Posts Tagged ‘Formalities’

Our participation on FILBO 2015

April 21st, 2015 by Camila Cooper

Luis Carlos Pombo Vice-President of B&R Latin America IP LLC

 

The vice president of B&R Latina America for consulting Services, Luis Carlos Pombo will be part of The International Book Fair in Bogota FILBO 2015 organized in Colombia. The International Book Fair in recognized for promoting reading and business spaces for the publishing industry. By creating cultural and economic scenarios that encourages the sale of products and services of the publishing industrial to a national and international audience.

 

Luis Carlos Pombo will be giving a conference on April 24, at 10:10 am, in a seminar on copyright: The value chain of the Publishing Industry in an environment of technological convergence.

 

The main topic in which Luis Carlos will be emphasizing is ¨ How to identify intangible assets in the publishing industry. Valuation of intangibles in the publishing industry¨. Having into account that he has been working as a Management Consultant for more than 20 years and a broad experience in management and valuation of IP assets, trading of trademarks, patents and tech assets, market assessment, investment projection and strategic investment in R&D and IP portfolios.

 

The seminar on copyrights in which our vice-president will contribute has a big role in this fair, since they are the ones in charge of promoting and encourage the audience the importance of protecting their literature creations.

 

FILBO 2015 is one of the most important cultural events of national interest, it is recognized internationally and considered as a highly important event in Latin America, what makes it an opportune event to promote the society to take awareness of copyright and the benefits that they would have if they acquired it.

 

Join us in The International Book Fair in Bogota

 

New rules for trademark infringement | Colombia

December 2nd, 2014 by Diana Carolina Mora

Changes on Colombian Regulation

According to the regulatory Decree No. 2264 recently issued, effective from November 11th 2014,  violations of the rights of trademark ownership could be priced through the system of pre-established compensation, which may be equivalent to a minimum of 3 minimum monthly wages ($ 1’848.000 COP 830.57 USD) and up to 100 legal minimum monthly wages ($ 61’600.000 COP 27,685.52 USD) for each trademark infringement. The compensation may be increased by up to 200 minimum monthly wages ($ 123’200.000 COP 55,371.04 USD) when the infringed mark is recognized as Notorious by the judge and the bad faith of the offender is proved, endangering the life or health of persons and recurrence of the offense for the brand is identified.

 

In this regard the lawyer Álvaro RAMIREZ BONILLA BR Latin American IP CEO, who said that this breakthrough move changes the rules for brand offenders, also known as pirates, stated:  “Before pirates could protect themselves somehow, due to the difficulties a judge used to have in determining the damage caused by the offense to the owner of the marks, but under this new regulation that problem disappears. A penalty from three to two hundred minimum wages should strongly discourage a person who were to commit an act of trademark piracy”.

 

The decree also leaves the door open so that in cases where the damage exceeds the normativity, the applicant may choose to prove his damages at trial, since the damages generated as a result of a judicial finding of trademark infringement may either be attached to the system of pre-compensation or subject to the general rules of evidence demonstrating economic damages. If the applicant chooses the preset compensation system, they will not have to prove the amount of damages caused by the breach or the amount of damage for infringement, as uttered by Article 243 of the Andean Decision 486. “This has historically been difficult but with the years we have been developing our own series of financial models that evaluate the injury in a technical way”, added the lawyer Álvaro RAMIREZ BONILLA BR Latin American IP CEO.

 

This change is important for the protection of the rights of trademark ownership under the Commercial Law. “The Law and the Regulatory Decree will give new fresh air to trademark infringement processes, surely a greater number of cases for compensation must be addressed, which is good for strengthening the exclusive property right of use of a trademark. Our firm has been working on cases of compensation for infringement of intellectual property rights for 14 years and with the experience we have gained, and the methods developed and applied in different cases, we positively see that a greater number of legal owners of their brands can defend them more efficiently with the Superintendence”, says Luis Carlos POMBO vice president of consulting at BR Latin American, who has worked as Management Consultant and appraiser of intangibles for around 15 years.

 

Sources:

 

Ley marco 1648 de 2013

http://wsp.presidencia.gov.co/Normativa/Leyes/Documents/2013/LEY%201648%20DEL%2012%20DE%20JULIO%20DE%202013.pdf

 

Superintendencia de Industria y Comercio, Decreto 2264 del 11 de Noviembre de 2014

http://www.sic.gov.co/drupal/sites/default/files/normatividad/Decreto_2264_2014.pdf

 

 

 

 

 

 

 

 

 

 

 

 

 

Beware the Oddities of Chilean Trademark Regulation | Chile

November 21st, 2014 by Danny Grajales Pérez y Soto

The Oddities of Chilean Regulation

Throughout its history, Chile has been a regional pioneer in the protection and promotion of intellectual property. As one of the most globalized and advanced economies in Latin America, Chile was one of the first countries in the region to have comprehensive regulation of intellectual property and it has successfully created a culture of protection and prosecution of intellectual property assets among Chilean companies and business-people. The creation of IP-specialized courts and online systems for industrial property procedures has also made it one of the countries with highest levels of protection and defense of IP assets.

 

However, this remarkable early achievement has a downside to it: Chilean regulation is in need of updating. Despite having a notably efficient Patent and Trademark Office –The INAPI Institute–, unnecessary formalities and out-of-date regulation is making it fall behind the progress made by countries such as Peru, Colombia and Mexico.

 

For example, the use of the ® (registered trademark) symbol is a criminal offense if that trademark is not registered, if it expired or was annulled. No exception is made here for trademarks that are currently being requested for registration or for trademarks registered in other countries. As a consequence, if your product or service’s mark is currently identified with the ® symbol and your American or Chinese mark has not been registered in Chile, you may face fines from USD$2,000 to USD$70,000 by Chilean authorities, in addition to a criminal record! This same rule applies to the boxes and containers in which goods are transported and imported into the country.

 

As we have stated before in this blog, cumbersome formalities in legalization and notarization of Powers of Attorney –POA– also creates unnecessary delays and obstacles in the protection of IP assets in Chile. Not only is Chile one of the very few industrialized economies to not be a part of the Hague Apostille Convention, but Chilean Consulates are notably demanding and slow in processing the legalization of foreign documents. A first step was taken in allowing foreign individuals to provide POAs without legalization, but given that most of the foreign applicants are corporations further simplification of formalities is required.

 

Implementation of International Treaties is also an issue. The Trademark Law Treaty is only partially implemented and treaties such as the Madrid Protocol are not yet being discussed for accession.

 

We are confident that this much-required update will happen soon, and reform is on the way. An updated IP law is on the making and implementation of the Trademark Law Treaty is partially achieved. With the recent opening of a branch for our firm in Santiago de Chile we will maintain a much closer watch on any developments happening in this country to keep our readers updated.

 

 

 

It’s Easier, it’s Cheaper, It Works: PTO Online Platforms | Brazil

November 23rd, 2013 by Danny Grajales Pérez y Soto

Brazil gets into the regional trend of digitalization.

Brazil Online Filing Trademarks Patents

Brazil’s Patent and Trademark Office, the INPI, has implemented and continued to expand its still recent platform for online filing and management of IP assets. This is a very important step for the Brazilian PTO, which not only manages the largest volume of IP procedures and applications in the Latin American region but also bears the largest backlog in pending applications in the region and one of the biggest among the world’s largest economies (Brazil being the 7th worldwide by GDP).

 

Trademarks.

E marcas trademarks marks brazil

The online platform for Trademark procedures, e-Marcas, launched in 2006, now handles more than 74% of all trademark applications. These online applications are processed more rapidly by the PTO and have discounted Official Fees. The INPI has stated that it is intended to reduce the trademark examination period from 18 months to 9 months by January 2015 and that Multiclass Trademark Applications will be available soon.

 

The INPI has also started to allow online applicants to choose any desired wording for the specification of products and services (up until recently the platform would only allow applicants to select from pre-approved listings). However, the deadline for implementation of this feature has been delayed and clear regulation of the new procedures has not been provided.

 

Patents.

e patentes patents brazil

Regarding Patent applications, the e-Patentes online platform was launched in 2012. And several cooperation agreements have been signed with other PTOs in the region to share information on patentability exams, such as the PROSUR cooperation system and the e-PEC platform. A significant increase in the the PTO’s staff and team of examiners has also been underway going from 112 examiners in 2005 to over 273 in 2010, and almost doubling the amount of total processed examinations in that same period. The goal is to have a team of 728 examiners by 2015. This is all aimed at reducing the length of patent procedures in Brazil to an average of 4 year, until recently the length of these procedures could go well beyond 8 years.

 

 

One of the most recent developments on the online platforms is the possibility to file almost any petition or application online. At the start of the platforms’ implementation, only new applications could be processed online. Now the system has the capacity to process:

 

i) petitions related to applications/patents;

ii) enter into the national phase of the PCT application;

iii) file a recordal of assignment or change of name or address of a patent application or a patent;

iv)  submit a request for official copies;

v)  request accelerated examination;

vi)   present statement regarding the access to Brazilian genetic resources,

vii)   request the participation in the green patent program or

viii) request a preliminary opinion on patentability.

 

 

The Big Picture.

 

The Brazilian market for Intellectual Property continues to be disproportionally big if compared to the rest of the regional market. Even the infamous Custo Brazil has not been able to slow down the vertiginous growth of the Brazilian market.

 

Trademarks Patents Applications Latin America
Regional Overview of TM and Patent Applications

 

 

PTO Information on Madrid Protocol | IP Info Nuggets

March 19th, 2013 by Danny Grajales Pérez y Soto

Mexican PTO

The Mexican PTO (the IMPI) has released a web page spreading information on the implementation of the Madrid Protocol in this country. Although only available in Spanish, the page is a useful tool for getting first-hand information on this valuable new tool.

 

Here it is: Madrid Protocol for the International Registration of Trademarks | Mexico

 

However, if you desire in-deep information or just information in English language, just go to any of our previous posts on the Protocol’s implementation in Mexico or contact us.

 

Here are our posts on the subject:

 

 

 

 

Trademark denial is struck down on constitutional grounds | Colombia

January 25th, 2013 by Danny Grajales Pérez y Soto

Constitucional action on TM matters in Colombia.

Constitucional action on TM matters in Colombia.

A recent court decision on trademark matters in Colombia has set an important record on due process for trademark registrations in this country, in deciding a constitutional action (Also known as ‘Amparo’ or ‘Tutela’ in Latin American countries) presented by our litigation department against the Colombian Trademark Office -The SIC-.

 

The case was related to a trademark application, in which the trademark registration was granted after dismissing an opposition from a third party and conducting the registrability exam that is required for all applications. The granting of the trademark registration was then appealed and, during the appeal process a new registrability exam was conducted which led the Trademark Office to reverse their decision and deny the registration of the trademark.

 

A constitutional action was brought against this decision by our litigation department, leaded by attorney Juan Sebastián Salazar, on grounds of violation of due process and the right to defense. The court ruled in favor of the plaintiff, and established:

 

 

-That the Trademark office’s ability to examine the registrability of a trademark has a temporary limit (Namely, the time between publication and the moment of granting or denial) and can’t be performed in appeal proceedings.

 

Any registrability examination conducted after the granting/denial of a trademark application is a violation of due process, due to the fact that the applicant will have no opportunity to defend his/her application.

 

-When an appeal is brought against a trademark registration granting, the Trademark Office will have to limit its decision to the grounds of appeal (Although, admittedly this was long ago established in Colombia procedural law). Therefore, the existence of other similar trademarks can’t be considered by the trademark office in this procedure.

 

 

We consider this to be a landmark decision for trademark matters in Colombia, since the Trademark Office will have to acknowledge its limitations regarding trademark registrability examinations, and its obligation of respect of due process and the right to judicial defense in administrative procedures.

 

 

 

*This article was modified on February 5th to clarify that the aforementioned constitutional action is also known as Tutela or Recurso de Amparo in Latin American countries.