Argentina Moeller IP Advisors by alicejenny


									                                                       July 2010

Latin America IP Update

In this issue  Argentina. New Law about Mediation Procedure and Conciliation  Argentina.
New Disposition for Renewal Proceedings  Brazil. “Cotton case”: Suspension of cross-retaliate
against U.S. intellectual property rights after reaching a provisional agreement.  Chile. The
new Intellectual Property Law entered into force last April.  Colombia. “Controlled” Parallel
imports of pharmaceutical and medical devices.  Mexico. Counterfeiting: recent approval of a
reform in criminal matters.  Puerto Rico. Enactment of the new TM Law.  FAQ’s. In which
Latin American countries is use compulsory for TM renewal?  Did you know? FIFA World
Cup: Who copied whom?  Regulatory Affairs News. Pharmaceutical Trademarks.  Search
News. Chile: Suggestions on TM searching  About us  Upcoming events  Useful

Argentina                                            Notarization of Mediator’s signature in
                                                      the closing Mediation Act
New Law about Mediation                              Possibility of the Mediator to resort to
Procedure and Conciliation                            the assistance of third parties (Experts,
                                                      professionals in particular matters)
On May 6, 2010, Law No. 26589 regarding
Mediation Procedure and Conciliation, which          A fine for the party in case of non-
(according to the local legislation) are              attending the hearing equivalent to the 5
mandatory steps before any legal action is            % of the basic salary of a national judge
started, was published in the Argentinean            Expiration of the Mediation: if no
Official Gazette.                                     complaint is filed within the next year, it
The new Law that revokes the former                   will be necessary to start new Mediation
“Mediation Law No 24573” will enter in force          Procedures, as long as the statute of
90 days after its publication, this is next           limitations or expiration of the action do
August 5th .                                          not occur

The most significant differences between the     If you are interested in receiving the complete
former and the current Law are the               article please contact us at
   The term “Conciliation” has been
    included in the name of the Law as a         Argentina
    consequence of the faculty given to the
    judges to derive the parties again to the
                                                 New Disposition for Renewal
    Mediation Procedure during the pending       Proceedings
    process. In this case the terms will be      Disposition No. M-520/10
                                                 Owner inconsistencies in trademark renewal
   Creation of a    mediator   Register   for   proceedings must be amended with the
    Family matters                               pertinent documents showing the legitimacy

                                                     MoellerIP Advisors. July 2010. No.05. 1/9
of the applicant who filed the trademark         Brazil
renewal. The legitimacy must exist before or
at the moment of renewing the respective          Cotton case: suspension of cross-
trademark. Otherwise the nullity or rejection    retaliate against U.S. intellectual
of the renewal proceeding could be declared.
                                                 property rights after reaching a
This disposition has the purpose to avoid        provisional agreement
serving office actions in TM renewal
proceedings, where the registered owner of       On April 6, 2010, the governments of Brazil
the trademark to be renewed and the              and the U.S. reached a preliminary
applicant stated in the renewal application      agreement on that avoided (or, properly
are    inconsistent.  In   such    cases   a     speaking, delayed) the entrance in force of
inextensible term of 90 consecutive days will    cross-retaliatory (for an amount up to u$s
start running as from the filing of the          239 million in the form of restrictions,
renewal, so that the applicant proves his        suspensions and others, of IPRs) measures.
legitimacy to apply for this renewal
                                                 Just when the Brazilian Government was
(according to Art. 9 of the Argentinean TM
                                                 going    to   start   implementing     those
Law, only the owners have the right to
                                                 measures, a provisional agreement was
renew their trademarks).
                                                 reached and now, according to unofficial
In those cases, where these inconsistencies      sources, there is a short period of time for
(between owner and renewal applicant) are        the U.S. to show demonstrable efforts in
due to simple material mistakes and same         implementing its short term commitments
can be rectified, the above-mentioned term       until broader changes related to official
can be extended up to 150 consecutive            programs for subsidies and credits to the
days, so that the applicant of the renewal       cotton industry come in place, likely at the
files the pertinent documentation and            next Farm Bill that will be entering the
justifies the circumstances that would infer     Congress soon.
his legitimacy on the renewal application.
This legitimacy must exist before or at
the expiration date of the trademark to
be renewed.                                      Chile
Once the aforesaid term lapses the TM            The new Intellectual Property Law
Office will resolve the proceeding by
                                                 entered into force last April.
declaring the nullity (if no legitimacy is
claimed or proven by the applicant) or the
                                                 After three years of constant debate and
rejection (if a statement in that sense is
                                                 over 250 different proposed law-projects,
filed   without  including  the    pertinent
                                                 the new Intellectual Property Law, which
documents) of the renewal application.
                                                 modifies Law 17.336, finally entered into
The terms mentioned in this disposition    are   force.
mandatory but not peremptory, i.e.         the
                                                 The solution that this norm provides is that
applicant can prove his legitimacy until   the
                                                 Internet Service Providers will not be
renewal proceeding is resolved by the      TM
                                                 responsible for the contents uploaded by
                                                 users if they eliminate it as soon as they
This disposition entered in force on April 29,   become aware of the situation.
2010 and will be applied to renewal
                                                 The Internet Service Providers will be legally
proceedings that have not been resolved
                                                 notified of the infringements, they will
until that date.
                                                 receive a judicial order whenever they have
                                                 to screen or filter the contents of the web.
                                                 In case the judicial order is not obeyed or is
                                                 denied by the Internet Service Provider,

                                                  MoellerIP Advisors. July 2010. No.05. 2/9
they might be considered responsible of the         The most relevant restriction was that the
illegal contents, responsibility that will have     importer of a pharmaceutical or medical
to be proved by justice.                            device had to get the authorization from the
                                                    local   Health   Authority    (INVIMA)    to
That means that the person affected,
                                                    commercialize in Colombia. In order to do
creator or owner of a work, first has to
                                                    so, it was necessary to count with the
request the removal of the contents (object
                                                    consent of the foreign manufacturer who
of the infringement) before court, in order to
                                                    also had to permit the importer to use the
defend its rights.
                                                    mark or commercial name for the product.
Visit to obtain the complete text   Among the most relevant terms and
of the Law.                                         conditions for obtaining this approval is
                                                    worth mentioning that they last, at least one
                                                    year; the products must be approved by
                                                    INVISA but exceptions to this may be
Colombia                                            granted in certain cases; restrictions on
                                                    quantities and labeling must be observed.
Controlled Parallel imports of
                                                    Some lower level regulations implementing
pharmaceuticals and medical                         this measure have started to be issued by
devices                                             local administrative authorities and others
                                                    are expected to follow soon.
On April 21, 2010, the Colombian Ministry of
Health issued Decree 1313 setting forth the         Thus, since these regulation entered in
mechanisms for private and public actors to         force,    Colombian      importers    buying
require a “controlled” parallel importation         pharmaceutical or medical devices abroad
into Colombia of “legitimate or genuine”            from authorized third parties without having
pharmaceutical and medical devices bought           to obtain an authorization from the
abroad from an authorized third party.              manufacturer can file a request with INVIMA
                                                    with the health evidence of the exporting
Decree 1313 establishes that, from now on,          country and start commercializing those
it is not necessary to have the consent of          legitimate products in the country.
the manufacturer in order to import those
legitimate products into Colombia and,
moreover, set forth some of the conditions
and requirements to petition a “controlled          Mexico
parallel importation” to the pertinent
Colombian authorities.                              Counterfeiting: recent approval of a
The Decree mentions the Doha Declaration            reform in criminal matters
adopted under the WTO on November 14,
2001 as one of the international legal              The Chamber of Deputies has recently
sources supporting this measure, which,             approved a reform in criminal matters,
according to local authorities, has the goal        which authorizes the Public Ministry to
of lowering the costs of such products in the       initiate preliminary investigations ex-officio
very short term.                                    regarding those who are engaged in
                                                    practices of “piracy”.
Parallel imports have been allowed in
Colombia according to Decision 486, which           This reform will introduce a change in the
is the mandatory IP law for the whole               way of prosecuting these crimes that so far
Andean Community setting forth the                  required a lawsuit filed by the rights' holder
standard of international exhaustion of             in order for the competent Authority proceed
intellectual property rights, but the sanitary      against the infringers.
regulations that were in place limited their        This measure would be complemented by
use.                                                the proceeding that is being currently

                                                     MoellerIP Advisors. July 2010. No.05. 3/9
studied by the Congress, with the aim of        as seizure of infringing goods, cancellation
implementing a customs registration of          or assignment of the infringing TM, etc.
trademarks (such as is Argentina and
Paraguay), intended to prevent importation
of goods distinguished by trademarks
without permission from their legitimate        FAQ’S
                                                In which Latin American countries is
                                                use compulsory for TM renewal?
Puerto Rico

Enactment of the New TM Law                     In most of the LA countries use is not
                                                compulsory for a TM renewal.
On December 16, 2009, the new trademark         The   only  exceptions    are    Argentina,
Law was enacted by the Commonwealth of          Dominican Republic and Mexico.
Puerto Rico, revoking the former TM Law of
1991.                                           A sworn declaration of use has to be
                                                included in the renewal request in those
The new Law, among other stipulations,          countries, though in Argentina and Mexico
   provides for the registration of TMs used   no legalization and/or notarization thereto
    or ITU (Intended To Use) TMs in Puerto      are necessary, while for Dominican Republic,
    Rico                                        the declaration must be notarized and
   changes the term after which a mark not
    in use is deemed abandoned from 5           Dominican Republic and Mexico also request
    years to 3 years                            commercial material to prove said use, such
                                                as invoices, marketing and advertising
   requires the filing of a statement of       material.
    continued use by and during the 5th and
    10th year of registration
    the Registrant can request an extension
                                                Did you know…?
    of 1 year for filing the above mentioned
    statement which can be granted or not
    by the TM Office depending on the           Who copied whom?
    justifications given by the Registrant
Like   pursuant    to   the   former Law,                        “Time      for    Africa”,
trademarks will remain alive for 10 years                        selected by the FIFA as
and can be renewed for equal periods. Yet,                       the official song for the
the new Law provides a 6-month grace                             FIFA World Cup South
period for renewing purposes.                                    Africa 2010, composed
                                                                 and       produced      by
Existing TM registrations will be renewed
                                                                 Colombian singer Shakira
pursuant to the new Law (enjoying the 6
                                                                 in collaboration with the
month grace period).
                                                south African group Freshlyground, was
The former alternative of obtaining a Puerto    questioned as to its originality by having
Rico TM based on an US registration is no       fragments in clear infringement of author’s
longer available.                               rights.
The new law gives protection to marks           The chorus of this song would correspond to
against infringement and provides actions       a popular tune song by running soldiers and
for TM owners to attack infringement, such      youth groups like scouts in Africa,
                                                popularized by the group Golden Sounds in

                                                 MoellerIP Advisors. July 2010. No.05. 4/9
1986, entitled Zangalewa (translation Who         Search News
sent you?), and not the merengue song ”El
negro no puede”, of dominican singer
Wilfrido Vargas, as it was previously             Chile
Golden Sounds and Shakira have reached an
                                                  Suggestions on TM searching
agreement to end the conflict raised.
                                                  In Chile, Trademarks and Commercial
It is worth mentioning that this popular song     Denominations are different types of IP
could be catalogued as a “traditional cultural    rights, though they are both registered with
expression” (expressions of folklore), which      the PTO.
includes music created by a group of
                                                  The     Commercial      Denominations     are
unknown people, passed down from
                                                  registered in class 35 (Advertising; business
generation to generation, showing the
                                                  management;       business    administration;
history of a community and defining a
                                                  office functions). Therefore is highly
cultural identity. The derivative work as a
                                                  recommendable to always carry a TM search
way      of    expression     with    original
                                                  in said class.
characteristics, result of an adaptation of
this traditional cultural expression made by      In case of Domains and/or Corporate Names
the Golden Group Sounds, was what was             searches, it is very useful to make the same
considered a work of art to be protected.         search in the TM Registrar, since prior TMs
                                                  can be used as basis for oppositions against
The question is... Are there any means to
                                                  new domain and/or corporate names. In
protect   effectively   traditional cultural
                                                  summary, a single domain name search or
expressions as cultural heritage?
                                                  corporate name search alone would leave
                                                  the information incomplete.

Regulatory Affairs News
                                                  For further information please contact our
Pharmaceutical Trademarks:                        search partner, IP Services GmbH, at
                                         or visit its website at
Comparison of Acceptance Criteria
between the European Union and

One of our latest articles aims to show the       About us
coincidences and differences concerning the
acceptance       criteria      applied     to     Intellectual Property Day
pharmaceutical trademarks used by the
European Health Authority (EMEA) and the
health authorities     established within the     In celebration of the 10th anniversary of the
Southern Common Market or MERCOSUR                Intellectual Property Day, April 26th last,
(Argentina,     Brazil,     Paraguay      and     Moeller’s team participated in different local
Uruguay). Having this knowledge is vital          events in order to share in the celebration!
when the time comes to launch a single-
branded pharmaceutical product to regional                        Ms. Gabriela Hanak, Head of
markets, and also affects the predictability                      our Patent Department, was
of the decisions the health authorities will                      invited to co-conduct the
make.                                                             First Seminar of the AAAPI
                                                                  (Argentine Association of IP
If you are interested in receiving the complete                   Agents) in association with
article please contact us at                   the AHK (Argentine-German
                                                                  Chamber of Industry and

                                                   MoellerIP Advisors. July 2010. No.05. 5/9
Commerce).                                           Upcoming events!
The topics of interest during the seminar
were:                                                ABA Annual Meeting
   Patent   proceedings:    formality    vs.
    requirements contained in the patent act         When? August 5th – 10th
   Punishment because of non-observance             Where? San Francisco, USA
    of formal requirements
                                                     Who?    Mariano Municoy - IP Lawyer
   Proportionality
   Analysis of different situations.
                                                     LES Scandinavia
If you are interested in receiving the material of
this     presentation      contact      us      at
                                                     When?   September 6th – 7th
                                                     Where? Stockholm, Sweden
                                                     Who?    Gerardo Messerer - Partner
Meeting with ADE Commission
                                                     When? September 15th – 18th
On June 2, 2010 we were invited to                   Where? Hamburg, Germany
participate in a meeting with members of
the ADE Commission (Aidé a la Décision               Who?    Gerardo Messerer - Partner
Economique). This company was assigned             
by the European Commission, and is
carrying out a study on the Evaluation of the
Strategy for the Enforcement of Intellectual         PTMG Autumn
Property Rights in other countries (not
members of the EU). During nearly two                When? September 29th – October 1th
hours our heads of departments shared their
experience and know how regarding the                Where? Athens, Greece
most common problems in areas as patents,            Who?    Gerardo Messerer - Partner
trademarks, designs, regulatory affairs and
With the aim that our contribution may help
to prepare a successful strategy for
obtaining faster and better protection of IP         APAA
rights in Argentina.
                                                     When? October 16th – 19th
                                                     Where? Jeju Island, South Korea
                                                     Who?    Juan Carlos Stotz - Manager

                                                      MoellerIP Advisors. July 2010. No.05. 6/9
Great thanks for their contribution to:                                      Staff
                                                                             Karen Messerer
Mrs. Maria Elena Perez                                             
IP Lawyer
Ms. Estela De Luca                                                           Peter Cremerius
                                                                             Communications Manager
IP Lawyer                                                          
Mr. Mariano Municoy
                                                                             Ariana Lutz
IP Lawyer                                                                    Communications Assistant
Ms. Diana Vera Caspary                                             
Ms. Andrea Robles                                                            Contact information
                                                                             P +54 (11) 4894 1551
Ms. Paola Corigliano
Senior Trademark Paralegal                                                   F +54 (11) 4894 1561

Ms. Jessica Freiheit                                               
Senior Trademark Paralegal
Ms. Dina Arndt
Senior Trademark Paralegal
and to our Latin American colleagues!

Sources: INPI, World Trade Organization,
INMIVA, Inta Bulletin, Marcasur.

Moeller IP Advisors Newsletter is a quarterly publication intended merely to highlight matters of interest in the field of Intellectual Property,
Regulatory Affairs and in several areas of Law. This publication should not be interpreted as a legal/technical opinion for a specific case. Should
you require advice or information, please contact us at

                                                                                MoellerIP Advisors. July 2010. No.05. 7/9
Useful information
Holidays in Latin America                      Cuba

Argentina                                          July   26th:   Day   of   the  National
   July 9th: Independence Day                     July 27th: Day after of the National
   August 18th: Anniversary of the death of        Rebelliousness
    General José de San Martin                     October 10th: Anniversary      of the
   October 12th: Columbus Day                      beginning of the War of Independence in

   August 6 : Independence Day
                                                   August 10th: Indpendence Day
                                                   October 9th: Guayaquil Independence
Brazil                                              Day

   September 7th: Independence Day            El Salvador
   October 12th: Our Lady Aparecida
                                                   August 3rd: San Salvador Day
Chile                                              August 6th: Fiestas Patronales
                                                   September 15th: Independence Day
   July 16th: Our Lady of Mount Carmel            October 11th: Columbus Day
   August 15th: Assumption of Mary
   September 11th: Reconciliation Day         Guatemala
   September 18th: Independence Day
   September 19th: Army Day                       August 15th: Assumption of Mary
   October 11th: Columbus Day                     September 15th: Independence Day
   October 30th: Reformation Day                  October 20th: Revolution Day

Colombia                                       Honduras

   July 3th: St. Peter and St. Paul               September 15th: Independence Day
   July 20th: Independence Day                    October 3rd: Soldier’s Day
   August 7th: Battle of Boyaca                   October 11th: Columbus Day
   August 15th: Assumption of Mary                October 21st: Armed Force’s Day
   October 11th: Columbus Day
Costa Rica
                                                   September 16 th: Independece Day
   July 25 : Guanacaste Day                       November 20th: Revolution Day
   August 2nd: Virgin of Los Angeles, Feast
    of Patroness of Costa Rica
   August 15th: Assumption of Mary
   September 15th: Independence Day
   October 11th: Columbus Day                     July 19th: Liberation Day
                                                   September 14th: Battle of San Jacinto
                                                   September 15th: Independence Day

                                                   MoellerIP Advisors. July 2010. No.05. 8/9
Panama                                    Uruguay

   August 15th: Old Panama City Day          July 18th: Constitution Day
                                              August 25th: Independence Day
                                              October 11th: Columbus Day

   August 15th: Founding of Asuncion     Venezuela
   September 29th: Battle of Boqueron
                                              July 5th: Independence Day
Peru                                          July 24th: Birth of Simon Bolivar
                                              October     12th:   Day   of   Indigenous
   July 28th: Independence Day
   July 29th: Independence Day
   August 30th: Santa Rosa de Lima Day

                                              MoellerIP Advisors. July 2010. No.05. 9/9

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