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Protecting and exploiting IP in North, Central and South America
A supplement to
Online justice in Mexico
US trademarkopinions
Chile, Peru, and the PCT
THE AMERICASOnline justice in Mexico
US trademarkopinions
Chile, Peru, and the PCT
In association with ASIPI
Plus updates from� Brazil� Chile�Mexico� Peru� US� Venezuela
Plus updates from� Brazil� Chile�Mexico� Peru� US� Venezuela
01 Cover AMERICAS 09.qxd 4/8/09 4:53 pm Page 1
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THE AMERICAS
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HHeeaadd ooff pprroodduuccttiioonn:: Liz LewisDDeessiiggnneerr:: Wiebke ForresterCChhiieeff eexxeeccuuttiivvee:: Fotini Liontou
SSeerrvviicceess aanndd ssuubbssccrriippttiioonnss
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Published by:Informa Law, Telephone House, 69-77 Paul Street, London EC2A 4LQ, UKwww.ipworld.com
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Whilst every effort has been made to ensure
that the information contained in this journal is
correct neither the editor and contributors nor
Informa UK Limited can accept any responsibility
for any errors or omissions or for any
consequences resulting therefrom.
© Informa UK Limited 2009, and contributors.
The contents of this journal are protected under
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Convention. Any unauthorised copying of the
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criminal law. Infringers will be prosecuted.
From the publishers of:
07 | INTRODUCTION FROM SUPPLEMENTEDITOR
BRAZIL
08 | SPECIALISATION OF THE COURTS IN IPPaulo Parente Marques Mendes of Di Blasi, Parente,Vaz e Dias
12 | DROIT DE SUITE IN BRAZILMaria Edina de O Carvalho Portinari of Portinari,Tiedemann Barreto & Advogados Associados
CHILE
15 | CHILE ADHERES TO THE PATENTCOOPERATION TREATYAndrés Grunewaldt Cabrera and David Merin of AlbagliZaliasnik
MEXICO
17 | TRADEMARKS AND RESERVES OFRIGHTSMiguel Angel Jiménez of Becerril, Coca & Becerril
21 | NOTORIOUS MARKSMarcella Bolland of Uhthoff, Gomez Vega & Uhthoff
25 | TOWARDS CIVIL LAWAdolfo Athié Cervantes of Basham, Ringe & Correa
27 | ONLINE JUSTICEJorge Molet and Yulen J. Contreras of Dumont BergmanBider
PERU
30 | PERU JOINS PATENT COOPERATIONTREATYAlain C Delion and Lilie C Delion of Estudio Delion
33 | US-PERU FREE TRADE AGREEMENTDr. Carmen Arana of Estudio Colmenares
UNITED STATES
34 | TRADEMARK OPINIONSJustin R Young of Dineff Trademark Law
VENEZUELA
38 | PROTECTING IP IN VENEZUELARicardo Rojas Gaona, Jesus Lopez and CristinaImparato of Glaham Abogados
Protecting and exploiting IP in North, Central and South America
A supplement to
Online justice
in MexicoUS trademarkopinions
Chile, Peru, and the PCT
THE AMERICASOnline justice
in MexicoUS trademarkopinions
Chile, Peru, and the PCT
In association with ASIPI
Plus updates from
� Brazil� Chile�Mexico� Peru� US� Venezuela
Plus updates from
� Brazil� Chile�Mexico� Peru� US� Venezuela
MERICAS 09.qxd 4/8/09 4:53 pm Page 1
THE AMERICASPROTECTING AND EXPLOITING IP IN NORTH, CENTRAL AND SOUTH AMERICA
05 Contents AMERICAS 09.qxd 4/8/09 4:55 pm Page 5
www.ipworld.com The Americas | 2009 | 7
THIS SUPPLEMENT IS BROUGHT TO YOU BY THE PUBLISHERS OF:
For over 20 years Trademark World hascovered the latest changes anddevelopments in international trademarklaw through a combination of in-depthfeature articles, commentary on thelatest cases and a comprehensiveinternational news section. Our globaleditorial board reveal, analyse anddiscuss important trademark law andbusiness issues. You can rely on thisessential resource to put each topic intocontext and keep you fully informed ofthe practical approaches to keydevelopments in your industry.PPrriiccee:: £849 / €1146 / US$1698 / S$2547
Patent World is the leading monthlymagazine that focuses specifically onpatent law developments around theglobe. Launched over 20 years ago,Patent World has consistently deliveredthe most reliable and incisive commentaryon all the key developments that IPlawyers and practitioners need to beaware of. The latest news, casecommentary and analysis is brought toyou from our expert international editorialboard of patent agents and lawyers, soyou know you are reading the mostreliable information available.PPrriiccee:: £849 / €1146 / US$1698 / S$2547
Copyright World Copyright World is theonly magazine focussed on developmentsin international copyright law, providingyou with a unique balance of news, casecomments, practical features and in-depthlegal analysis. Our editorial board ofleading experts from around the worldensure you are kept up to date with thecases, legislative trends and IP issuesthat really count, bringing you analysis ofthe key issues and explaining how theyaffect your business. PPrriiccee:: £769 / €1038 / US$1538 / S$2307
ipworld.com is the newly relaunchedintellectual property law website fromInforma Law. This online service providesyou with a host of useful tools andfeatures including: continuously updatedIP news; a fully searchable, global IPlawyers directory; an IP Planner to helpyou organise your diary; and PeopleWatch so you can keep up to date withthe movers and shakers in your industry.To sign up for a free two-week trial andour popular weekly IP law news e-alerts,visit www.ipworld.com.
A re you looking to protect or exploit your intellectual
property in North, Central or South America? If so
you’ll find this supplement invaluable.
Contributors to The Americas 2009 are private practice
lawyers – experts in their field – with extensive experience
across copyright, patents and/or trademarks and other IP-
related issues within their particular jurisdiction.
Their contributions highlight recent significant judgments,
outline changes to the court system within their jurisdiction,
or talk through the effect of joining IP treaties.
From Brazil, Di Blasi Parente’s article (p8) explores how
the creation of specialist IP courts has affected technological
innovation in Brazil, outlining both advantages and
disadvantages of the system that has been in place since 2002. Portinari, Tiedemann Barreto &
Advogados Associados’ article, meanwhile, explains why a recent Brazilian decision on resale
rights is good news for the heirs of visual artists (p12).
Albagli’s piece on page 15 talks through the impact of Chile joining the Patent Cooperation
Treaty – a move which came into effect in June 2009.
Four Mexican law firms contribute to this supplement. Becerril Coca & Becerril’s feature
explores whether Mexico’s reserva and trademark systems can happily co-exist (p17). In 2005,
Mexican IP law was amended to make a distinction between ‘famous’ and ‘notorious’ marks.
Uhthoff, Gomez Vega & Uhthoff ’s contribution explains the difference on p21. Still in Mexico,
Basham, Ringe & Correa’s piece (p25) says intellectual property should be protected under
civil, not administrative, law. And rounding up the Mexican contributions is a feature from
Dumont Bergman Bider (p27), which describes the introduction of online IP trials.
Moving on to Peru, Estudio Delion’s article (p30) explains how the country’s accession to
the Patent Cooperation Treaty will improve its internal patent system. Then Estudio
Colmenares’ piece (p33) talks through the US-Peru free trade agreement, which came into
effect in February, with changes affecting patents, plant varieties and trademark applications.
Our US contribution comes from Dineff Trademark Law. The feature on p34 discusses two
important decisions of the Trademark Trial and Appeal Board and their impact on
jurisprudence in the US. Dineff ’s article is an important read for anyone applying for
trademark protection in the US.
Rounding up The Americas supplement is a contribution from Venezuelan firm Glaham
Abogados. On 17 September 2008, the Venezuela Patent and Trademark Office issued a
resolution declaring the enforceability of the 1955 Venezuelan Industrial Property Law.
Glaham’s guide (p38) describes how this change will affect the protection of intellectual
property in the jurisdiction.
I hope you find this supplement a useful and practical tool which will help you better exploit
and protect your intellectual property in North and South America.
Essential updatesfrom The Americas
INTRODUCTION
Rebecca EvansSupplement Editor
07 Welcome AMERICAS 09.qxd 5/8/09 11:14 am Page 7
8 | The Americas | 2009 www.ipworld.com
K BRAZIL: DI BLASI, PARENTE, VAZ E DIAS
Paulo Parente Marques Mendes of DiBlasi, Parente, Vaz e Dias explains howthe Brazilian system promotestechnological innovation
F ollowing a trend observed in several
countries with large technological
production, as of 2002 the Brazilian
judiciary promoted the creation of courts of
first instance and panels of second instance
specialised in the judgment of litigation
involving industrial property. This trend
resulted in the creation of four courts and
two specialised panels in the Federal Justice
of Rio de Janeiro, as well as business courts
in the State Court of Rio de Janeiro and in
the State Court of São Paulo.
Although not without criticism, the
court’s initiative has been welcomed by
judges and lawyers operating in the
intellectual property area. This is because
the subject matter is very complex, both in
the field of facts and in the legislative
density. These complexities could only be
overcome by the demarcation of the judicial
The specialisation ofthe courts in industrialproperty matters
The Americas
08_10_BRAZIL.qxd 4/8/09 4:27 pm Page 8
www.ipworld.com The Americas | 2009 | 9
BRAZIL: DI BLASI, PARENTE, VAZ E DIAS K
scope within a selected number of first- and
second-instance judges.
Lack of clarityHowever, with respect to technological
innovation, there is a certain lack of
definition surrounding the competence of
courts to decide disputes involving its
production and circulation. Federal Law No.
10.973/2004 states that it “establishes
incentives to innovation and to scientific
and technological research in the productive
environment and provides other measures”.
This defined innovation very widely, in such
a manner that it was possible to distinguish
some points of contact between its legal
definition and industrial property.
However, on the other hand, it does not
appear lawful to reduce the field of one to
another. A further matter that aggravates the
lack of definition with respect to the judicial
competence of the subject matter is the
extremely low Brazilian technological
production. According to the most recent
data and declarations of the Ministry of
Science and Technology of Brazil, there are
large difficulties in the transposition from the
academic environment to the practical
application – with palpable economic results
– in the industry sector.
However, precisely because the subject is
in an incipient phase, with large perspectives
of growth in national technological
production, it appears to be the right
moment to analyse the subject. It is
necessary to produce some judicial
organisation guidelines, in order to make the
judges capable of efficiently absorbing a
potential increase of claims in the area.
Despite the broad definition of the
legislator, it is a fact is that innovation
processes would become excessive unless
always classified in industrial property
characteristics, at least in types that are
close to this legal system. In this context,
the embodiment of inventive step can be
observed in: patents; utility models, which
are a type of industrial property established
in Brazilian law (Federal Law No.
9.279/96), consisting in improvements in
the capacity of use of a technological object;
industrial designs; know-how, which in
Brazil does not have its own regulation. By
the way, the Brazilian Patent and
Trademark Office (BPTO) has decided not
to recognise rights deriving from know-
how, software - which is close to copyrights
in the national legislation (Federal Law No.
9,609/98), plant breeding and, finally,
business secrets that, similarly to know-
how, do not have their own regulation in
Brazil.
By reinforcing the closeness between the
inventive activity and the IP regulations,
or in other words by making the disputes
on technological inventions attractive
towards the courts specialized in IP, the
activity of RD&I (Research, Development
& Innovation) has been operating through
contracts described as technological by the
doctrine.
These contracts, which aimed to regulate
the relationship between the financial
backer of the technology and the
researcher, and which to a large or small
degree brought the activity of RD&I into
their element, are in most cases
compulsorily registered with the Brazilian
Patent and Trademark Office (BR PTO).
This is the body that is responsible, among
other competences, for the granting of
industrial property in Brazil. Accordingly,
it is notable that in the field of the strictly-
speaking technological research, in the
1990s, Brazil had already experimented
with the inclusion of a contract typical of
Cost Sharing/ RD&I, in the list of
registered contracts at the BR PTO.
Advantages and disadvantagesIn our opinion, all these facts corroborate the
activity’s innovation purpose for the
regulation of Industrial Property Law and,
consequently, the capability of specialised
decide conflicts involving innovation.
However, it is necessary to highlight the
advantages and disadvantages already
noticed in the Brazilian experience of court’s
specialisation in industrial property.
In Brazil, the judiciary is extremely
important to resolve conflicts between
private individuals and between these and
public authorities. In effect, unlike the
United States system, the culture of
agreement between parties and private
arbitration is not advanced in Brazil. All of
this, added to the relatively low cost of
processing an action, at least compared to
the North American judiciary and to the
one of other developed countries, ultimately
results in conferring a high importance to
the different ways of resolving litigation in
the society.
The Brazilian Court is formed by some
characteristic elements. Besides the
specialised judges there are advisors
equipped with a deeper legal knowledge and
who have the function to assist the judges in
the appreciation and processing of a large
number of causes in their care.
Due precisely to the large number of
conflicts sought to be decided by the judge in
Brazil, the existence of a clerical staff for
each court/panel is also relevant. They are
conspicuous in their service to the internal
organisation of the legal bureaucracy and the
so-called proceedings of the court registry.
Their specialisation consists of practical
order elements that significantly help to
speed up the processing of the actions.
Independent expertsFinally, in court actions in which the
originality or novelty of patents, utility
The Americas
“ The culture of agreement between partiesand private arbitration is not advanced inBrazil ”
08_10_BRAZIL.qxd 4/8/09 4:27 pm Page 9
10 | The Americas | 2009 www.ipworld.com
The Americas
models and plant breeding, among other
embodiments of industrial property of large
intrinsic complexity are challenged, it is
essential to provide expert evidence.
Although the parties involved can provide
expert reports duly prepared by hired
technical assistants - as established in article
421 of the Brazilian Civil Procedure Code
(Federal Law No. 5.869/73) - it is usual that
the judges appoint the so-called ‘court
expert’ in cases of blatant technical
complexity. The court expert is a specialist
who is not linked to any of the parties and
who is required to perform a report on the
technology under examination. In relation to
these independent expert consultants, it is
also noticed a level of specialisation that is
significantly useful in the resolution of
conflicts, whose technical issues are generally
not entirely understood by the judge.
In sum, the Brazilian experience of legal
specialisation in the subject matter of IP has
brought the following advantages by:
• promoting the study and a better
understanding of the subject matter by the
judge, whether the study is of legal or of
material nature
• enhancing the speed of the proceedings by
overcoming the relative unawareness of the
subject matter, which is in a constant
evolution
• issuing decisions in accordance with the
specialised doctrine and case law,
overcoming discrepant case laws
established in the past
• allowing a higher legal safety for the
parties in the risk management involving
the companies’ technological assets
• less space for writs based on unnecessary
arguments and evidence by ill-intentioned
parties, seeking to mislead the unprepared
court.
In relation to the observed disadvantages
noticed, we highlight the crystallisation of the
positions adopted by the courts in some
subjects. This causes a certain amount of lack
of stimulation in the judicial discussion and the
creation of a hermetism in the legal questions
involving technological property, as explained
by J. Clifford Wallace, Senior Judge and former
Chief Judge of the US Court of Appeal, in an
address available on the website
www.internationaljudicialconference.org/PDF/
15/wallace.pdf.
We understand that the main
disadvantage in the Brazilian experience is,
in fact, the sedimentation of a case law that
in many situations allows a controversial
interpretation even though it is clearly
erroneous. However, this is a burden
experienced in other areas of the law that
have become the subject of legal
specialisation, such as, for example, the
subject of taxation. In a way, this improper
crystallisation is unavoidable but not
insuperable. It is the doctrine’s and the
lawyers’ responsibility to work to reverse
certain rash positions of the judiciary.
This brief summary of the Brazilian
situation concludes that the disadvantages of
the specialised courts in the subject matter
of technology are less than the clearly-
observable advantages. Moreover, taking
into account the evident proximity between
the activity of technological research, the
production of innovation and industrial
property, we are of the opinion that it is
already time to make such matters more
attractive to the competence of the
specialised courts specialised in accordance
with the global trend. Such a measure would
certainly promote greater legal security,
which is necessary for the supply of
investments in RD&I in the promising
Brazilian technology market. K
K BRAZIL: DI BLASI, PARENTE, VAZ E DIAS
AUTHOR
Paulo Parente MarquesMendes is a lawyer andpartner of the law firm DiBlasi, Parente, Vaz e Dias,headquartered in Rio deJaneiro, Brazil. This article was supportedby the research of Felipe BarrosOquendo, Lucas B Antoniazzi andSulamita Nicolau Miranda
“ The main disadvantage in the Brazilianexperience is, in fact, the sedimentation of acase law that in many situations allows acontroversial interpretation even though it isclearly erroneous ”
08_10_BRAZIL.qxd 4/8/09 4:28 pm Page 10
The commitment to our clients is our mission. For that, we work consistently to provide the best strategic and legal
support for our clients´ business needs in Brazil or any other Latin American country. To achieve this goal, our
team counts with highly qualified and experienced professionals focused on IP
prosecution and enforcement as well as regulatory and licensing matters. Visit our
website at www.diblasi.com.br or e-mail us at [email protected]
SãoPauloRiodeJaneiro
FROM ANY CREATION TO IP.
YOUR SOLUTION FOR BRAZIL.
DI BLASI, PARENTE, VAZ E DIAS
intellectual property
12 | The Americas | 2009 www.ipworld.com
K BRAZIL: PORTINARI, TIEDEMANN, BARRETO & ADVOGADOS ASSOCIADOS
Maria Edina de O Carvalho Portinari ofPortinari, Tiedemann Barreto &Advogados Associados explains the roleof droit de suite in Brazil
I t is common knowledge that droit de
suite emerged after an episode
involving Millet’s painting The
Angelus. The famous French artist
received 1,200 francs for his work, which
was resold to Secrétan for 70,000 francs,
then to the Fine Art Association for
550,000, and finally to Chauchard for
1,000,000 francs.
In his book Le Droit de Suite, the
prominent French lawyer Duchemin noted
the humanitarian origins of the resale
right, also recounting a story that moved
the authors. It told of how the penniless
children of the artist Forain watched as
one of their father’s drawings was
auctioned at the price of gold, while he
himself had died a pauper. It was none
other than a drawing Forain had made to
support artists’ efforts to pressure
government authorities to recognize their
resale rights.
However, it was Albert Vaunois, in an
article published on 25/2/1893 in the
Chronique de Paris, who first objectively
expressed the idea of resale rights. He
asserted that when an artist sells a painting,
he is actually assigning the work, but the
purchaser does not pay what the signature
will be worth later.
When the painter becomes famous, this
drives the price up with each additional sale
(surplus value), and the artist should benefit
from this appreciation.
More recently, Portuguese expert Maria
Victória Rocha, in her article O direito de
seqüência: um direito dos artistas plásticos (The
Resale Right (droit de suite): A Visual
Artist’s Right), cast a new light on the issue.
She said that the sentimental / supportive
foundation of resale rights was overlooked
in today’s copyright environment:
considering that visual art involves a
fusion of the corpus mysticum and the corpus
mechanicum because the work becomes one
with its support, its exploitation is
normally through its selling.
Inequalities rebalancedTherefore, resale rights would rebalance the
material inequality between visual artists and
other artists, allowing the former to
accompany successive sales of their works in
the secondary market with an interest in
their exploitation, as do other artists, who
collect royalties whenever their works are
published, played, reproduced, etc.
Independent of the legal nature and function
of this right, in the countries that adopted it,
whenever a work of art is purchased or sold,
the autonomy of will of the assigning buyer
is restricted.
This is a legal act in the strict sense that
stems from the reading of a legal transaction,
the sale made, which is subject to a legal
regulation that requires a percentage of the
price to go to the artist or his successors.
Created through a special French law in
1920, the precept was subsequently adopted
by the Berne Convention, of which Brazil is a
signatory. Here, resale rights were regulated
for the first time by Article 39 of Law
5,988/73, which established a 20% share of a
sale’s price increase over the preceding sale.
The same provision was adopted by the Law
currently in force, which changed only the
amount, setting a 5% minimum over any
verifiable price increase in each resale of a
work of art, and established as trustee the
seller or auctioneer.
This provision was not applied in Brazil
until very recently, based on the argument
that there was a lack of regulation. However,
even in the context of the financial crisis that
began last year, the Brazilian and global art
markets are clearly expanding and
mobilizing billions of dollars.
Billion-dollar marketsEditor Eileen Kinsella, of ARTNews
magazine (May 2008, Vol. 107, No. 5 - “The
Private Art Market: $25 Billion and
Counting”) reports that art auctions are what
one dealer called the “visible part of the
iceberg.” Christie’s and Sotheby’s, the two
leading auction houses in the international
scene, reported joint revenues of over US$ 12
billion in 2007, while according to The
European Fine Art Foundation (TEFAF) the
private art market transacted approximately
$29 billion in business in 2006 and $30
billion in 2007, as reported by the famous
Barron’s.
Phillips de Pury, chairman of Simon de
Pury, who works both with auctions and as a
private art dealer, estimates the private art
market figures to be “four, if not five, times
higher.” Why then should visual artists not
exercise their right to benefit from their
works’ appreciation in value?
Droit de Suite in Brazil
The Americas
“ To justifynoncompliance withthe law, it is allegedthat in mosttransactions there isno way to verify thesurplus value ”
12-13_Brazil.qxd 4/8/09 3:26 pm Page 12
www.ipworld.com The Americas | 2009 | 13
BRAZIL: PORTINARI, TIEDEMANN, BARRETO & ADVOGADOS ASSOCIADOS K
Rio de Janeiro visual artist Beatriz
Milhares, whose work O Mágico was
auctioned at Sotheby’s of New York for US$1
million after the artist had sold it in 2001 for
around US$25,000, told VEJA Rio, in its
06.01.2008 issue: “Some think I became a
millionaire, but since 2001 the painting has
belonged to a Spanish collector; in this type
of sale the one who signed it doesn’t receive
anything.” The Brazilian artist had never
even heard of resale rights. And how could
she if the precept had never been applied in
Brazil?
To justify noncompliance with the law, it is
alleged that in most transactions there is no
way to verify the surplus value. Thus, a
system for charging resale rights based on
the surplus value meant institutionalising an
unfeasible ruling. Determining the surplus
value requires a complicated discovery
process and proof of the prices of successive
sales in a market with little transparency and
no oversight. In this context, most countries
have modified the collection criteria to give
visual artists the right to collect a percentage
of the sale price, rather than a percentage of
the seller’s profit.
As noted, application of the precept
occurred very recently in Brazil, as art
market agents claimed that the legal
provision had no regulation or that heirs
were not legitimate with regards to resale
rights. However, on 2 April 2009, judging a
case filed by the only son and heir of the
famous painter Candido Portinari, sponsored
by the lawyer writing this article, the
Brazilian Supreme Court decided that the
right to ownership interest in a work’s resale
is fully enforceable and extends to heirs, even
when the work was first sold after the artist’s
death.
The Court of Justice of Rio de Janeiro had
denied the son of the painter, João Candido
Portinari, ownership interest in the sale of 23
drawings auctioned by the Banco do Brasil,
arguing that he himself had sold them to the
bank to pay a debt that the heir had cosigned.
The Supreme Court affirmed that nothing
impedes recognition of the heir’s interest in
the price increase obtained in the sale, even
though the drawings had been sold for the
first time after the painter’s death, because
the law’s interpretation says that the word
author should be considered in a broad sense.
The argument is unprecedented in Brazil’s
Supreme Court. This is, therefore, a leading
case of enormous importance for copyright
lawyers, and especially for heirs, as it
expressly acknowledges the validity of their
resale rights, regardless of when the work of
art was first sold. K
The Americas
“ The Court of Justice of Rio de Janeiro haddenied the son of the painter, João CandidoPortinari, ownership interest in the sale of 23drawings auctioned by the Banco do Brasil ”
AUTHOR
Maria Edina de O CarvalhoPortinari is a partner atPortinari, TiedemannBarreto & AdvogadosAssociados.
12-13_Brazil.qxd 4/8/09 3:26 pm Page 13
AlbagliZaliasnikATTORNEYS
Miraflores 130 / 25th Floor / Torre Los Andes / Santiago, Chile / T.+562.445.6000 F. +562.361.1789 / www.az.cl
Founded in 1991 by our Managing Partner Rodrigo Albagli and Founding
Partner Gabriel Zaliasnik, the Firm began with a mission to provide
clients with an uncompromising level of service across practice areas.
In the years that follow, we grew to be one of the most successful in
our market, not only for our untiring commitment to legal excellence,
but because of our vision.
An unending emphasis on permanent change, permanent improvement
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led by teams of the finest and most dedicated professionals in their
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Our success has been hard earned and is indelibly linked to our ability
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but to anticipate them as well. This dynamic is based on a foundation
of cohesive relationships, proactive study of the environments in which
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The Firm
Intellectual PropertyOur Intellectual Property Group, provides comprehensive brand -protection services, including trademarks, patents, copyrights,
new media and Internet domains. The group conducts preliminary searches, provides preventative monitoring services, such as
our Global IP Monitor service, which tracks unauthorized trademark registrations around the world, in addition to a substantive
anti-counterfeiting enforcement mechanism.
The Firms IP Group is a long-standing powerhouse in the Chilean market and is consistently improving its skills and resources for
clients both at home and abroad.
Albagli Zaliasnik’s also has an strong Anti-Counterfeiting division, which practice regularly works with clients to identify counterfeiting
activity in Chile and Latin America, developing cases with investigators, initiating and managing seizures, obtaining temporary and
permanent injunctions, and recovering monetary awards and sanctions.
Specialized IP Services
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Licensing
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www.ipworld.com The Americas | 2009 | 15
CHILE: ALBAGLI ZALIASNIK KThe Americas
Andrés Grunewaldt Cabrera and David Merin of AlbagliZaliasnik explore Chile’s strategy to spur innovation
O ver the past few years the Chilean
government has pursued a
development strategy that will tie
Chile’s future economic fortunes more
strongly to the creativity and productivity of
its people than to the increasingly volatile
international commodity markets. As part of
this plan, the Chilean government has taken
several steps that will spur innovation, such
as creating new lines of credit to subsidise
foreign direct investment in research and
development that will stimulate the creation
of intellectual property.
Most recently, Chile became the 140th
country to adhere to the Patent Cooperation
Treaty (PCT), which came into effect on 2
June 2009. This new patent regime
streamlines the process for Chileans wishing
to protect their patents abroad and simplifies
the process for foreigners wishing to protect
their patents in Chile. The Chilean National
Congress approved this adhesion in October
2008 in accordance with the Association
Agreement signed with the European Union
in 2003 and the Free-Trade Agreement
signed with the United States in 2002.
Chile adhered to the Paris Convention in
1991, which was the first step taken by the
government to facilitate the filing of patents
in Chile by foreigners and the filing of
patents abroad by Chileans. Adhering to the
PCT has further integrated Chile into the
international intellectual property community
and will assist in the protection of intellectual
property both in Chile and abroad.
ImpactChile’s adhesion to the PCT is a major
benefit to those in Chile looking to protect
their patents abroad, as it keeps costs down
while preserving options and enabling
inventors to make more informed business
decisions. Under both the Paris Convention
and the PCT, the bulk of the costs are
associated with the national phase of the
filing process. Under the Paris Convention
this needs to be done within 12 months of
filing the local application, while under the
PCT this does not need to be done until 30
months after filing the local application. This
gives the filer two-and-a-half times as long
to evaluate the potential market for their
product and determine where they would like
to file. The PCT also enables the filer to
obtain an assessment on their likelihood of
success in filing the patent applications
abroad before paying the hefty costs
associated with the national phase.
Additionally, Chile’s adhesion to the PCT is
a major benefit to foreigners wishing to
protect their patents in Chile as it harmonises
the Chilean patent process with most other
countries in the world, thus making the
Chilean market more accessible. Moreover, it
provides foreigners with all of the benefits
mentioned above that stem from possessing an
additional 18 months to determine whether
they wish to file an application in Chile.
International investmentChile has had great success in attracting
foreign direct investment (FDI). The 2008
World Investment Report published by the
United Nations Conference on Trade and
Development showed the stock of FDI in
Chile reached 64.4 percent of GDP in 2007,
up from 48.1 percent in 1990. By comparison,
in 2007 the average for developing countries
was 29.8 percent and the world average was
27.9 percent.
This remarkable track record in attracting
foreign investment is a testament to the
political stability of the country, the strength
of its institutions and its prospects for
continued economic growth. Thus far, much
of this investment has been related to the
development of physical property, like
commodities.
However, part of the government’s new
development strategy is to redirect some of
this investment towards the development of
intellectual property. The government has
initiated several programs to encourage this
shift, such as allocating some of the proceeds
from mining to subsidise the global filing of
new patents by local inventors.
Chile’s adhesion to the PCT comes at an
opportune time for foreign inventors and
investors. Chile has been relatively insulated
from the global recession and the
International Monetary Fund expects its
economy to grow in 2009, while the region’s
economy contracts by 1.5 percent.
Moreover, the government’s efforts to
develop intellectual capital and improve
Chile’s knowledge balance should result in
sustained above-average economic growth
going forward. As the Chilean economy
continues to grow it will become an
increasingly important market for global
businesses and a place where inventors will
want to ensure that their intellectual
property is secure. The PCT will greatly
reduce the marginal costs for foreign
inventors who are also looking to protect
their intellectual property in Chile and
facilitate their participation in its dynamic
economy. K
Chile adheres to thePatent Cooperation Treaty
AUTHOR
Andrés Grunewaldt is anassociate and works inour firm’s intellectual andindustrial property group.His legal practice includesexperience in the managerial and legalhandling of copyright, trademark andpatent, licensing agreements, internet anddomain name registrations, advertisinglaw and unfair competition, defendinglocal and foreign clients in applications,contracts and proceedings related tothese matters.
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MEXICO: BECERRIL COCA & BECERRIL KThe Americas
Miguel Angel Jiménez of Becerril, Coca &Becerril analyses the place of theReserva in Mexican IP law
I n Mexico a concept known as Reserve of
Rights (Reserva) exists in order to
protect the exclusive use of a title or of
elements of the following intellectual
property concepts: periodic publications;
periodic broadcastings; human
characterisation, fictitious or symbolic
characters; individuals or groups engaged in
artistic activities and advertising promotions.
The Reserva has always been a
controversial figure since its inclusion within
the Mexican Federal Copyrights Law, due to
the fact that the legislators placed it in a
separate chapter from the one containing
copyrights and its related rights. This left, of
course, many attorneys and experts in
intellectual property scratching their heads,
since this new concept (Reserva) was created
to protect certain elements which are
adjacent to a work of art, but not the work
of art itself. Therefore, the rights it
protected seemed like a combination of those
shielded by both trademarks and copyrights.
Relationship of trademark and ReservaHowever, a Reserva is neither a copyright
nor a trademark. In a strict sense, said figure
is a sui generis legal figure applied in the
Mexican law, which combines elements of
protection that may be found in both
copyrights and trademarks, but that includes
others which belong in a class by itself, since
it is a figure protected and registered before
the copyrights authorities, but the effects of
its registration and protection have a lot in
common with those found in trademarks.
In view of the foregoing, at first glance,
questions regarding the co-existence of both
figures (trademarks and Reservas) arise,
such as:
• Can both peacefully co-exist, even when the
holder of a trademark registration is
different from the owner of a Reserva
registration?
• Should I get protection from both
concepts?
• If have one but not the other are there any
risks involved?
In order to answer such queries we must
analyse the nature and application of both
figures and also take into account their
practical application in the Mexican legal
system.
The existence of Reservas has been
questioned by many intellectual property
practitioners and scholars, arguing that its
principles and purposes do not differ from
those found in a trademark registration.
Some others also allege that the co-existence
of these figures only creates conflict between
them, and that in practice, it diminishes their
utility and force, since this multiplicity of
registrations will only create an environment
of exclusion and confrontation between the
elements of both registrations, rather than
creating a double or accumulative/joint
protection, which could eventually lengthen
or increase the scope of protection of a
certain intellectual property creation.
However, this author believes that the co-
existence of trademarks and Reservas is
Trademarks andReserves ofRights: Happilyever after?
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justified and indeed required, due to the fact
that in a first hand, the rules which apply to
Trademarks and to Reservas are contained in
different laws, and are executed by separate
administrative authorities, and in a second
hand, that each form of protection has its
own rules, applications and benefits.
Legal positionIn order to further analyse this co-existence
we must quote Article 90 section XIII of the
Mexican Industrial Property Law (MIPL),
which reads:
‘Art. 90. The following shall not be
registrable as trademarks:
XIII. the titles of intellectual or artistic
works as well as the titles of periodicals and
other distributed publications, the names of
fictional or symbolic characters, or real
personages portrayed, stage names and the
names of performing groups, except where
the owner of the corresponding rights has
expressly authorised such registration’
Interestingly, the above-stated article can
be divided in two parts. The first one, which
refers to all titles of intellectual or artistic
works (copyrights in essence), and the second
part of the article, which concerns all the
different types of Reservas. At first glance
one could tell that the second part of article
90 section XIII clearly was meant to separate
the protection between a trademark and a
Reserva by stating most of the figures which
may be protected by means of a Reserva but
constitute non-registrable denominations
when it comes to trademark protection.
However, as we will further analyse, this
article should not be read literally, since its
application is often surrounded by several
distinct factors which must ultimately be
taken into account in order to fully
understand its nature and purpose.
It would seem that the MIPL has already
resolved the problem of co-existence between
marks and Reservas, since the latter are
already prohibited from being registered as
trademarks. However, when analysing the
afore-quoted article, we must question if it is
indeed applicable by the Mexican authorities,
particularly by the examiners of the Mexican
Institute of Industrial Property (IMPI).
The answer is no, simply because the
examiners of said administrative office do not
have a database or tool which links or cross-
checks their own database (which would
contain all of the trademarks applied for)
with that of the Mexican National
Copyrights Institute (INDA). Therefore the
IMPI examiner, when analysing a new
application, has really no way to know which
Reservas have been granted or which others
are in process of registration; thus, he or she
cannot really determine in a precise manner
when to apply the corresponding prohibition
when “the titles of periodicals and other
distributed publications, the names of
fictional or symbolic characters or real
personages portrayed, stage names and the
names of performing groups” are filed as
trademark applications.
The exclusion of advertising promotions
from the contents of article 90 section XIII
occurred due to the fact that such figure is
not considered as a distinctive sign.
Therefore, the same cannot constitute a
trademark by definition.
Potential conflictsIn this sense, the only way to really justify
the application of the aforesaid legal
disposition would be to issue a rejection with
the full support of a database or tool which
effectively links both the registers of the
IMPI and the INDA. In view of this lack of
communication, identical denominations or
names are being registered on one end as
Reservas and on the other as trademarks.
When co-existence of two registrations takes
place, an evident problem arises within the
Mexican market due to the fact that two
different holders are legally protected by
certificates of registration which grant them
exclusive rights over the same intellectual
property creation.
For example, let’s say that subject A
registered the denomination
FASHIONATION as a trademark in
international class 16, in order to protect
magazines and publications, and separately,
subject B got the same denomination
registered as a Reserva for periodic
publications. Both subjects have a legal title
or certificate which provides them the
exclusive right to use such title or
denomination, which seems contradictory,
since two different subjects have an exclusive
right for the same word without a licence of
the holder. Thus, the right granted by means
of registration for each figure gives the
impression that it is not really exclusive.
In this case, two separate authorities are
granting two separate registrations to
protect exclusive rights of use and
exploitation over the same magazine. This
will consequently create a problem for both
the holders and the consumers once the
magazine or publication is released in the
Market. Since an identical denomination has
been granted over the same product, this
would therefore lead to several issues of
unfair competition, confusion among the
consumers and distributors of the product,
just to name a few.
The previously-exemplified conflict will
ultimately be resolved by means of
preponderance of evidence, in which the
holder who proves a prior use of the
denomination of the periodic publication will
prevail, and will therefore cancel the other
subject’s registration in order to obtain both.
This will represent an onerous and costly
process for both parties, since they will have
to initially prove legal standing, and then
gather and certify all the necessary evidence
in order to prove the prior use they allege,
making the co-existence of both figures a
serious and expensive problem.
So far, we have analysed that the co-
existence of a Reserva and trademark
registration may generate problems when the
same are owned by different holders.
However, what happens when the same
holder has both registrations in its favour. Is
this advisable? Is it worth the cost? Will it
eventually generate a “double” or an
“accumulative/joint” protection?
The answer to all of the aforesaid queries
is yes. This author considers that it is
definitely advisable to have both rights in
favour of the same holder, since it is a fact
that both figures do differ in essence and
nature. On the one hand, the Reserva is in
essence an important part of a particular
work of art which cannot be separated from
the work itself. In this order of ideas, it is
very important to remember that although
some characteristics of both the Reserva and
the trademark are common (i.e. the
distinctiveness, temporality and visibility,
amongst others), the essence of the Reserva
is that it seeks to protect several adjacent
K MEXICO: BECERRIL COCA & BECERRIL
“ When co-existence of two registrationstakes place, an evident problem arises withinthe Mexican market ”
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MEXICO: BECERRIL COCA & BECERRIL K
elements of an original work of art, such as
the title, characters, the artistic or fictional
name of the author, which will always be
inherently linked to the work of art or the
intellectual creation, the Reserva will provide
exclusive protection to these elements in the
intellectual field. On the other hand,
trademarks are tools which were created to
distinguish goods and services from those of
the same nature or kind in commerce.
That is, Reservas will protect some of the
inherent elements of the work of art
(intellectual property in a strict sense), such
as, the psychological and physical elements of
a character, a pseudonym, the name of a
band, as well as others which are strictly
bonded to the cultural and intellectual
attributes of a creation or a work of art.
Furthermore, on a separate note, trademarks
will serve to distinguish a product or service
from others of a same kind, which obliges the
fact that the mark will always be linked to
such goods or products, with more of a
commercial than an intellectual purpose.
It is notable that the versatility of the Reserva
may ultimately serve the same purposes of a
mark. However, the nature and purpose of the
figure is not in essence a tool for use in
commerce, and it would not be recommendable
to let the Reserva act as a trademark.
Joint protectionThe following example will help to
understand the advantages of the “double” or
“accumulative/joint” protection. Let’s take
for example a cartoon character which we
will name Crazy Bird. This cartoon character
may have a certain appearance which will
make it distinctive and original; thus, making
it registrable at first glance as a trademark or
as a work of art. The author or holder may
register the character as a mark for
protecting a series of goods or services; he
may also register the work of art as a
drawing obtaining the copyright and finally,
he can register the character as a fictional
character through a Reserva.
The scope of protection is widened or
increased by each figure as follows:
1. The initial drawing/design registered as a
work of art or copyright will protect the
drawing of the cartoon against its
unauthorised reproduction, mutilation and
use in any kind of products or services.
2. The trademark registration will protect the
cartoon as a design for a certain number of
products or services, depending on the
international classes protected, and it will
also broaden the scope to protect not only
the reproduction and mutilation of the
design itself, but additionally it will give
rights to the holder to initiate legal actions
against anyone who uses or exploits
confusingly similar designs or cartoons.
3. The Reserva registration will further
increase the scope of protection by
incorporating the shielding of the physical
and psychological features or characteristics,
so not only the visual or physical elements
of the design will be protected. Now, the
psychological elements of the cartoon
character will also be protected, and this will
provide the possibility to defend it against a
design or character which may be different
visually, but that then imitates or has a
similar personality to that of the holder of
the Reserva; and as we may have come to
know, fictional and human characterisation
characters always tend to have distinct
personalities in order for the people to easily
identify them. Thus, this element of
protection is also of utmost importance
against third parties which may become
possible infringers.
As evidenced by the example detailed above,
each figure (Reserva, trademark registration
and copyright) will provide different
elements that in conjunction will strengthen
and increase the scope of protection of a
same intellectual property creation. The
protection of the cartoon used in the example
would not be complete when limited to only
one of the protection options provided by the
applicable Mexican laws.
In summary, we can conclude that
trademark registrations and Reserva
registrations can indeed co-exist, even when
each one is registered by a different holder,
since the trademark authorities of the IMPI
do not have a tool or database by which they
can link their records to those contained in
the INDA, making it very hard to prohibit or
reject a registration with founded basis
according with the regulation stated in
article 90 section XIII of the MIPL.
Additionally, we can also conclude that the
best way to proceed in order to fully protect
an intellectual creation susceptible of
registration whether the same is shielded by
means of copyrights, Reserva and
trademarks, is to obtain protection from all
of them, or at least from the latter two.
In general, a same holder can protect
rights of a single element with different
applicable figures of protection, and the same
can co-exist without any problem, since as
we previously explained, each one of the
rights granted complements the others and
at the end they all add up to protect different
characteristics of a single intellectual
creation.
Notwithstanding the foregoing, if different
holders obtain protection for the same
creation from either Reservas or trademark
registrations, problems will eventually arise,
since one can hinder the other.
In view of the fact that matters related to
the co-existence of Reservas and trademark
registrations can often become confusing and
complicated, it is always advisable to contact
professional local counsel in order to
determine which elements of protection
apply for each case, since it is impossible to
establish a general rule for all intellectual
creations. However, this author considers
that in most occasions, it would be advisable
to obtain double or accumulative/joint
protection taking advantage of all the
applicable intellectual property figures
contained in the Mexican laws. K
The Americas
AUTHOR
Miguel Angel Jiménez isan attorney-at-law in thetrademark department atBecerril, Coca & BecerrilSC. He graduated fromUniversidad de las Américas, A.C. (2004)and speaks both Spanish and English. Hejoined Becerril, Coca & Becerril in 2006.He has experience in trademarks andcopyright, corporate law andadministrative proceedings. His currentpractice area is filing and prosecution oftrademarks and copyright and trademarksearches.
“ If different holders obtain protection forthe same creation from either Reservas ortrademark registrations, problems willeventually arise, since one can hinder theother ”
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MEXICO: UHTHOFF, GOMEZ, VEGA & UHTHOFF KThe Americas
Marcella Bolland Gonzalez of Uhthoff,Gomez Vega & Uhthoff explains thedifference between notorious andfamous marks in Mexican law
N otorious marks, or the declaration
thereof, has always been an issue
widely discussed in Mexico by the
IP legal community. This is so because
provisions of the Paris Convention dealing
with this topic have for a long time been used
as an effort to cancel or nullify trademarks
registered by Mexican authorities without
really making an extensive evaluation of
proposed denominations and without
examining in-depth if such marks may be
potentially affecting rights acquired by third
parties elsewhere. So, a specific regulation and
legal frame that at least tries to resolve this
issue is a step in the right direction.
While this recognition and protection is
not new in the Mexican legal system, during
the past four years certain amendments to
our Law of Industrial Property and its
Administrative Regulations have put
notorious and famous marks on the spot.
Previous regimeBefore said amendments those marks that,
due to the commercial or advertising activities
related to them, had redounded in their
knowledge among a determined industrial or
commercial sector were identified by the
Mexican Law of Industrial Property in
general terms as well-known marks.
These marks constituted an obstacle for
third parties trying to secure registration of
an identical or confusingly similar mark,
regardless of the products or services for
which the mark was well-known or those
which applicant intended to cover.
Likewise, the so called well-known marks
enabled their owners to cancel any
registration for an identical or confusingly
similar mark that for some reason had been
granted despite the aforementioned provision.
Distinction madeIn June 2005 the Mexican Law of Industrial
Property was amended to make and
incorporate a distinction between notorious
and famous marks.
According to the Law, the notorious marks
are those marks that are known by a
determined sector of consumers or certain
commercial circles of the country, as a
consequence of the commercial activities
developed either in Mexico or abroad, or as a
consequence of its promotion or advertising.
On the other hand, a mark is regarded as
famous when it is known by the majority of
consumers.
Moreover, the amendment incorporated a
specific proceeding to obtain declarations of
notorious and famous marks.
In essence, the Law provides that the
owner of a notorious or famous mark may
obtain a certificate in which such status is
recognized, for which purposes substantial
and specific evidence has to be exhibited
before the authority, all tending to
demonstrate that the mark has been known
by a determined commercial circle or by the
majority of the population, depending on
whether the declaration is requested for a
notorious or for a famous mark.
Although this amendment was enacted in
2005, it did not come into effect until
September 2007, when the Mexican Institute
of Industrial Property published the official
tariff including the fees to be paid for these
declarations, and therefore the amendment
that was enacted in June 2005 actually came
into effect.
In terms of protection, we may say that
the amendment did not substantially vary
the one that had been granted by the then
identified as well-known marks, since
notorious and famous marks still constitute:
1) A bar for the registration of a third
party’s application for an identical or
confusingly similar mark.
2) A right to be enforced against those
registrations granted despite the
aforementioned prohibition, and
Notorious marks
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3) A right to be enforced against third
parties using an identical or confusingly
similar mark without the brand owner’s
consent.
Initially, all of the above, regardless of the
involved products or services, which actually
corresponds to the principle that has ruled
Mexican Law since at least 1991, when the
Law of Development and Protection of
Industrial Property was enacted.
It was from that moment that Mexican
provisions established the protection of the
then referred to as well-known marks, now
identified as notorious or famous marks,
regardless of the goods or services that could
be involved, i.e. providing a protection that
actually went beyond that provided by Paris
Convention.
Subtle differenceWhile it may seem that the difference
between notorious and famous marks only
refers to the extent in which the mark is
known a careful reading of article 90,
sections XV and XV bis, of the Mexican Law
of Industrial Property allows us to perceive a
slight difference between the effects of the
notorious and famous marks.
While section XV bis, which refers to
famous marks, i.e. those know by the
general public, provides that words, figures
or three-dimensional shapes should not be
registered if they are identical or
confusingly similar to a mark that the
authority considers famous, regardless of
the products or services for which
protection is sought, section XV of article
90 has a different drafting.
Initially in section XV it is also provided
that words, figures or three-dimensional
shapes should not be registered if they are
identical or similar to a mark that the
authority considers well-known, regardless
of the products or services for which
protection is sought.
However, in the second part of section
XVI it is established that the prohibition for
registration contained therein shall come
into effect provided that the use of the
proposed mark:
a) May cause confusion or likelihood or
association with the owner of the
notorious mark, or
b) May constitute a non-authorised benefit of
the owner of the notorious mark, or
c) May tarnish the notorious mark, or
d) May dilute the distinctive character of the
notorious mark.
The aforementioned hypothesis shows a slight
difference not in regards to the extent of
protection of a notorious or famous mark, but
on the facts that should be demonstrated either
to consider notorious marks as a bar for
registration or as a ground for cancellation.
While this difference does not restrict or
limit the effects of the notorious mark it puts
an additional burden of proof to the owner of
the notorious mark, since it will be compelled
to demonstrate that registration of an
identical or confusingly similar mark may
originate confusion, constitute an
unauthorized benefit, tarnishment or dilution
of the notorious mark.
In view of the above, we may say that the
famous mark constitutes an absolute bar for
an identical or confusingly similar mark, or
may be enforced as a ground of cancellation
for a registration granted to cover an
identical or confusingly similar mark or be
the ground for requesting the declaration of
an administrative infringement.
Differently, in order for a notorious mark
to be considered as a bar for registration of
junior marks, or provide a ground for
cancellation of an already registered mark, it
is imperative that likelihood of confusion,
unauthorised benefit or dilution are
demonstrated, being necessary to
demonstrate that applicant of the mark that
is identical or confusingly similar to the
notorious mark, the owner of a registration
for such mark or the third party using
without authorisation the notorious mark are
to some extent involved in the commercial or
industrial sector in which the mark is known.
Taking the above into account, we may
say that although we repeat the extent of
the protection of the notorious mark is not
expressly restricted or determined by the
involved products or services, when dealing
with notorious marks – in light of the
additional subjective circumstances we have
referred to – enforcing the rights derived
from these marks may involve an additional
probative task.
Thus, the broad protection of notorious,
famous or well-known marks has existed in
Mexico since 1991, when the Law of
Development and Protection of Industrial
Property was enacted, since the
corresponding provisions established the
protection of well-known marks, regardless of
the goods or services that could be involved.
Under the described circumstances, it is fair
to conclude that protection in Mexico of those
marks known by a determined industrial or
commercial has been even wider than the
protection provided even by Paris Convention
for more than 25 years, since the provisions
applicable as from 1991 have granted such
protections without the involved products or
services to make a difference or constitute a
limitation for brand owners.
Regardless of the above, what should be
specially recognized of the amendment of
the Mexican Law of Industrial Property
enacted on 2005 is the fact that it did not
affect the availability of protection of
notorious and famous marks, even without
having the corresponding declaration from
the Mexican authority.
The above since the Law of Industrial
Property provides the possibility of
obtaining the declarations of notorious and
famous marks, but does not establish such
declarations as a requirement in order to
grant notorious and famous marks the
corresponding recognition and protection.
Indeed, a brand owner that considers its
mark to be notorious or famous does not need
to obtain a declaration in such sense in order
to challenge, for instance, the registration of
an identical or confusingly similar mark.
Moreover, leaving this possibility open did
not also seem reasonable but also solved a
potential doubt that could have raised if the
Law provided that only by exhibiting a
declaration of notoriety or fame could a
cancellation action on such ground be
instituted.
If that had happen, it could have been
thought that owners of notorious and famous
marks could not have challenged any
registration granted by the Mexican
Institute of Industrial Property before the
declaration had been obtained.
The above in view of the contents of article
98 bis-1 which provides that the declaration
constitutes an administrative act by means of
which the Institute, in light of the evidence
KMEXICO: UHTHOFF, GOMEZ, VEGA & UHTHOFF
“ In June 2005 the Mexican Law of IndustrialProperty was amended to make andincorporate a distinction between notorious andfamous marks ”
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MEXICO: UHTHOFF, GOMEZ, VEGA & UHTHOFF K
furnished declares a determined mark as
notorious or famous at the time the declaration
is made, and therefore may produce legal effects
as from the date in which they are rendered.
From our point of view, any doubt would
have been solved in light of the provision
contained in section I of article 151, according
to which a registration shall be cancelled if
granted against the provisions of the Law that
was in force by the time it was granted.
Consequently, if conflicting registrations
were granted before the commented
amendment a brand owner could support a
cancellation action against an identical or
confusingly similar mark on the provisions
that were in force before June 2005, which we
reiterate recognized and protected the then
referred to as well-known mark.
Now, even when the declarations of
notoriety and fame do not constitute a
procedural requirement we consider them to
be an important alternative if we take into
account that the Law of Industrial Property
establishes a number of requirements and
evidence that should be produced in order to
obtain the corresponding declaration.
In essence, such requirements refer to the
necessity of demonstrating that the mark
has been known by a determined
commercial circle or by the majority of the
population. The extent to which the mark
is known impacts on whether the marks
should be regarded as notorious or famous.
A mark becomes notorious due to the
knowledge of a determined circle of
consumers while a mark should be regarded
as famous when the majority of the
population is acquainted with the mark.
Submission requirementsDespite of the difference we have
commented on in regards to notorious and
famous marks, the nature of the evidence
required by the Law may be regarded as the
same. In article 98 bis-2 the Law provides
the following list of the material that must
be submitted before the Mexican Institute of
Industrial Property when requesting a
declaration of notoriety or fame:
• Market research indicating the actual or
potential consumers who recognise the
notorious or famous mark
• Market research indicating a sector of the
public, other than actual or potential
consumers, who recognize the notorious or
famous mark
• Market research indicating business circles
dealing with the type of goods and / or
services to which the mark is applied
• The date of first use in Mexico and abroad
• The extent of continuous use of the mark
in Mexico and abroad
• The channels of commercialisation in
Mexico and abroad
• The means by which the mark is promoted
in Mexico and abroad
• The investment in advertising and
promotion of the mark during the last three
consecutive years (Mexico and abroad)
• The geographic area in which the mark is
known
• Sales figures for products or the income
earned for rendering the services covered
by the mark during the last three
consecutive years (Mexico and abroad)
• The economic value of the mark
• Certificates of registrations in Mexico and
abroad
• Franchises and licenses granted to third
parties
• The market share of the goods or services
protected by the mark.
Probably, after reviewing the number and
nature of documents that should be gathered
and submitted before the Mexican authorities
someone may wonder whether it is compulsory,
convenient or even worthwhile to obtain a
declaration of notoriety or fame, especially if we
take into account that the extent and protection
of notorious and famous marks is not
conditioned to obtaining said declaration.
We would have to say that the answers to
these questions depend on the brand owner,
the mark, the counterfeit problems they have
been faced in Mexico and prior experiences
regarding attempts of third parties to
overtake the mark.
Once again, obtaining the declaration of
notoriety or fame is not compulsory
although brand owners could definitively
find this alternative as an investment and a
time and cost saver resource.
As explained the notorious and famous
marks may constitute an impediment for
later applications or the right upon which
cancellation and infringement actions may
be instituted.
However, every time a brand owner
decides to enforce its notorious or famous
mark it is compelled to demonstrate before
the authority the notorious or famous status
of the mark, for which purpose substantial
probative material should be exhibited.
Given that notoriety and fame derive from
the awareness of the mark, either in an
industrial or commercial sector, or by the
majority of the population, in order to
demonstrate such status substantial invoicing
and advertising materials should be submitted,
as to conclude that said activities have placed
the mark in the mind of consumers.
Additionally, in view of our legal system
the commented evidence should comply with
certain formalities in order to have its
probative value recognized. Among these
requirements, we could mention that the
documents should be exhibited either in
original or certified copies, being necessary
to translate those documents drafted in
languages different from Spanish.
Although materials offered as evidence
are kept on the official files and it is possible
to obtain certified copies of same, obtaining
certified copies before the authority is
subject to the payment of the corresponding
official fees.
In view of the above, it turns out that
every time the owner of a notorious or
famous mark tries to enforce its rights
against a third party time and resources
should be invested in order to gather, prepare
and offer supporting evidence.
If on the contrary, the brand owners take
the time to prepare the evidence required by
the law in order to obtain a declaration of
notoriety or fame and follows the
corresponding procedure at the end they will
have a document that would be principal
evidence required to support a cancellation
or infringement action: a document
demonstrating that the competent authority
has already recognised the notorious or
famous status of the mark.
Although at this point there are not
administrative or judicial precedents
involving declarations of notoriety and fame
and whether they are the ultimate evidence
in cancellation or infringement proceedings,
from a procedural point of view these
declarations constitute public documents that
according to our laws have absolute
probative value, which we consider may
provide brand owners an alternative to
expedite the enforcement of their marks in
Mexico and bring awareness to the authority
in charge of granting registrations of the
existence of marks that due to their impact
on the consumers require a particular
recognition. K
The Americas
AUTHOR
Marcela Bolland Gonzálezis a partner at Uhthoff,Gomez Vega & Uhthoff,part of the trademarksarea of the firm.
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MEXICO: BASHAM, RINGE & CORREA KThe Americas
Adolfo Athié Cervantes of Basham, Ringe & Correa in Mexicosays intellectual property should be protected under civil, notadministrative, law
T he purpose of this article is to suggest
an efficient system to resolve the
problem created by the torturous road
that an intellectual property rights owner
must take today in order to be compensated
for the invasion of his or her rights.
Today, the procedural system to claim
one’s intellectual property rights is not very
practical because the damage caused to the
owner whose rights are being violated is
almost never cured.
Indeed, the system that Mexico has adopted
is administrative. This means that the law that
deals with the subject matter is deemed to be a
question of public policy with the result that a
violation of the law: (a) is considered a
violation of an administrative act (such as a
patent registration) and (b) a prejudice suffered
by the general public. The effect of this is that
the violation of an intellectual property right is
punished with an administrative fine payable to
the Federal Treasury Department and not to
the owner of the prejudiced right.
Under these circumstances, the owner of
the prejudiced right may obtain compensation
based on an infringement of his or her rights
only after a long administrative litigation
process, which could last between three and
four years, where first, the existence of an
infraction must be declared, and then the
prejudiced owner must file a civil lawsuit in
order to claim the damages suffered by the
claimant, something which means a new trial
of two or three more years.1
Towards a civil action It is incomprehensible that the same thing (a
property right) is given a different legal
treatment, depending on its species.
The term ‘property right’ in its most
general sense is the legal right that an owner
has, with respect to something, to prevent
third parties from invading the owner’s legal
domain over that something. Generally
speaking, property can be divided into: (a)
tangible and (b) intangible property. With
respect to property rights in rem and
intellectual property, the inherent and
common characteristics of both are ius
fruendi, ius abutendi and ius utendi.
Nevertheless, even though tangible and
intangible property belong to the same type,
the legislator has treated them differently:
tangible goods have a civil/commercial nature
governed by private law, while intangible
goods have an administrative nature and are
governed by public law. Why is there a
distinction when in both cases, the property
right in question is of a private nature? Some
administrative lawyers have maintained that
intellectual property belongs in the area of
public law because its violation prejudices the
administrative act that created it and also
prejudices the general public, which requires,
they affirm, the intervention of the state in
order to punish, by means of an administrative
fine, the transgressor of the intellectual
property rights in question. However, this
argument could apply to in rem property rights
as well and, therefore, the absurd consequence
would be to also include in rem property rights
in the public domain, something which, it is
insisted, goes against the concept of property.
As there are tangible and intangible goods
which are capable of being owned, the proposal
is to move industrial property (patents,
distinctive signs, trade secrets, and franchises)
to the Commercial Code and copyrights to the
Federal Civil Code, where it was originally
regulated. The Mexican Institute of Industrial
Property and the National Copyright Institute
would be converted into simple registration
entities as is already the case with the Public
Registry of Property and Commerce.
Under this structure, cancellation and non-
use cancellation would be heard by
administrative courts, and infringement of
rights would be heard by civil courts, and if
found admissible, damages would be ordered to
be paid, and claims would be resolved in only
one judgment. This would cut litigation time
in half and intellectual property right owners
could obtain compensation for damage upon
the determination of the existence of a
usurpation of his or her rights. The proposed
system operates only for tangible and not for
intangible property, something which is
inconsistent with our legal system and causes
significant delays in imparting justice. The
proposal is that the academic community,
associations, and the Federal Congress begin
studying the question in order to change the
intellectual property structure in Mexico. K
1 INTELLECTUAL PROPERTY. THE PRIOR
DECLARATION OF THE EXISTENCE OF AN
INFRACTION BY THE MEXICAN INSTITUTE OF
INTELLECTUAL PROPERTY IS NECESSARY IN
ORDER TO ADMIT A CLAIM FOR DAMAGES.
(Register No. 181491; 9th Period, First Division
of the Supreme Court, Weekly Federal Judicial
Bulletin; XIX, May 2004, page 365, Precedent
First/J. 13/2004. Court Precedence, Subject: Civil
Intellectual property inMexico: towards civil law
AUTHOR
Adolfo Athié Cervantes hasbeen a partner at BashamRinge & Correa since July2008 in the area ofintellectual property in theMéxico City office. He is focused onLitigation and Consulting andadministrative litigation in general, withbroad experience in Registration andProtection of brands as well as in thelicensing of Intellectual Property Rights.Actively involved in Amparo Judgmentsbefore the Federal Tribunals for theprotection of Intellectual Property Rightsagainst Falsification and UnfairCompetition.
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MEXICO: DUMONT BERGMAN BIDER KThe Americas
Jorge Molet and Yulen J Contreras of Dumont Bergman Biderdiscuss the implementation of online IP trials in Mexico
O n 12 June 2009, the decree of
amendment to the Federal Act of
Contentious Administrative
Procedure and the Organic Act of the
Federal Tribunal on Tax and Administrative
Matters was published on the Official
Gazette of the Federation. This amendment
states the rules for the implementation of
online trials, which will allow users to access
files and submit legal pleadings.
This amendment is important in Intellectual
Property, as the Special Branch on Intellectual
Property Cases of the Federal Tribunal on
Tax and Administrative Matters (TFJFA) has
declared that it will be the first court to
implement the new scheme of “Online Trials”.
BackgroundSince its implementation, the Mexican
justice system has been based on the
European Civil tendencies; this means our
proceedings are grounded on a system by
which the parties on a dispute file their
pleadings, manifestations, final arguments
and evidences in writing before the
competent court, which will gather
together all those documents in one
physical file.
Due to the large amount of cases and the
amount of paper accumulated, it is necessary
to have large spaces in court facilities
devoted to storing and conserving the files
which the trials are based on. This situation
has caused a major delay in issuing
resolutions because of the time-consuming
process of elaborating and studying all that
information. This is a major setback to the
administration of justice, which prevents the
parties having quick and efficient access to
the benefits that a promptly-issued decision
could provide.
The situation is similar in the private
sector. Law firms have adopted the same
written system as the administrative court,
hence the page number and the spaces
needed to store the written legal document
doubles. Under these circumstances, if we
take into account that approximately 80,0001
paper sheets can be produced from one tree,
the environmental damage is devastating.
Litigation in Mexico CityAs it happens in every big city, to litigate on
Intellectual Property matters or any other
subject case in Mexico City, carries a great
investment in human and material
resources, such as personnel, transportation,
combustibles and time since traffic and
other contingencies that are not under
control of the users often complicate
prosecuting proceedings, although there are
not long distances.
Until now, this situation does not fit the
principles stated in the TRIPS and the Paris
Convention for the Protection of Industrial
Property, both international treaties which
Mexico is part of, and which state the
commitment of parties to create a sound and
viable technological base which allows the
implementation of an agile and fair system of
Intellectual Property matters.
The amendmentUnder this scenario, the Online Justice System
(SJL) is created with its main objective which
is to reduce time in the prosecution of an
administrative trial before the Special Branch
of Intellectual Property Cases of the Federal
Tribunal on Tax and Administrative Matters,
which currently takes about 350 days
approximately. Also, this system will make it
possible to prosecute administrative trials by
internet from the beginning to the end,
sometimes coexisting with the traditional trial.
The claimant, at the moment of filing the
initial pleading, and the respondent at the
moment of filing its answer, shall indicate their
intention to prosecute the trial by the SJL or
the typical way, and shall provide their email
address to be served of all official notices of the
Tribunal. If the parties omit such stating, it
will be understood that traditional trial is
chosen. However, the administrative
authorities shall always proceed via internet.
Regarding security, in order to file an online
trial, the involved parties shall count with an
electronic signature, access code and password,
which will be provided once authorized by the
SJL. Users will be able to consult their files 24
hours a day, 365 days a year, and the system
will generate a receipt with the date and hour
in which the file was viewed, reducing time
and resources in trials prosecution.
AdvantagesThis amendment represents a great
development in the Mexican justice system
in general, but particularly for the
Intellectual Property system, it is highly
relevant as it will allow complying with the
commitments acquired in the International
Treaties in which Mexico is part of.
Mexico has had successful experiences
regarding the implementation of technology
in administrative procedures, in subjects such
as taxes, e-banking, public information access,
electronic signature, Constitutional appeals
and consumer protection. Hence, most of the
consumers are familiar with the online
system, which shall be implemented and in
use in December 2010.K
1 http://science.howstuffworks.com/question161.htm
Online justice arrives in Mexico
AUTHORS
Jorge Molet is a Mexican IPattorney and IT andcopyright manager atDumont Bergman Bider.
Yulen J Contreras is aMexican attorney, part ofthe legal department atDumont Bergman Biderfor more than a year.
“ The system will make it possible to prosecute administrative trials by internet from the beginning to the end ”
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K PERU: ESTUDIO DELION
Alain C Delion and Lilie C Delion ofEstudio Delion explain how Peru’saccession to the PCT will improve thecountry’s patent system
On 6 June 2009, the Patent
Cooperation Treaty (PCT) came
into force in Peru. As a result,
there are now three ways for obtaining
protection for an invention: 1) the national
application or direct application 2) the
application under the Paris Convention and
3) the application under the PCT system.
The PCT seeks to unify the
requirements and forms necessary to
register an invention worldwide.
Therefore, under the PCT system it is
possible to apply for the protection of an
invention in some or all of the 141 member
countries of the Treaty.
The PCT procedure comprises two
essential phases, namely, an International
Phase and a National Phase. The
international phase consists in filing a
patent application in the Receiving Office, in
this case the Peruvian Patent and
Trademark Office - INDECOPI, or any
other member or guest country of the PCT.
This application must indicate the will to
use the PCT process; and the National
Phase in which it is granted or denied the
invention in accordance with the national or
regional laws of each country.
As a first advantage of the PCT procedure,
the application will only have to be
submitted in a single language, in spite of its
validity in all the countries, where the
protection was requested.
INDECOPI as Receiving Office in Peru
sends the application to the International
Search Authority (ISA), which carries out
the search of all those documents having a
previous date to the PCT application or to
the priority application that could affect the
novelty or inventive activity. After that the
ISA issues a written opinion regarding the
patentability of the invention.
The applicant may request an
international preliminary examination at the
International Preliminary Examination
Authority (IPEA) to make any necessary
amendments and thus ensure the application
fulfils all the patentability requirements.
If an application is not filed in the country
of origin, and in consequence it is not
claimed any priority of an earlier application,
the priority date for the purposes of the PCT
procedure will be the filing date of the
international application.
After 18 months from the priority date,
the WIPO publishes the international
application.
It is worthy to point out that during the
international phase it is not possible to carry
out any division or splitting of the
application. If there were several inventive
concepts within the same application, it
should be paid the respective fee for each one.
It is possible to assign the international
application, being the advantage of recording
it in the international phase that it is not
required the payment of any fee.
In order to enter into the national phase
it must be paid the respective national fees
and, in some cases, filing translations of the
application.
Peru new memberof the PCT
The Americas
“ As a firstadvantage of thePCT procedure, the application willonly have to besubmitted in a singlelanguage ”
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PERU: ESTUDIO DELION K
In the national phase, the international
reports issued by WIPO for the PCT
applications are dissuasive, but not legally
binding, that is, the decision on approving or
denying a patent application is strictly a
Peruvian Patent Office’s decision or any
other national office from the country where
the protection is required.
Before entering into the national phase, the
applicant has the chance to amend or correct
his application, for example the number of
claims. It should be taken into account that if
it is reduced the number of claims, the fee
will be lower since the National Bureau
charges for the number of pages amended or
corrected in the list of claims.
During the national phase, the Peruvian
authority will do a new examination of the
application, but this will take less time
because INDECOPI will hold the report
received from the International Search
Authority (ISA), and although this is a non-
binding report, its backgrounds are reviewed.
Also, it is not requested formal requirements
in the national phase as these were already
filed during the PCT International Phase.
The assignation of Peru to the PCT has
benefited industry on an international level,
as well as nationally, since most of the PCT
receiver offices offer discounts of up to 90%
for applicants who belong to developing
countries.
Likewise the PCT allows applicants to
delay entry into the national phase, where
the highest investment is carried out, until
30 months, offering a prior written opinion
on the possibilities of approval. It also
avoids unnecessary costs, as it allows
applicants to obtain an international
preliminary examination on the
patentability of the invention.
Moreover, it also benefits to the member
countries because they receive the result of
the international search and a written
opinion or report of the preliminary
examination on which can be based the
granting or refusal of the patent, the
workload of member patent offices is
reduced.
The PCT is the most effective instrument
for obtaining patents worldwide because of
the tools provided by the system, which are
available to all member applicants. This
treaty therefore marks the entry of Peru into
a new stage of modernisation and
globalisation. K
The Americas
AUTHORS
Alain C Delion is a partnerand lawyer at EstudioDelion. He is a graduate ofthe Faculty of Law of thePontificia UniversidadCatólica del Perú(Pontifical CatholicUniversity of Peru) and specialised inIntellectual Property and Free Competition.Delion is a member of the InternationalTrademark Association, where he is amember of the Latin America & CaribbeanSubcommittee (LA&C SC) of INTA´sLegislation & Regulation Committee (LRC)as well as member of the International BarAssociation based in London, UK.
Lilie C Delion is a partnerand general manager ofEstudio Delion. She hasmore than 22 years ofextensive professionalpractice in IntellectualProperty. She is currently amember of theInternational Trademark Association, aswell as the Peruvian-Germany Chamber ofCommerce and Industry and Chamber ofCommerce of Spain in Peru.
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PERU: ESTUDIO COLMENARES KThe Americas
Dr Carmen Arana of Estudio Colmenares outlines key changes in patents, marks and observance
T he United States-Peru Free Trade
Agreement, known as the US-Peru
Trade Promotion Agreement,
started to be negotiated within the
framework of ALCA, a project for achieving
a free trade area for the Americas involving
34 American countries, which began in 1994.
After several cabinet meetings held in Miami
in 2003, these negotiations were adjourned
as Brazil and Argentina did not agree with
certain Agriculture and Intellectual Property
issues. Before this suspension, negotiations
for a Free Trade Agreement were initiated.
In the very beginning, the Andean
countries of Peru, Colombia and Ecuador
participated in the US-Andean negotiation
and Bolivia attended it as an observer. Peru
concluded the negotiation after 13 meetings,
during these ones Ecuador left and
following this, Colombia decided to close
without achieving the ratification by the
American Congress.
During 2006, approval and ratification were
granted by the Peruvian authorities and in
2007 by the US Authorities. On this regard, of
note is that in the United States, the
Democrats objected to certain Intellectual
Property and Environmental issues; therefore,
some articles were modified and added to the
Agreement and later on, was passed and
ratified by the American Authorities.
During 2008, in order to comply with the
commitments acquired by the APCPE, the
implementation process of the Agreement was
carried out, which would enter into force on 1
February 2009. In the Intellectual Property
field, new regulations which reinforce the
Intellectual Property rights have been issued.
Previously, in order to avoid Community
conflicts, Decision 689 of the Andean
Community is enacted, which allows the
Andean countries to analyse and develop their
domestic Industrial Property regulations.
The most important regulations are: in
patents, Peru has embraced several
international agreements, such as: PCT,
UPOV and TLT.
The PCT shall allow the applicant of a
patent to take advantage of a priority benefit
for two more months for exceptional cases.
UPOV shall allow plant protection for the
breeder and the TLT shall allow simplification
and harmonisation of the trademark
applications. With regard to patents, an
adjustment of unreasonable delays in the
granting of patents except for patents of
pharmaceutical products is established, that is
to say, if the procedure of the patent
application delays more than five years as
from the filing date of the patent application
until its granting (or three years as from the
substantial examination) caused by the Patent
Authority, this one must compensate for the
delay term it has caused. The delay shall not
be compensated when it is caused by the
owner or by act of nature or force majeure.
Another novelty of the Peruvian Law (Art.
39 of Legislative Decree 1075) which
comprises the commitment of the APCPE
(Art. 16.9.5 of the APCPE) relates to the
Bolar Exception and allows a third party to
use the protected matter by a patent in force
in order to provide the necessary information
to support the approval application for
commercialising pharmaceuticals or
pesticides and that the owner does not
exercise the actions granted by the patent.
Likewise, criteria for the Patent Examiner
are added, such as: sufficiency, clarity and
objective, practical and substantial utility.
In relation with marks and in virtue of the
joining to the TLT, the multiclass registration
is established, which means that products or
services of several classes can be comprised in
a single application causing a single
registration. Dividing both applications and
registrations by paying fees is also allowed.
Moreover, the registration of a License of
Marks is not mandatory; its registration
shall depend on the parties’ discretion.
Regarding the conflicts between a registered
mark and an appellation of origin, the pre-
eminence of the mark as previously applied
to or as registered is provided for.
With respect to the observance, of note is
that border measures have been approved in
order to fight against copyright piracy and
counterfeiting of trademarks. Short-term
procedures have been set up so the rights
owner can request the Customs
Administration to suspend the passage of the
merchandise if they suspect that it holds a
counterfeited mark, that is confusingly similar
or pirated products, which damage the
copyrights. A deposit or guarantee is
established in order to compensate the affected
person in case there is no infringement.
On the other hand, the Peruvian
Government has issued Legislative Decrees
1072 and 1074 which establish a protection
regime for test data and non-disclosed
information. Legislative Decree 1072 related
to non-disclosed test data for pharmaceutical
products points out a five-year protection
term as from the granting date of the health
registration or as from the first approval date
for the commercialisation if the registration
was granted in other country provided that it
is filed in Peru within a six-month term. Non-
disclosed information against disclosure and
against its use by third parties is protected to
support an approval application of health
registration.
Legislative Decree 1074 establishes a
security and efficiency protection regime in
the authorisation procedure for
commercialising chemical plaguicides for
agricultural use, the legal force of the
protection is 10 years as from the approval
date for commercialising the new chemical
and agricultural product in Peru.
The impact of the APCEP is an
improvement for the regulatory framework,
an institutional enhancement and an
administrative simplification and
modernisation of justice, which shall improve
the quality in the processes and development of
capacities by improving the competitiveness of
the services as rendered. This shall cause legal
security and enhancement of the Intellectual
Property Rights to the Applicants - users with
respect to Intellectual Property matters. K
US-Peru free trade agreement
AUTHOR
Dr Carmen Arana is head ofthe legal department andassociate senior attorney-at-law of Colmenares LawFirm, Lima, Peru (trademarkand patent attorneys).
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K US: DINEFF TRADEMARK LAW
Justin R Young of Dineff Trademark Lawexplains the impact of recent trademarkopinions in the US
Y es, that’s what my kids ask me
every time we are on the road, but
it is also what colleagues and
clients from abroad have been asking me
with increased frequency when the issues
discussed in this article come up.
I am referring to changes established by
precedential opinions issued by the TTAB,
and the jurisprudence that evolved (and
continues to evolve) from them; one issued
in 2003 granting the cancellation of a
Federal registration based on fraud,1
and
the other issued in 2008 sustaining an
opposition based on Applicant’s lack of
bona fide intention to use the mark.2
Accordingly, the objective of this article
is to try to address some of the concerns
that those abroad familiar with the issues
may have but, more importantly, to transmit
to those abroad not yet fully familiar with
such issues a sense of urgency to do so. In
order to accomplish this, I will try to
convey why and how these changes affect
you, as well as provide what I believe
should be a safe practice to minimise the
risk of having these issues affect you.
Why?Every trademark application filed before the
USPTO must have at least one basis and
must be accompanied by a signed
declaration. Moreover, to maintain a
registration in force, additional signed
declarations must be filed. Below I transcribe
the declaration that those filing a US
extension of protection of an International
Registration, under Section 66(a) basis, must
sign. I am also transcribing the post-
registration declarations included in filings
made under Section 8 and 15.
Declaration under Section 66(a)By designating the United States in the
international application/subsequent
designation, the person signing below
declares that:
(1) the applicant/holder has a bona fide
intention to use the mark in commerce
that the United States Congress can
regulate on or in connection with the
goods/services identified in the
international application/subsequent
designation;3
(2) he/she is properly authorized to execute
this declaration on behalf of the
applicant/holder;
(3) he/she believes applicant/holder to be
entitled to use the mark in commerce
that the United States Congress can
regulate on or in connection with the
goods/services identified in the
international application/subsequent
designation4
; and
(4) to the best of his/her knowledge and
belief no other person, firm, corporation,
association, or other legal entity has the
Are we there yet?
The Americas
Are we there yet?
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www.ipworld.com The Americas | 2009 | 35
US: DINEFF TRADEMARK LAW K
right to use the mark in commerce,
either in the identical form thereof or in
such near resemblance thereto as to be
likely, when used on or in connection
with the goods/services of such other
person, to cause confusion, or to cause
mistake, or to deceive.
I declare under penalty of perjury under the
laws of the United States of America that all
the foregoing statements are true and correct
to the best of my knowledge and belief. I
understand that willful false statements and
the like may jeopardize the validity of the
application or document or any registration
resulting therefrom, and are punishable by
fine or imprisonment, or both (18 U.S.C.
§1001). 35 U.S.C. §25(b).
Section 8
Unless the owner has specifically claimed
excusable non-use, the mark is in use in
commerce on or in connection with the goods
and/or services identified above, as evidenced by
the attached specimen(s) showing the mark as
used in commerce.
Section 15
The mark has been in continuous use in
commerce for five (5) consecutive years after the
date of registration, or the date of publication
under Section 12(c), and is still in use in
commerce. There has been no final decision
adverse to the owner's claim of ownership of
such mark, or to the owner's right to register the
same or to keep the same on the register; and
there is no proceeding involving said rights
pending and not disposed of either in the U.S.
Patent and Trademark Office or in the courts.
I believe that it is of utmost importance that
you carefully read, and fully familiarise with,
the text of the above declarations, for it is
the disregard of the importance of same
what has caused the changes discussed
herein to come about (so, if you skipped
reading them, go back and read them before
continuing further!). Simply put, challenges
based on fraud or lack of bona fide intention
to use the mark are made because
applicants/registrants did not pay careful
attention to ensure that what they were
declaring was, indeed, fully accurate.
How?
FraudThe Medinol opinion basically established
that an applicant/registrant commits fraud if
it alleges actual use as to more than one
good, when it knew or should have known that
it was not using its trademark in connection
with at least one of the goods. In addressing
registrant’s attempt to characterise the
misstatement as an oversight, the TTAB
observed that “[t]he appropriate inquiry is…
not into the registrant’s subjective intent, but
rather into the objective manifestations of that
intent”, and, in referring to the warnings
contained in the Statement of Use, that
“[s]tatements made with such a degree of
solemnity clearly are - or should be - investigated
thoroughly prior to the signature and submission
to the USPTO.”
Since then, numerous decisions have
reaffirmed the standing in Medinol in
denying defences to a fraud challenge as
insufficient, including “games of semantics”,
lacking counsel and misunderstanding of
requirements, insufficient understanding of
the English language and miscommunication,
lack of proper understanding of “use in
commerce”, misunderstanding the
requirements and poor health of Applicant,
and relying on advice of counsel, among
others. Similarly, there have been attempts to
try to avoid a fraud attack by amending the
registration, which had been unsuccessful as
they had been done after the mark had been
challenged.
Recently, however, the TTAB issued a
precedential opinion that limits the effects
of a successful fraud claim in a multi-class
application/registration, so as to affect only
the classes where goods/services where
fraudulently claimed.5
More importantly, in what will probably
be considered a turning point in the
Medinol jurisprudence, a 2008 TTAB
opinion, recently re-designated as
precedential, established that “the correction
of any false statements prior to any actual
or threatened challenge to the registrations
creates a rebuttable presumption… of no
intent to commit fraud on the Office.”6
Interestingly enough, in said case the
Opponent had admitted not having used the
mark on all goods at the times the multiple
declarations were filed, amended the
registration many years after having filed
the first declaration and gave an excuse
likely to have been rejected under the
Medinol jurisprudence. Since the opinion
dealt with a motion for summary judgment,
however, the TTAB did not rule on what it
would consider sufficient evidence to rebut
such presumption.
How else would somebody challenging such
a registration be able to prove fraud, if the
non-use admission is no longer enough? Is the
TTAB going to start looking into registrants’
subjective intent on such cases? Is this opinion
going to mark the beginning of the Zanella
jurisprudence, applicable only to those
registrations cured before a challenge or
threat of challenge is made, and for which
some of the excuses rejected under the
Medinol jurisprudence may now be accepted?
Lack of Bona Fide intent to useIn the L.C. Licensing opinion, and citing
Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993), the
TTAB sustained the opposition concluding
that “absent other facts which adequately
explain or outweigh the failure of an
applicant to have any documents supportive
of or bearing upon its claimed intent to use
its mark in commerce, the absence of
documentary evidence on the part of an
applicant regarding such intent is sufficient
to prove that the applicant lacks a bona fide
intention to use the mark in commerce as
required by Section 1(b)."
More troublesome for foreign
applicants/registrants, but as anticipated
earlier in this article, a recent precedential
opinion sustained an opposition against a
foreign Applicant based on lack of bona fide
intention to use the mark.7
In said opinion,
the Board noted that “[i]n determining
whether an applicant under § 44(e) has the
requisite bona fide intent to use the mark in
US commerce, the Board uses the same
objective, good-faith analysis that it uses in
determining whether an applicant under §
1(b) has the required bona fide intent to use
the mark in U.S. commerce.”
It should be noted that other factors that
may show lack of bona fide intent to use a
The Americas
“ There have been attempts to try to avoid afraud attack by amending the registration,which had been unsuccessful as they had beendone after the mark had been challenged ”
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36 | The Americas | 2009 www.ipworld.com
The Americas
mark are, for example, having a broad
listing of goods/services, lack of industry-
related experience, absence of steps or
planning to use the mark, filing various
applications without using or abandoning
them or to prevent others from using the
mark, misrepresenting the goods/services.
No reason to panic, however, as a showing
of bona fide intent to use a mark could be
made, for example, by conducting a trademark
availability search, attempting to secure
licensees or distributors, obtaining regulatory
permits, using the mark in test marketing,
preparing labeling and graphic design work,
registering a domain name for the mark; or
even perhaps using the mark abroad.
It has been said that foreign applicants
have had in the past an advantage because
the Federal registration system allowed them
to obtain a registration without having to
show use of the mark in US commerce, an
option unavailable to US-based applicants.
The L.C. Licensing opinion marks the
beginning of what some may believe that will
“level the field” between foreign applicants
and their US-based counterparts, as such
parties now have to be substantially more
careful and diligent in establishing a real and
effective intention to use a mark to secure
protection of its rights in the United States.
So, are we there yet?I wish I could tell you the same thing that I
tell my kids (“patience is like a tree with
bitter roots but with very sweet fruits”,
Persian proverb), but the reality is that we
still have a long way to go. Therefore,
foreign counsels and in-house counsels of
foreign companies alike are well-advised not
to keep idle waiting for the jurisprudence to
establish a more certain treatment of these
issues. A healthy approach to these matters
would be as follows:
1. First and foremost, it is of utmost
importance that the reader realises that, for
better or worse, the United States has a sui
generi Federal registration system, different
from that of other countries.
• Yes, in Argentina one could register a
mark literally “for the whole Class 30”;
• Yes, in Paraguay you may overcome a
cancellation by showing use of the mark
anywhere in the world;
• Yes, the OHIM does not require that you
declare actual prior use of the mark, or an
intent to use the mark for that matter.
But none of these options are available
under the US Federal registration system
and the sooner that such realisation kicks in,
the better-suited you will be to ensure
proper protection of trademark rights in the
United States.
2. With realisation comes understanding,
and with understanding should come the
urgency to familiarise with the US Federal
registration system.
• No, it is not alright to file a trademark
application based on Section 1(b), 44(d),
44(e) or 66(a) just to “test the waters” and
without any real and effective intention to
use the mark in US commerce
• No, it is not alright to file a trademark
application based on Section 1(a) for a
variety of goods in any given Class when in
reality the Applicant is only using the mark
in US commerce for half of the goods;
• No, it is not alright to file declarations
under Section 8 and/or 15 to maintain all
goods covered by the registration if in
reality the mark in is currently being used
for only one of said goods.
The more familiar you are with the nuances
of the Federal registration system, the
better your clients/companies will be served
in securing and enforcing trademark rights
in the United States.
3. Take the time and effort to review (and
then review again) the entire US trademark
portfolio of your clients/companies to
ensure that they are indeed using their
registered trademarks in US commerce in
connection with each an every good/service
covered by same.
• If they are not and a declaration of use has
already been filed (be it in the registration
process or in the maintenance process),
then proceed immediately to file a Section 7
petition (amendment of registration) to
delete all the goods for which the mark is
not in use before a third interested party
may decide to threat or directly challenge
such registration, but be prepared to
produce evidence to support a finding of
lack of intent to commit fraud, if challenged
• In the above scenario, and in absence of
evidence to support a lack of intent to commit
fraud, do not hesitate to file a new application
to cover only those goods for which the mark
is in use in U.S. commerce, or for which there
is a bona fide intent to use the mark
• If, however, no declaration of use has ever
been filed for the registration, then you
may opt to wait until the first Section 8
declaration is due to delete all the goods
for which the mark is not in use.
4. As for those applications filed under
Section 1(b), 44(d), 44(e) or 66(a) and those
registrations granted under 44(e), take the
necessary steps to ensure that there is a real
and effective intention to use the mark in
US commerce and be prepared to produce
documentary evidence of such intent.
Remember, now is not the time to ponder
the mistakes of the past, but to find
solutions for the future. The recent rulings,
particularly as to fraud, have left an opening
to achieve just that, take advantage of it! K
1 See Medinol Ltd. v. Neuro Vasx, Inc., 67
USPQ2d 1205 (TTAB 2003)
2 See L.C. Licensing, Inc. v. Berman, 86
USPQ2d 1883 (TTAB 2008)
3 If filed under Section 1(a), use in commerce,
it states that the applicant declares that it is
using the mark in commerce, or the
applicant’s related company or licensee is
using the mark in commerce, on or in
connection with the identified goods and/or
services. For filings under Sections 1(b),
44(d) and 44(e) the same declaration of
bona fide intention to use is made.
4 If filing under Section 1(a), this section
states that he/she believes the applicant to
be the owner of the trademark/service mark
sought to be registered.
5 G&W Laboratories Inc. v. GW Pharma Ltd.,
89 USPQ2d 1571 (TTAB 2009).
6 Zanella Ltd. v. Nordstrom, Inc. 90 USPQ2d
1758 (TTAB 2008) made precedential by
TTAB order of May 13, 2009
7 Honda Motor Co., Ltd. v. Friedrich
Winkelmann, 90 USPQ2d 1660 (TTAB 2009).
K US: DINEFF TRADEMARK LAW
“ Numerous decisions have reaffirmed thestanding in Medinol in denying defences to afraud challenge as insufficient ”
AUTHOR
Justin R Young has beenwith Dineff Trademark Lawsince January 2000. He islicensed to practice law inParaguay, as well as beingadmitted to the bar in thestate of New York. He is also admittedbefore the US District Court for theNorthern District of Illinois.
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38 | The Americas | 2009 www.ipworld.com
K VENEZUELA: GLAHAM ABOGADOS The Americas
I n spite of the contradictory interpretation
of the consequences in the application of
the Industrial Property Law, arising from
local authorities and IP attorneys, published
recently in the most important public’s media
and creating confusion in IP holders, there are
a few points of interest need to be known by
foreign applicants in order to protect their IP
assets in Venezuela.
As of April 2006, Venezuela is no longer
part of the Andean Community of Nations;
and consequently, is not applying the 486
Decision “Common Industrial Property
Regime”. On 17 September 2008, the
Venezuela Patent and Trademark Office issued
a resolution declaring the enforceability of the
1955 Venezuelan Industrial Property Law.
As a result, there are few changes in the
Venezuelan Patent and Trademark prosecution
procedure.
For trademarks, the main changes to be
taken into account at the time of the filing are
those referred to:
• the classification of the products and
services based on a national classification of
goods and services different from the nearly
worldwide standardised Nice Classification.
Therefore, a new analysis must be made in
order to adjust the list of goods or services
into the National Classification
• the compulsory requirement of performing
a trademark search and one publication in a
local newspaper
• extending the valid term of a trademark
from 10 to 15 years from the registration
date, with the possibility of renewing the
mark for the same period of time.
For patents, the main changes are those
referred to:
• the publication in the newspaper of the
application for three times, each 10 days, for
opposition purposes. Non-compliance with
this publication is considered as
abandonment of the application. With the
compulsory publication of the application its
content becomes public. Thus the application
is no longer protected by the period of 18
months of confidentiality
• reducing the valid term of a patent from 20
to 10 years from the registration date
• the scope of patent protection, affecting
pharmaceutical applications.
Reducing uncertainty about IP protectionVenezuela is part of two major treaties: the
Paris Convention and the TRIPS Agreement,
which scope protects: the right of priority; a
minimum term of 20 years from the filing
date for patents; pharmaceutical protection,
among others rights, included as a minimum
standards to be taken in to account by any
intellectual property law. In view of this, any
change in the Venezuelan Law will include
these main principles.
In the meantime, an IP holder having a
patent portfolio affected by any of the changes
arising from the application of the Venezuelan
Intellectual Property Law, even in the
pharmaceutical field, needs to consider:
(i) The filing of a Venezuelan application
claiming priority must be done within the 12
months, in order to safeguard the novelty
requirement which is analysed by the Patent
Office under the international standard as a
non-published application in any part of the
world.
(ii) If a patent application is filed without
claiming priority such application must be
done only if the priority application has not
been published by date of the Venezuelan
application for the reason exposed above.
(iii) If applicant wants to preserve the
confidentiality of the application for the
longest period as possible, its strongly suggest
to prevent the voluntary filing of the formal
requirements (namely Power of Attorney and
Declaration of Inventorship form), this in
order to avoid the compulsory publication of
the application which shall be notified once the
formal requirements have been meet.
(iv) A cumulative protection must be
considered. A patent application (or patent
family) covering a process or a product, must
be identify with a trademark registered in
Venezuela (in those cases that the nature of
the process or product allows it); and also
must be protected as a confidential
information regulated by civil law and
including all the technical information not
disclose by the patent.
Even in the scenario of uncertainty due to
changes in the IP practice, it is strongly
suggested that holders continue to protect
their assets in Venezuela, since the local
authorities have stated that all changes in the
IP law will comply with the international
standards of TRIPS and the Paris
Convention. K
How to protect IPassets in VenezuelaRicardo Rojas Gaona, Jesus Lopez and Cristina Imparato ofGlaham Abogados explain how best to protect your IP inVenezuela
AUTHORS
Ricardo Rojas Gaona (left) is themanaging partner at Gojas Gaona &Bandres, which includes the IP divisionGlaham Abogados. He practices inintellectual property, commercial, civil,labour and administrative law, unfaircompetition and litigation.
Jesus Lopez is managing partner andCristina Imparato a partner.
38_Venezuela.qxd 4/8/09 12:57 pm Page 38
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