December 10th, 2013 by Danny Grajales Pérez y Soto
The Trans-Pacific Partnership Agreement –TPP– is the most ambitious free trade agreement under negotiation at this moment, with 12 negotiating parties in the Asia-Pacific área including Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. This includes 3 major Latin American economies (Chile, Mexico and Peru), all of them also parties to the Pacific Alliance negotiations, and 2 of the top three economies in the global economy (The US and Japan). Although the agreement includes provisions on many trade-related topics, it has become notable for the controversy surrounding its Intellectual Property provisions.
The confidential draft of the agreement was leaked by the Wikileaks organization on November 13th 2013, and has lighted up the discussion regarding Trademarks, Patents, Copyrights and Geographical Indications provisions of the. Although most of the controversy has focused on Patents, the section on Trademarks has also stirred both praise and criticism from IP experts. Although the final text of the agreement is yet to be seen, the outlines of the final provisions on Trademark Law are already visible:
Non-traditional Trademarks. The very first provision of the agreement’s section on trademarks is the prohibition of requiring “visual perceptibility” for the registration of trademarks. This would make visual and sound trademarks available for registration in all member countries, such as the roar of the MGM lion or the “I’m loving it” jingle of the McDonald’s corporation.
Collective and Certification Marks. The agreement states that collective and certification marks shall be protected under every country’s trademark law.
Use of Identical or Similar Signs. The agreement provides that the owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner’s consent from using in the course of trade identical o similar signs, for goods or services that are related to those good or services in respect of which the owner’s trademark is registered.
Well-known Trademarks. The recognition of a trademark as a “Well-known trademark” can no longer require that trademark to have been previously registered.
Opposition and Cancellation. All member countries shall provide an opportunity to oppose the registration of a trademark or to seek cancellation. According to this draft, the agreement will not make it mandatory to have an opposition procedure (which Mexico lacks) as long as cancellations are allowed.
Examination. Refusal of registration of a trademark must be provided in writing which may be done by electronic means.
Electronic Trademarks System. All member countries must provide a system for the electronic application and maintenance of trademarks and have a publicly available electronic information system. This is a requirement that has been already met by the three Latin American negotiating parties of the TPP. Mexico’s online platform is specially notable for its flexibility and the openness of its databases, which are shared with all major international databases.
Non-Mandatory License Recordal. The recordal of licenses may not be required to establish the validity of the license, as a condition for use of a trademark by a licensee, or as a condition for the right of a licensee to join infringement proceedings initiated by the holder.
Madrid Protocol. All members of the TPP will have to ratify and implement the Madrid Protocol. This would mean that Chile and Peru would have to modify their legislation to include the possibility of Madrid Protocol trademark registrations.
The International Trademark Association –INTA– one of the most influential institutions on Trademark Law Practice in the world, has been actively advocating for the negotiating parties of the TPP to conform by their Model Free Trade Agreement, which is meant to be a guide to what would be desirable trademark provisions in free trade agreements. Furthermore, INTA has already started training of PTO officials in Mexico as part of partnership programs focused of non-traditional marks and the Madrid Protocol, in order to prepare government officials for the changes to come
July 9th, 2013 by Danny Grajales Pérez y Soto
The Annual “Special 301” report of the Office of the United States Trade Representative (USTR) has been released. The report is the result of an annual review of the state of intellectual property rights (IPR) protection and enforcement in trading partners around world, which the Office of the United States Trade Representative (USTR) conducts. The Special 301 designations and actions announced in the Report are the result of deliberations among all relevant agencies within the U.S. Government, informed by extensive consultation with affected stakeholders, foreign governments, the U.S. Congress, and other interested parties.
The report is not a comprehensive analysis of the countries’ systems for IPR protection. Actually, the country reports often fails to mention some of the most important improvements that took place during the last year. The 301 Report is merely an assesment of US Commercial Interests regarding IPRs in countries with which it has strong commercial relations, especially those countries with which the US has Free Trade Agreements and Memorandums of Understanding on trade matters.
The Special 301 Report provides a very valuable insight of the US’ perspective of the region’s IP market, and provides a guide for US government officials managing the trade agreements and the policy initiatives taking place with the Latin American governments. The repot accurately expresses worries about widespread piracy and counterfeiting in the region and about the lack of political will for improving the domestic systems for IPR protection. The Report also continues to make special focus on issues regarding pharmaceutical products and piracy of digital content over the Internet.
One of the most interesting chapters of the document is the Country Reports. In this section the USTR places some of its commercial partners in one of three categories, depending on their level of compliance with US standards of IPR protection. This is the complete list of the countries under watch of the USTR:
Priority Foreign Country: Ukraine.
Priority Watch List: Algeria, Argentina, Chile, China, India, Indonesia, Pakistan, Russia,Thailand, Venezuela.
Watch List: Barbados, Belarus, Bolivia, Brazil, Bulgaria, Canada, Colombia, Costa Rica, Dominican Republic, Ecuador, Egypt, Finland, Greece, Guatemala, Israel, Italy, Jamaica, Kuwait, Lebanon, Mexico, Paraguay, Peru, Philippines, Romania, Tajikistan, Trinidad and Tobago, Turkey, Turkmenistan, Uzbekistan, Vietnam.
Our Research Department has prepared a slideshow summarizing the 301 Special Report’s observations on Latin American countries. Improvements and concerns noted in the report are explained and we contrast the Report’s findings with our firm’s experience in the regional market:
IPR enforcement, adapted to the region
It is worth noting the continued request from US authorities to impose “deterrent-level penalties” and to increase criminal sanctions for IPR infringement, without even suggesting making a distinction between suppliers and consumers of the infringing goods and content. US authorities seem to remain oblivious of how low effectiveness result from these proposed measures and how ill-suited they usually are for the Latin American region. The way towards effective IPR enforcement is not to further crowd Latin America’s prisons, and longstanding structural problems in the region’s judicial systems makes criminal IPR enforcement difficult and costly for these countries.
Given the region’s widespread problems with protection of IPRs, the following approach has been suggested from IP experts with experience in the region:
- Concentrate enforcement efforts on the suppliers (not on the consumers) of IPR-infringing goods and content.
- Provide assistance for these countries to eliminate entry barriers for services that provide market alternatives to the consumer of IPR infringing goods and content. For example, services for legal streaming of video and music are notably scarce in the region, and are often offered to the region several year’s after they are launched in other parts of the world. The Latin American consumer is often stuck between oudated formats -CD, DVD-, costly solutions out of reach for the median consumer of the region -iTunes Store and Apple devices- and consumption of IPR-infringing content -P2P networks, pirated content-.
- Economic sanctions are often an effective deterrent for infringers of IPRs, and are regarded as a fair sanction for the infringement of economic rights of IP stakeholders. This makes it easier to get congressional and judicial approval for regulation creating or updating sanctions for IPR infringers. Criminal sanctions for violations of economic rights often face strong opposition from citizenship, legislators and the region’s leftist governments.
It would also be desirable for the report to include recommendations about some of the most worrying issues for IP owners and practitioners. Issues such as the lack of an Opposition Procedure in trademark applications Mexico, the lack of reliable online platforms for filing of applications in Bolivia and Ecuador, and the request of unnecesary information and documents on IP procedures are issues that over-complicate and IP practice in the region.
To better understand the implications of the Special 301 Report of the USTR watch the following presentation by Amelia Andersdotter (EU Parlament) and Karel De Gucht (European Commissioner for Trade).
June 26th, 2012 by Danny Grajales Pérez y Soto
On Friday 22nd of June 2012 we received Mr. Mark Davis, president and CEO of the Public Interest Intellectual Property Advisors –PIIPA-, at B&R Latin America’s headquarters in Bogotá.
Mr. Davis is visiting Colombia to launch PIIPA’s latest project: “Enhancing Opportunities in the Canadian Market for Innovative High-Value Colombian Agricultural Products”, which we covered in previous posts. This project’s goals include assessing the state of IP rights in the country, conducting pro bono counseling and training to key players in the national agricultural market, and improving the protection of products through IP while retaining wealth in rural areas.
During his visit to our firm, we heard about the project’s beginnings, long term goals and the public-interest driven rationale behind the project. Especially important, is the vision of turning the Colombian agricultural market into a regional hub of adequate Intellectual Property protection. As well as our firm, PIIPA also sees Latin America as a regional rather than a national market for IP, and is completely aware of the trends in regulatory and economic integration in the continent, not only in the Andean Community but in the whole region. The accomplished achievements with this project are expected to be replicated in neighboring countries, especially in the Ecuadorian and Peruvian markets.
Our research department interviewed Mr. Davis for more information on this project. This is what he answered:
B&R: You’ve previously said that one of the main goals of this project was to get producers to the Food Export Show in Toronto. Given that the main strength in the Colombian agricultural market is flowers, why focus on the food industry instead? Why the Food Export Show?
Mark Davis: –This particular project is not just focused on food, it’s focused on high-value agricultural products. Certainly the flower industry is one of the biggest to the North American market; I know I see it in the US all the time and we’re certainly aware of the amount of flowers being exported to Canada.
–So it’s not just about food. However, often the food products -such as something in the Passiflora species… passion fruits- have very distinctive flavor profiles, color, appearance, whatever it may be; that are really being able to get the extra money in a foreign market for adding that extra high value. From a consuming marketing perspective, it really is very attractive.
–The average consumer can’t tell if the flower came from Colombia or Florida, but they can look at a fruit and say “oh! I know where this fruit came from” and that’s much better because they identify certain kinds of fruits from tropical environments, and that have that protection from trademark and good labeling.
–We don’t really know where our flowers come from in North America, for the most part, and no one ever tells us. Flowers are important but, for a distinctive-origin product that a consumer would recognize and go “oh, I’m gonna pay the extra money because I know this is very special” then, I think that food products have a much higher value.
B&R: What are the needs in the Colombian market that you identified to start with this project?
Mark Davis: –The primary needs were: helping people understand plant-breeders rights, plant varieties, what IP can do and cannot do from a producer’s perspective; how can cooperatives use IP to further the the business mission, supporting economically the work that everyone does. And general awareness of how IP can be used, not only for internal markets but also for external markets.
–PIIPA and CIAT had a 3 day meeting in Cali in November 2010, we had 60 people from 16 countries and the whole discussion was IP needs in agriculture across the continent, across the region. We had people from Brazil, from Chile, etc. Out of that discussion came this very broad set of goals in a way of supporting agricultural development from an IP perspective across Latin America.
B&R: Does the project have any public policy goals?
Mark Davis: –We do not. PIIPA is not a policy organization, we’re practical. We let the policy to policymakers. We can support policy development from a very practical point of view. One example is, for instance, last year in the Philippines we worked with the Philippine IP Office because they had passed a technology transfer act. We helped them implementing that regulation, and help them refine the tech transfer act, just because of our own experience from the Bayh-Dole Act in the US being quite successful in the area of technology transfer.
–We prefer to partner with organizations and really be very practical and pragmatic because we feel that’s where the best value is, in the application of IP. There are many other organizations that talk about the theoretical side of policy, is it good? Is it bad? Not the practical side.
The first goal of the project, which is conducting an IP nationwide audit, will take place in late 2012. We will post on this blog updates on this project, dates for the training courses and any information relevant for Colombian producers or entrepreneurs.
PIIPA is an international nonprofit organization that provides pro bono intellectual property legal counsel to interest groups in developing countries. The project for enhancing opportunities in Canada for Colombia’s agricultural industry has been the work of PIIPA’s President & CEO, R. Mark Davis, a team of advisors that includes Alvaro Ramirez Bonilla, founding partner of B&R Latin America, and important partner organizations, such as CIAT, CENIRED, ProExport and the SIC.
May 18th, 2012 by Danny Grajales Pérez y Soto
On may 15th 2012, the FTA between Colombia and the US entered into force. The negotiations of this FTA were characterized by strong discussions on Intellectual Property issues and deep modifications for Colombian IP Law. This is a brief of the most important of these modifications and their implications for our IP market.
Chapter 16th of the FTA, dedicated to IP, is the lengthiest of the agreement, and its negotiations had to deal with profound differences between US and Andean law. Many of the clauses agreed upon will have to be carefully examined and legal disputes will surely arise as these legal systems collide on patent, trademark and copyright issues.
International legal frame.
The first issue regulated by the FTA is the international legal frame for the agreement. Article 16.1 contains an obligation for the parties to approve several WIPO treaties, the Patent Cooperation Treaty, the Trademark Law Treaty, the Patent Law Treaty and the Madrid Protocol; among many others.
These were conditions established by the US, since it is already party to most of these instruments. Colombia has started fulfilling such requirements by approving the Madrid Protocol (which has not yet entered into force) and reforming its regulation on procedures to abide by international standards, mainly through Resolution 21447 of the national PTO. Many other instruments had already been approved by Colombia.
Other conditions set on this section, are the national treatment for all IP protection, the non-retroactivity of the FTA conditions and the voluntary expansion of the protection rules set in the agreement.
Trademarks and distinctive signs.
On this issue, several of the FTA’s rules were already fulfilled by both parties. Modifications on these issues include:
-The requirement for an electronic application system for most procedures, and the creation of a public database for applications and registered trademarks. Resolution 21447 of the national PTO has already adopted many of these requirements in easing the procedures for filing documents through electronic means.
-The permission of licensing without previous registry of the trademark. Such article is conflicted with decision 486 and 291 of the Andean Community; such conflict is yet to be resolved.
-Geographical Indications will not have primacy over trademarks, the first distinctive sign will prevail over the other on a first registered basis. Issues were also raise about the registration of geographical indications as certification or collective trademarks; the FTA states that Colombia and Peru will have to accommodate to such situation, registering G.I. as trademarks when necessary.
-The US advocated for an expansion on patent law, increasing the possibilities for what’s patentable. Specifically, the US wanted to make plants, animals, uses of known substances (Second-use patents) and medical treatments patentable. This goal was only partially accomplished, since Colombia and Peru only agreed to make reasonable efforts on patents for plants.
-Rules were established for the “Unreasonable delay in granting a patent”. According to negotiations conducted in 2006, the parties had to ‘restore’ the patent’s time when the PTO Office took more than 5 years in granting or rejecting a patent. Modifications to this agreement, made this article a voluntary measure for both parties since 2007.
This same –softened- rule will be applied to pharmaceutical products when the sanitary inspection was unreasonably delayed in approving or rejecting a product.
-Some agreements remain unclear, such as the one referring to the necessary divulgation of the invention when application for patentability is filed. The standard adopted to determine what is considered to be ‘sufficient divulgation’ is ambiguous and different from both the American and Colombian regulation.
This requirement is established to ensure that the applicant was in ‘full possession’ of the patentable matter at the moment of filing, and to allow other inventors to take advantage of the technical improvements brought about by the patented invention.
Under the FTA, sufficient divulgation will be met when an expert in the same field would consider the applicant to be in possession of the invention at the time of the filing. This is a standard hard to accommodate to both national legislation and its practical application is yet to be seen.
-Other changes to requirements for patentability include the ‘usefulness of the invention’. Colombian regulation required the invention to have an industrial application. The US required the invention to be ‘useful’, even if the use was not yet known. And Andean Community regulations required an industrial application and to be ‘useful’.
The FTA has adopted the American standard, requiring the usefulness of the invention as criteria to establish its industrial application.
-Additional modifications include changes to the grounds for the annulment of patents, exceptions to patent rights, and issues with commercialization licenses when patent rights were violated.
Copyright and author’s rights.
Copyright and Author’s right issues were the most publicized and controversial topics in public forums. Colombia’s legislative reforms to fulfill the obligations of this FTA usually extended protection beyond what was demanded by the bilateral agreement and were faced with strong opposition from citizen organizations and the Academia.
The most important of these modifications are:
-The protection for works when the owner is a corporation was extended to 70 years since the date of publication (20 years more than the Andean Community standard).
-The owner of related-rights will have an exclusive right on the publication of their work through digital means. The same exclusive right is established for the re-transmission of TV signals on the internet (which is a higher protection standard than that of the US).
-The temporal storage in electronic form of copyrighted works may be prohibited by the author. This raises questions about the enforcement of copyright in ‘digital lockers’ such as MediaFire and RapidShare, but it also concerns other services for online storage of files, such as Box, Dropbox, and the recently launched Google Drive. Experience in copyright issues says that these enforcement issues will be neglected or simply impossible to apply (since anybody could be a potential infringer), but Colombia is sure to have a greater pressure from the US to prosecute infringement of copyright through digital means.
-The owners of any economic right in a work, performance or phonogram may freely and separately transfer their rights, and they also have the possibility to actively enforce their rights on the work.
-Regulation is established for technological measures protecting IP rights and including new exceptions allowing the breaking of such measures.
-A presumption was established for litigation, in favor of the person who appears as the owner of the work and the owners of different parts of the work (such as artists, editors and broadcasting companies).
-The obligation to regulate the use of software by the government, making sure that no illegal software is used by government agencies.
Since many of the clauses agreed upon in the FTA are openly opposed to Andean Community regulations, the implementation of the Agreement is sure to be controversial and to raise interesting questions for IP Experts from both countries.
B&R Latin America will be reporting on developments on this FTA, and will advise its clients accordingly. This is a both exciting and challenging issue for this Latin American economy, and will surely impact the Andean Community market on IP.
“El tema Propiedad Intelectual las negociaciones del TLC Colombia – Estados Unidos” – Universidad Sergio Arboleda.
Full text of the FTA in English.
Full text of the FTA in Spanish.
“Colombia and the United States: A Successful Trade Alliance” – Embassy of Colombia in Washington D.C.
FTA’s web page of the Ministry for Commerce, Industry and Tourism.
May 8th, 2012 by Danny Grajales Pérez y Soto
The Office of the United States Trade Representative has released it’s 2012 Special 301 Report.
This document is an annual review of the state of intellectual property rights, protection and enforcement in trading partners around the world. This report is a valuable guide to understand current issues in IP Law and to highlight positive and negative trends on emerging markets.
The report creates a list of priority issues on IP. This year’s report has mentioned Capacity Building Efforts, focusing on the lack of prosecution and conviction on the ground of IP infringements. The ever growing trends in Trademark Counterfeiting and Copyright Piracy, warning that the markets of pirated and counterfeit goods will soon surpass the sales volume of the licit vendors, and commenting on new ways for transportation and selling of counterfeit products such as the separate shipping of labels and packaging in order to evade enforcement efforts. Piracy over the internet, demanding stronger actions to strengthen legal regimes and enhance enforcement in order to respond to the increased availability of broadband internet connections and the piracy in new mobile devices. The violation of trade secrets and forced technology transfer, expressing the dangers of trade-distortive policies designed to promote ‘indigenous innovation’ through the lack of enforcement of IP rights and the creating of market barriers based on IP disclosures laws. Finally, the report also highlights the government use of software, trademarks and DNS, implementation of WTO TRIPS agreements, WIPO treaties and issues on IP and health policy.
However, this report is notorious for it’s Country Reports, in which US trading partners are sorted into the “Priority Watch List” and the “Watch List”, depending on their progress on IP issues and the vulnerability for US’s IP rights owners in their markets.
As to Latin American countries, Argentina, Chile and Venezuela were listed on the Priority Watch List, alongside Ukraine, Thailand, China and India. Concerns on these countries include inefficiency in Argentina’s judicial system, lack of protection against unfair commercial use and growing copyright piracy on the internet; Chile’s inefficient system for addressing patent issues for pharmaceutical products, unfair commercial use, and to fulfill it’s commitments under the US-Chile FTA; and Venezuela’s withdrawal from the Andean Community in 2006, and widespread piracy and counterfeiting.
On the watch list, Bolivia, Brazil, Colombia, Costa Rica, Dominican Republic, Ecuador, Guatemala, Mexico and Peru are said to have progressed in protecting IP Rights, but issues on enforcement and internet piracy remain largely neglected.
Read the Full Report here.
July 6th, 2011 by Eliana
There are some specific requirements and formalities that you always have to take into account, when you file a trademark registration application in Colombia.
To register a trademark in Colombia we require:
The minimun documentation required for us to give you an estimate time of a trademark registration filing is:
1. Complete applicant identification:
- Name or Corporation Name
- Complete Address
- Domicile (City and Country)
- Phone number and Fax
- E-mail address
- If the applicant is a corporation, it is required the same information noted above, for the legal representative.
2. It is necessary that you send us the trademark logo in .gif or jpg. format (If the trademark is stylized -logo-) . It has to correspond exactly to the sign (trademark) that you wish to protect. If the colours are important then you should send us the logo in colour.
3. Accurate and complete indication of the products or services that you wish to protect with the trademark. An application can only be filed for products or services included in one single class. Multiclass registration is not allowed in Colombia.
4. The class according with the ninth edition of the Nice International Classifiaction http://www.wipo.int/classifications/nivilo/
5. The priority document issued by the competent autority, if you wish to claim trademark priorities. The priority protection is an entitlement, that allows you to protect your trademark in other countries, having as filing date the one of the filing in any country that you have registered your trademark, if there has not been over six months since the last registration.
6. A simple (non-official) translation to Spanish Language of the priority document.
7. Our Power of Attorney. This POA must be sign before the Colombian Consulate in your country. If your country is part of the Hague Apostille Convention, an Apostille is sufficient. Check if your country is part of this convention in:
8. Our POA forms have at the bottom, the instructions to fill a notarial certification regarding the existence of the corporation, if the applicant is one.
9. If you do not fill the above mentioned notarial certification you must send us a certificate of incorporation or business certificate. This document must be legalized before a Colombian Consulate or with Apostille.
10. A simple (non – official) translation to Spanish language of the business certificate or certificate of incorporation. For documents not sent in Spanish language, we offer you a translation service (From English to Spanish only).