on the services of the Helpdesks and join discussions on what can be done towards its continuous improvement in terms of support to businesses and collaboration with partner organisations and experts.

To REGISTER and access the detailed agenda, please click here.

This event will also be available via simultaneous web streaming. To register for the web streaming and to receive the link, please contact Mr. Jim Stoopman: Jim.Stoopman@china-iprhelpdesk.eu

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.