December 2nd, 2014 by Diana Carolina Mora
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.
Ley marco 1648 de 2013
Superintendencia de Industria y Comercio, Decreto 2264 del 11 de Noviembre de 2014
November 21st, 2014 by Danny Grajales Pérez y Soto
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.
November 23rd, 2013 by Danny Grajales Pérez y Soto
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).
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.
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.
March 19th, 2013 by Danny Grajales Pérez y Soto
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.
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:
- Mexico: Yet another Latin American country to approve the Madrid Protocol.
- How much for an international trademark registration? | Mexico
- Head on to the Madrid Protocol | Mexico
January 25th, 2013 by Danny Grajales Pérez y Soto
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.
January 22nd, 2013 by Danny Grajales Pérez y Soto
Almost one month into 2013, changes in the schedules of fees of domestic PTOs have started. Several Latin American PTO’s have already raised or lowered their official fees for trademark and patent procedures. These changes will impact differently on each country’s IP market, depending mostly on the state of its economy. As we have stated previously in this blog and our recently published book, the IP market is specially sensitive to fluctuations in national and regional economies. Specifically, trademark trends show sensitivity to changes in consumer’s buying power; and patents are specially affected by the strentgh of a country’s productive force.
Changes in Official fees from the Colombian PTO -The SIC- have been mostly favorable for promoting IP in this country, which is in accordance with the country’s pro-IP position.
These are some of the most important changes (Fees are showed in Colombian pesos COP and explained in US Dollars USD, at the exchange rate of the day this post is published):
- Trademark applications stayed the same, at COP$750.000 or aprox. USD$423. However, applications for collective or certification marks was raised in aprox. USD$140.
- Furthermore, given the implementation of the Multiclass trademark registration in Colombia, filing applications in each additional class was lowered from an average of COP$600.000 to a fixed rate of COP$375.000 per additional class. An USD$128 decrease, in average.
- Trademark renewals were increased from COP$410.000 to COP$820.000. An USD$231 change.
- Trademark oppositions, previously at COP$315.000 are now set at COP$325.000. USD$5 of difference.
- Patent applications are slightly down, from COP$590.000 to COP$500.000. An USD$45 change.
- Patent examination is slightly up, from COP$490.000 to COP$530.000. An USD$20 difference.
To review the complete schedule of fees of the SIC, click here (Available in Spanish only)
The Argentinian PTO -The INPI- has raised most of its official fees, but has made no efforts in simplifying their complex schedule of fees (Or the readability of their press releases for that matter). In fact, the INPI has published two separate schedules of fees. The first one will be valid from January 7th 2013 to the 1st of July, And the second will be valid from the 1st of July to the date when new fees are published. The only difference between these two schedules of fees is a notable raise in their prices.
These are some of the most important changes (Fees are showed in Argentinian pesos ARS and explained in US Dollars USD, at the exchange rate of the day this post is published):
- Trademark applications have gone from ARS$400 to ARS$500 in the first half of 2013. This means a raise in aprox. USD$20.
- Trademark renewals were also raised from ARS$480 to ARS$600. An USD$25 change.
- Trademark oppositions, previously at ARS$300 are now set at ARS$400. USD$20 of difference.
- Patent applications are up, from ARS$1000 to ARS$1500. An USD$100 change.
- Patent examination is up, from ARS$1000 to ARS$1200. An USD$40 difference.
To review the complete schedule of fees of the INPI, click here (Available in Spanish only)
Fortunately, the exchange rate of the Argentinian Peso makes these changes not that significant for foreign applicants.
We will continue to post on this blog as soon as new fees for each country are published, and we will update our clients on our schedule of fees for IP procedures in each country.