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.
May 29th, 2013 by Danny Grajales Pérez y Soto
On Monday, May 5th 2013, during the first day of the 135th Annual Meeting of the International Trademark Association -INTA- a Memorandum of Understanding was signed between the INTA and the Mexican PTO, the Mexican Institute for Industrial Property -IMPI. The MoU was signed at a meeting between Mrs. Toe Su Aung, INTA’s President, and Mr. Miguel Ángel Margáin Gonzáles, IMPI’s Director General.
The main goal of the agreement is to assist Mexico in the implementation of the Madrid Protocol, which entered into force in this country on February 19th, 2013. Although neither the IMPI’s press release nor the INTA’s note on the agreement explain the details of such cooperation, it will most likely include an effort towards the implementation of an opposition procedure (which Mexico lacks, significantly increasing the volume of work the IMPI has to deal with in Madrid Protocol-related procedures). Althought the IMPI’s Director General, Mr. Miguel Ángel Margáin, has stated that the opposition system is not a requirement for the Protocol’s implementation, he has also been “talking to the industry associations about whether an opposition system is needed”. For most experts in trademark law, and from a regional perspective, it is our firm’s position that an opposition system would be highly beneficial for Mexico.
During the 3 months of Mexico’s membership to the Madrid Protocol, 12 international applications have been filed by Mexican applicants, and the country has been a designated country in around 100 international applications. These are relatively low numbers for an economy the size of Mexico’s, especially taking into account the high level of economic integration that the country has reached with the implementation of several free trade agreements, and its strong ties to the US economy.
Colombia, which implemented the protocol since August 2012, has been a designated country in 245 international applications, but only 1 application has been filed with Colombia as the country of origin (reportedly the first application was filed in late April). New Zealand, on the other hand, joined the Protocol on December 2012 but it has already been designated in 1400 international applications and has been the country of origin for 100 international applications.
Another feature that the IMPI has been working in, and that could receive significant assistance from the INTA’s members, is its online trademark application system -which is a required feature to the protocol’s members-. IMPI’s Director General has established 2014 as the year in which this system should be completely functional and should cover the entire process for trademark registration.
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
February 22nd, 2013 by Danny Grajales Pérez y Soto
Mexico has taken another step towards implementation of the Madrid Protocol. Being the third Latin American country to approve the Madrid Protocol for the international registration of trademarks, Mexico has decided to establish Individual Fees for international applications that include this country as a designated country for trademark registration. These new fees will enter into force on February 19/2013.
The Madrid Protocol, as explained in previous posts, allows for the express registration of trademarks in several countries around the world, with a single international application and a single payment for official fees. This is obviously an enormous step forward from having to file multiple applications with special procedures in each country. The Madrid Protocol is part of the Madrid System, and it’s managed by the WIPO.
Official Fees under the Madrid Protocol
The WIPO has created 4 different fees for procedures under the Madrid Protocol, they are all in Swiss Francs (CHF), and will have to be paid in that currency.
Basically, when approving the Madrid Protocol each country has to choose between getting a share of the standard fees of WIPO –Complementary fees– or setting their own Individual Fees.
The four official fees for 10-years international protection of the trademark, according to Article 8 of the Protocol are:
- WIPO’s Official Fees
In all procedures, the following two fees apply:
|Payable:||Not payable/reduced:||Amount in CHF:|
|The Basic Fee||Payable in all international applications. Increases when the TM includes colors.||Is reduced to as little as 65CHF when country of origin is a Least Developed Country –LDC– according to the UN.||Application, no color:
LDC Country, no color: 65CHF
LDC Country, colored: 90CHF
|Supplementary Fees||Payable per additional class when application includes more than 3 classes from the Nice Classification.||Not payable when only Contracting Parties with Individual Fees are designated.||100CHF per additional class.|
- Official fees for designated countries.
Depending on whether the country has established individual fees or not, one of these two fees applies:
|Complementary Fees||Payable per designated country.||Not payable when the designated country has established Individual Fees.||100 CHF per designated country.|
|Individual Fees||Payable in respect to each designated country that established Individual Fees (instead of Complementary Fees)||Not payable when both the Country of Origin of the application and the designated country belong to the Madrid Agreement. Complementary Fees apply for this case.||Click here to see the full Schedule of Fees for countries with Individual Fees.|
For procedures different than Registration Applications and Renewals, the full schedule of charges can be found here.
Fees for procedures related to Mexico.
This is a brief explanation of how will official fees work under the Madrid Protocol in Mexico. International Applicants applying for international registration that includes Mexico as a designated country the official and professional fees to pay would be:
|Official Fees of the Mexican PTO for national application for registration of the trademark. (The base application on which the international application is supported)|
|The Basic Fee for International Registration.|
|Supplementary Fees (If more than 3 classes).|
|The Individual fee for Mexico:
193 CHF (Aprox. USD$208)
|Professional Fees for national application.|
|Professional Fees for international application.|
WIPO has created a Fee Calculator, which allows the user to create estimates of Official Fees for registration in each country. It takes Individual Fees and reduced fees into account, so it’s a great tool to get an idea of the cost for international registration (without professional fees, of course). You may find the fee calculator here.