August 9th, 2014 by Geraldine Peeters
Under the Madrid Protocol, filing for an international trademark application is made a piece of cake. A single application can be filed for two or more countries if members of the Madrid Protocol. Only two countries; Colombia and Mexico in Latin America (Brazil is heading to it) are members of the Protocol. After the procedure of the protocol, the trademark gets filed after the examination of the application. This procedure has to be replied by each trademark office in each country. If everything goes by plan the application gets accepted and filed. Or the examination can result in rejection of the application.
A notification of provisional refusal forms a declaration stating the grounds on which the particular trademark office decides that protection cannot be granted in the contracting party (“ex officio provisional refusal”) or a declaration that protection cannot be granted in the contracting party because an opposition has been filed (“provisional refusal based on an opposition”) or both.
The grounds of the refusal may be absolute or relative.
- Absolute grounds include the lack of any distinctive character of the mark, the inclusion of generic marks as a trademark, the indication of quality or quantity in the trademark, marks that carry any deceiving names, that offence morality or that are contrary to honest practices
- Relative grounds may exist when the trademark that is applied for is in conflict with an earlier mark.
A notification of provisional refusal must relate to one international registration and must be dated and signed by the trademark office making it. Refusal of registration of a trademark must be provided in writing, in three languages or English, Spanish or French, which may be done by electronic means.
If a trademark office issued a provisional refusal of an application, a trademark specialist in Colombia or Mexico will need to be instructed to deal with the rejection before the local office. When a mark is subject of refusal, measures should be taken quickly. This refusal can be caused because of several reasons, it is important to find out how and when to respond to the decision of refusal. There comes the trademark specialist to the rescue. Because it would be a mistake to assume that trademark office practices and requirements are the same in every country.
A request for reexamination can be applied for by the proprietor of the mark before the office of the contracting party that has notified the refusal. Always consult with a local agent to be certain that an application conforms to local laws and practices. B&R could help you to overcome these issues and help you to register your trademarks in the fastest possible way.
June 5th, 2014 by Geraldine Peeters
The Mexican economy is one of the heavyweights of Latin America, next in line with Brazil. For example their patent applications have seen an increase of 178 % from 1995 to 2010. Translating into a steady growth over the years. As well for trademark filing a solid growth can be noted. Thanks to several international treaties that have been signed, Mexico’s general economy resulted in a prosperity.
To encourage this growth the Mexican institute for Intellectual Property implemented various programs to improve the organization’s efficiency. During 2008-2012, the IMPI put in effect a special program for improvement of Federal Public Administration Management. Furthermore the IMPI implemented the Patent Prosecution Highway to reduce the examination of patent applications. Moreover they carried out some technological changes in the system.
For example they updated the online system to file trademarks and designs, making the system more efficient. Statistics show that the reorganization of the only filing system paid off. Using the online system is easy and efficient, filing from one point, faster, safer, and more economic. You just need to register to obtain a user name and password. Register the trademark online, pay through electronic payment, sign the application with the Advanced Electronic Signature (Fiel) and send the request. Additionally in February 2013 the Madrid protocol got into force in Mexico. The advantages of using the Madrid Protocol is to obtaining registration in a fast and efficient way.
The first trimester of 2014 showed an increase of 150% in comparison with the previous year’s online filing. Online application made up about 13% of all trademark filings. It is expected that the online filing will be taking over the traditional filing system step by step. For industrial design other facts count, online filing is decreased. This probably due to the fact that designs are more complicated than trademarks are to file online.
Mexico has taken positive steps on Intellectual Property Rights. Innovation and the enforcement of IP rights are essential to economic welfare, competitiveness, growth and development.
IMPI: Marca en Linea
April 10th, 2014 by Geraldine Peeters
Mexico is one of the big players in the Latin American region. They can be acknowledged as an economically advanced nation. They were the first to enter the free-trade agreement with the USA in 1994. Also in terms of intellectual property the country is doing great. They recognized the value of investing in knowledge and information. Resulting in patent as well the trademark applications that keep increasing every year.
Although they are doing great in IP, and valuing the asset of intellectual property, there are some matters in which they fail to comply with international treaties. The regulation of geographical indications is one of these flaws in the IP protection of Mexico. A geographical indication is used as a sign on goods that have specific qualities and are ascribed to the specific geographical region. A geographical indication informs the consumer about the origin of a product and about the specific characters thanks to the place of production. “Geographical indications are protected in accordance with international treaties and national laws under a wide range of concepts, including special laws for the protection of geographical, indications or appellations of origin, trademark laws in the form of collective marks or certification marks laws against unfair competition, consumer protection laws, or specific laws or decrees that recognize individual geographical indications”, although the WIPO. An appellation of origin is a special cases of geographical indication. In special cases the quality or characteristics are due exclusively to the geographical location. The GI can be seen as a more general concept without real protection. AO is used in Law and protected by the Lisbon Agreement and other international treaties. The importance of GI is seen in the marketing potential. Consumers pay more and more attention to the origin of their products, this developed a specific market. The GI recognition stands for quality, authenticity and a lot of times for a traditional knowledge and cultural expression. This brings prosperity to the region in terms of exploitations and employment. For this matter it is important to protect the GI and prevail unauthorized use to avoid a loss of quality. Which can result in a deterioration of the GI as a brand and all the economic consequences that follow.
Rules for geographical indication are not included in the Mexican legislature. In the Mexican Law for Industrial Property under article 90 you can find a list of what may not be registered as a trademark. In article 90 X of the IPL it states that “Proper or common geographical names and maps, and also gentile nouns and adjectives, where they indicate the origin of the products or services and may cause confusion or error regarding such origin “are prohibited. The Mexican state doesn’t allow the registration of a trademark with geographical names or maps that indicate the origin of a product or service and may cause confusion about the origin. Neither are the rules about appellation of origin fully covering the topic. Whether a sign is recognized as a geographical indication is a matter of national law. Which the Mexican law doesn’t include. But currently there is a new law proposed by the Mexican legislature. This law is meant to protect consumers and producers. The Mexican culture is very rich and one that is known all over the world. With proper legislation one can enjoy the fruits of their rich culture. The law for geographical indications and appellation for origins will try to comply with the international treaties. The law proposes specific rules for registration and use of geographical indications and appellations of origin. Moreover it will impose sanctions in case of illegal use.
In Colombia we had recently the case of cheese nomination. With the entry of the free trade agreement with the European Union the Colombian market had to comply with the international norms. An example is the cheese-case. A geographical indication may not be used if the producer is not authorized. Better said, if the good is not produced in the area as nominated by the indication you cannot use the geographical indication. This was the case of a lot of cheese nominations on the Colombian market. Indications as Mozzarella, Parmesan or Camembert cheese could no longer be used by the producer. The SIC in Colombia judged that producers had to change the names they put on the packages. These indications could no longer be used by the producers resulting in a change of names on the packaging. The cheese could still be produced but not commercialized under these nominations. These names can only be put on the packages when produced in these regions respectively Italy or France. The international treaties provide sanctions that can range from court orders preventing the unauthorized use to fines and imprisonment.
In Europe the use of geographical indications and appellation of origin is far more integrated then in the Latin American region and covered by a stronger protection. A great part of the economy is based on products protected under these IP laws. One of the most famous examples can be found in France, in the Champagne region. The famous sparkling wine Champagne can only carry the name Champagne if produced in this region. The name Champagne carries out a great prestige and adds an economic value to the product. The region adds the value to the product. Thanks to the intellectual property rights that the product owns, it can be economically exploited. Since the treaties with European Union the Colombian law needs to confirm to this strict European uses of indication of origin and appellation of origin. Although the Colombian culture is rich in local products the exploitation in isn’t that elaborated. The Colombian coffee is one of the most famous export products that now are protected. In 2005, “Café de Colombia” was recognized as an appellation of origin in Colombia. The Colombian Coffee, ‘Cafe de Colombia’, became the first product protected by geographical indication registered in the European Union in 2007, that was not an European product. Following with two new appellations of origin for coffee from specific regions of Colombia that were recognized in 2011. A step in the right direction although more could be done to protect the various products Colombia has to offer.
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
September 6th, 2013 by Danny Grajales Pérez y Soto
The Colombian PTO, the Superintendency for Industry and Commerce -SIC-, has announced a new Seminar on Industrial Property for September 26th of 2013. This will be the third of such seminars, which have been a success of the educational programs the PTO has launched and aims at reaching the users of the PTO services for Industrial Property in order to educate, discuss and resolve questions on procedures before the PTO.
Our firm has attended the last two of these seminars, and it’s remarkable the amount of time the PTO takes on these events to address questions from the audience. It is also worth highlighting how well-prepared are the PTO representatives to explain complex issues and respond to questions from attendees, this is an encouraging sign especially taking into account the USTR 301 Special Report’s observation on the Colombian PTO regarding “lack of adequate training of enforcement officials”.
This is also part of a region-wide effort for spreading knowledge on intellectual property issues, that has been greatly amplified by cooperation agreements between PTOs. The Colombian (SIC) and the Chilean (INAPI) PTOs have an agreement to emulate the experience with Aula INAPI -Chile’s project for creating a virtual classroom for intellectual property education- that has been named API in Colombia. The Colombian project reports over 2800 attendees to their training efforts and several coming courses for students, professionals and entrepreneurs to take. Peru’s project, the Escuela Virtual INDECOPI, aims at not only training attendees but also promoting research and increase academic publications on intellectual property issues.
A similar project at the global level is the WIPO Academy, from the World Intellectual Propety Organization, which includes an eLearning Center -WIPO eLC-. These courses, some of which are free and some have tuition fees, are the most comprehensive online tool we have encountered for training of professionals on intellectual property matters. Mexico’s PTO, the IMPI, has implemented the DL-101S General Course on Intellectual Property in association with WIPO Academy, as a way of using WIPO’s successful platform for training of users of the Mexican system of IPR protection.
Indeed, lack of understanding from the user of IP procedures and misunderstanding of basic concepts on intellectual property matters is one of the main sources of mistakes and bottlenecks on the PTOs workload. While attorney representation should always be sought, an informed business owner will always have a competitive advantage and will better assess the options given by his/her legal advisors.
Further work must be undertaken to better spread the word on the availability of these courses. For this purpose, closer communication must be established with universities and private enterprise, and especially with IP-specialized forums (such as this blog). PTOs rarely use communication channels other than their own web page. We therefore invite PTOs to reach out to generators of IP-related content in order to further advertise these educational projects.
*We will update this post as more such projects come out. We ask PTO officials and members to submit information on projects not covered by this post.
May 29th, 2013 by Danny Grajales Pérez y Soto
Latin America has yet another project for regional integration under way. However, unlike many of its predecessors, this new project seems to have a rather good chance of succeding in impacting its member countries and actually integrating their economies. As a region with a defined common identity, significant potential for positioning itself as a strong player in the world economy and a long lasting yearning for european-like international cooperation; the Pacific Alliance comes as a new opportunity to compensate for the numerous failed attemps at regional integration. Our firm finds the Alliance to be an interesting project, and has created two new products to allow its clients to prepare for the integration to come and the impact it will surely have on the region’s intellectual property market.
The Pacific Alliance
The Pacific Alliance is a commercial alliance created by the Lima Declaration on April 28, 2011, with Chile, Colombia, Peru and Mexico as members countries and with Costa Rica in the process of joining the alliance to become a full member. Its declared purpose is to “deepen the integration of these economies” and to “define joint actions for commercial entailment with Asia-Pacific”. Furthermore, the Alliance is set to move towards free circulation of goods, services, capital and people. Its non-official purpose is to balance the regional power of Mercosur and the dominance of Brazil in the region’s economy.
From April 2011 to May 2013, the Alliance members have had 7 summits. The last one, held in Colombia, approved Costa Rica’s union to the Alliance. Costa Rica will become a full member once it has approved the Alliance’s constitution, which is expected to be done before this year’s end.
The four current members gather 40% of Latin America’s GDP, having four of the strongest economies in the region (but for Brazil and Argentina) and economic policies that have embraced globalization and relatively liberal economies. This makes the Alliance a powerful player and a effort for integration that makes economic sense, given the relative economic affinity of these countries.
Not like the others
Latin America is a region that has played with projects for integration in many ocasions with very disappointing results. As we noted in our book The State of Intellectual Property in Latin America, two of the most promising projects for integration, Mercosur and the CAN (the Andean Community) have failed to acomplish a substantial level of integration with virtually the sole exception of the Intellectual Property regulation of the Andean Community.
One big reason for this failure is the political instability and protectionist policies of several countries in the region, and their failure in adopting coherent and smart policies that actually would allow integration to happen. International forums for cooperation have often turned into arenas for political confrontation (Mr. Alvaro Uribe and Mr. Chavez’ confrontations, to name a notable example) or have lacked loyalty from members in enforcing the agreements that bound them (the unilateral negotiations of the CAN’s members with other economies and integration projects is a good example of this issue).
The Pacific Alliance, so far, seems to have dealed with these issues in a smart way. Only integrating economies that are already following a common path to development, the union will more easily avoid confrontation between its members. And integrating four of the leading regional economies, the member countries will have a strong incentive to enforce the agreements in an effort to have a more relevant role in the world economy. In other words: Integration based on economic affinity rather than geography or idelogy is the stronghold of the Pacific Alliance.
Adapting for the integration to come
As our Research Department has previously noted, Mexico and Chile are already two of the strongest players in Latin American intellectual property. Peru and Colombia are on the way of also becoming important players in the regional IP market.
Increasing integration will impact these countries in two major ways:
- There will be an increase in technology transfer between these countries, most likely coming from Chile and Mexico to the other members of the Alliance; and owners of IP assets will prefer other members of the Alliance for their regional expansion projects, given the ease of business that will exist within the Alliance.
- Foreign businesses (that is, countries outside the Alliance) will be increasingly tempted to regard the Alliance as a single market for their expansion plans in Latin America. With a population of more than 200’000.000 and citizens with a good purchasing power -if compared to the regional standards, that is- the Alliance’s members will become an even more attractive place for foreign investment.
It is in response to these changes to come that at B&R Latin America IP we have adapted our services portofolio to suit the needs of our foreign clients when investing in the newborn Pacific Alliance. Our services for “Pacific Alliance Trademark Application” and “Pacific Alliance Patent Application” will allow foreign businesses to protect their IP assets in the 5 full members of the new integrated market, with reduced professional fees and one contact point.
This is also our firm’s way to vouch for the Pacific Alliance’s new approach to regional integration. We firmly believe that Latin America should not face the international marketplace as separate -and powerless- economies. Integration will not only increase competitiveness when Latin America reaches markets beyond its own borders, but it will also allow foreign investors to more easily and cheaply enter the region.