March 19th, 2013 by Danny G. Pérez y Soto - B&R Research
The Mexican PTO (the IMPI) has released a web page spreading information on the implementation of the Madrid Protocol in this country. Although only available in Spanish, the page is a useful tool for getting first-hand information on this valuable new tool.
However, if you desire in-deep information or just information in English language, just go to any of our previous posts on the Protocol’s implementation in Mexico or contact us.
Here are our posts on the subject:
- Mexico: Yet another Latin American country to approve the Madrid Protocol.
- How much for an international trademark registration? | Mexico
- Head on to the Madrid Protocol | Mexico
January 25th, 2013 by Danny G. Pérez y Soto - B&R Research
A recent court decision on trademark matters in Colombia has set an important record on due process for trademark registrations in this country, in deciding a constitutional action (Also known as ‘Amparo’ or ‘Tutela’ in Latin American countries) presented by our litigation department against the Colombian Trademark Office -The SIC-.
The case was related to a trademark application, in which the trademark registration was granted after dismissing an opposition from a third party and conducting the registrability exam that is required for all applications. The granting of the trademark registration was then appealed and, during the appeal process a new registrability exam was conducted which led the Trademark Office to reverse their decision and deny the registration of the trademark.
A constitutional action was brought against this decision by our litigation department, leaded by attorney Juan Sebastián Salazar, on grounds of violation of due process and the right to defense. The court ruled in favor of the plaintiff, and established:
-That the Trademark office’s ability to examine the registrability of a trademark has a temporary limit (Namely, the time between publication and the moment of granting or denial) and can’t be performed in appeal proceedings.
Any registrability examination conducted after the granting/denial of a trademark application is a violation of due process, due to the fact that the applicant will have no opportunity to defend his/her application.
-When an appeal is brought against a trademark registration granting, the Trademark Office will have to limit its decision to the grounds of appeal (Although, admittedly this was long ago established in Colombia procedural law). Therefore, the existence of other similar trademarks can’t be considered by the trademark office in this procedure.
We consider this to be a landmark decision for trademark matters in Colombia, since the Trademark Office will have to acknowledge its limitations regarding trademark registrability examinations, and its obligation of respect of due process and the right to judicial defense in administrative procedures.
*This article was modified on February 5th to clarify that the aforementioned constitutional action is also known as Tutela or Recurso de Amparo in Latin American countries.
January 22nd, 2013 by Danny G. Pérez y Soto - B&R Research
Almost one month into 2013, changes in the schedules of fees of domestic PTOs have started. Several Latin American PTO’s have already raised or lowered their official fees for trademark and patent procedures. These changes will impact differently on each country’s IP market, depending mostly on the state of its economy. As we have stated previously in this blog and our recently published book, the IP market is specially sensitive to fluctuations in national and regional economies. Specifically, trademark trends show sensitivity to changes in consumer’s buying power; and patents are specially affected by the strentgh of a country’s productive force.
Changes in Official fees from the Colombian PTO -The SIC- have been mostly favorable for promoting IP in this country, which is in accordance with the country’s pro-IP position.
These are some of the most important changes (Fees are showed in Colombian pesos COP and explained in US Dollars USD, at the exchange rate of the day this post is published):
- Trademark applications stayed the same, at COP$750.000 or aprox. USD$423. However, applications for collective or certification marks was raised in aprox. USD$140.
- Furthermore, given the implementation of the Multiclass trademark registration in Colombia, filing applications in each additional class was lowered from an average of COP$600.000 to a fixed rate of COP$375.000 per additional class. An USD$128 decrease, in average.
- Trademark renewals were increased from COP$410.000 to COP$820.000. An USD$231 change.
- Trademark oppositions, previously at COP$315.000 are now set at COP$325.000. USD$5 of difference.
- Patent applications are slightly down, from COP$590.000 to COP$500.000. An USD$45 change.
- Patent examination is slightly up, from COP$490.000 to COP$530.000. An USD$20 difference.
To review the complete schedule of fees of the SIC, click here (Available in Spanish only)
The Argentinian PTO -The INPI- has raised most of its official fees, but has made no efforts in simplifying their complex schedule of fees (Or the readability of their press releases for that matter). In fact, the INPI has published two separate schedules of fees. The first one will be valid from January 7th 2013 to the 1st of July, And the second will be valid from the 1st of July to the date when new fees are published. The only difference between these two schedules of fees is a notable raise in their prices.
These are some of the most important changes (Fees are showed in Argentinian pesos ARS and explained in US Dollars USD, at the exchange rate of the day this post is published):
- Trademark applications have gone from ARS$400 to ARS$500 in the first half of 2013. This means a raise in aprox. USD$20.
- Trademark renewals were also raised from ARS$480 to ARS$600. An USD$25 change.
- Trademark oppositions, previously at ARS$300 are now set at ARS$400. USD$20 of difference.
- Patent applications are up, from ARS$1000 to ARS$1500. An USD$100 change.
- Patent examination is up, from ARS$1000 to ARS$1200. An USD$40 difference.
To review the complete schedule of fees of the INPI, click here (Available in Spanish only)
Fortunately, the exchange rate of the Argentinian Peso makes these changes not that significant for foreign applicants.
We will continue to post on this blog as soon as new fees for each country are published, and we will update our clients on our schedule of fees for IP procedures in each country.
December 18th, 2012 by Danny G. Pérez y Soto - B&R Research
Having a regional practice on Intellectual Property makes our firm specially sensitive to changes and differences on each country’s IP regulation. Little differences in formalities often turn into huge differences in time and expenses. Fortunately, the current regional trend is towards greater simplicity on IP procedures, either through the implementation of the Hague Apostille Convention* or through the complete elimination of requirements for legalization/apostilles. In countries such as Colombia, documents can just be signed and send via email to your attorneys for legal representation. Other countries such as Peru and Mexico have also eliminated legalization/apostille and Chile is underway of eliminating many requirements for their POAs.
The latest country to join this trend is Panama. We previously informed about the ratification of the Trademark Law Treaty, and now, Panama has finally eliminated many of the formalities that made IP matters in the country so much more complicated if compared to other Latin American countries. Unfortunately, many of the changes made affect only Trademark Law. The domestic PTO, the DIGERPI, has stated that POAs and other documents for Patent procedures had no changes on their required formalities.
The most important of these changes are:
-Notarization and legalization/apostille of POAs is no longer required for Trademark matters.
This means that POAs will only required to be signed and sent to IP attorneys in Panama. However, it remains unclear whether if this elimination of formalities apply for all cases. In countries such as Peru and Colombia, legalization/apostille is still required for Trademark Assignments or whenever legal rights are given up. The Panamanian PTO, the DIGERPI, has stated that this matter will be subject of future regulation. In the meantine, whenever assignments or legal rights on trademark are affected, it is advisable to continue to legalize/apostille POAs for Panama.
-The Certificate of Incorporation will no longer be required when the applicant is a corporation.
The elimination of this requirement will also apply for patents.
-Multiclass trademark application will be allowed.
However, this requires regulation from the PTO, and it’s still not available. As soon as multiclass registration is allowed our portfolio for services in Panama will be duly updated.
-Licenses of use no longer require to be registered before the PTO. Registration of these agreements is voluntary, not mandatory.
-It is still possible to file an application without the POA. However, there’s still an increase in official fees when this is done.
-Affidavits on trademark use are still required when filing an application for trademark registration.
These affidavits will still need to be notarized but not legalized/apostilled.
All of these changes will surely speed up procedures for trademarks in Panama. However, regulation from the PTO is still pending. We will post on this blog as soon as new information on this matter is available.
November 29th, 2012 by Danny G. Pérez y Soto - B&R Research
It is official: Mexico has formally deposited the ratification instrument of the Madrid Protocol before the World Intellectual Property Organization. This means that the Protocol will enter into force in exactly three months since the date of deposit. As we have previously stated on this blog, Mexico becomes the third Latin American country to enter the Madrid Protocol –After Colombia and Cuba– and the first major Latin American economy to do so.
The ratified treaty was deposited before WIPO on the 19th of November 2012, and it will enter into force on the 19th of February 2013. This leaves the Mexican PTO –The IMPI– with three months to prepare and adapt to the Protocol’s procedures. The complete list of parties to the Protocol now rises to 88.
The Mexican game rules.
Along with depositing the ratified treaty, Mexico has set two conditions for its entrance to the Madrid System:
1. The Protocol sets a 12 month period as the default time for providing notice of the provisional denial of an application. Mexico has extended it to 18 months.
2. Similarly to Colombia’s entrance to the Madrid System, Mexico has decided to establish “Individual Fees” for procedures in which Mexico is a designated country, especially in procedures for trademark registration, post-registration country designations and trademark renewals. This means that Official Fees for Madrid Procedures in Mexico will probably be a little higher than usual.
The IMPI is bound to release a new schedule of official fees, including the Individual Fees for the Madrid Protocol in the coming months. We will publish such information on this blog as soon as it’s released.
3. The registration of licenses before WIPO’s international registry won’t have effect in Mexico. Therefore, when licenses are awarded on an international registration that includes Mexico as a designated country, the license will also have to be registered before the Mexican PTO for it to have effects on this country.
Not everything that glitters…
We’ve said it before, and we’ll say it again: The Madrid Protocol is indeed a wonderful tool for easing international trademark registration, but it is not without some worrying problems. When we heard about the entrance of the Protocol in Mexico, one of the first worries that came to our mind is related to a Mexican rarity in Intellectual Property issues: Mexico does not have a procedure for Trademark Oppositions.
Given the rise in applications that always follows the entrance to the Madrid Protocol, this could mean that the Mexican PTO may be flooded with conflicting trademarks, starting cancellations actions against each-other and greatly increasing costs for trademark owners. Law firms with practices in Mexico –Our firm included– will have to keep a closer eye on new trademark applications, and filing amicus curiae for examinators to consider before granting trademarks conflicted to registered ones.
The entrance of the Madrid Protocol will surely make the Mexican trademark market more dynamic and accessible for trademark owners. At B&R Latin America we will also be getting ready for this new tool and will make sure to provide the best legal counseling for our clients in Mexico.
November 16th, 2012 by Danny G. Pérez y Soto - B&R Research
We have previously stated on this blog that Intellectual Property is an increasingly serious matter for Latin American nations as they become ever more competitive and integrated with the global economy. With the implementation of IP-specific courts in several countries, Latin America is going even beyond world standards on IP-specialization.
Already Chile, Panama and Peru have set special courts to address dispute resolution on IP matters; and Colombia recently created three separated and specialized courts. With the creation of a new Procedural Law, known as the General Code of Procedures (Law 1564 of 2012), the Colombian government has strengthened and extended the judicial functions of several administrative authorities.
The Basics –What’s going to change?
To better understand the changes on Colombian IP one must first remember that Colombia has three institutions that handle the national Intellectual Property:
The Superintendence for Industry and Commerce or SIC – Manages the Patent and Trademark registry, and is in charge of matters of Unfair Competition and Consumer Protection.
The National Direction for Author’s Rights or DNDA – Manages Copyrights and related rights.
The Agriculture Colombian Institute or ICA – Manages all matters related to plan-breeders rights.
What the new Code of Procedures did, was to assign jurisdictional functions to each one of these institutions, in the matters related to their field of work. Therefore, the SIC will now be able to carry on judicial hearings and decide on Patent and Trademark infringement, the DNDA on infringement Author’s Rights and Related Rights, and the ICA on infringement of Plant-breeder’s rights. Each of these institutions will create a court for this newly assigned function.
Is this useful? How will it work?
What this change means for the owner of IP assets and law firms, is mainly an improvement in the expertise of the decider on disputes on IP rights. It also provides greater certainty and reliability on the Colombian system of protection of IP assets. It was a fairly common problem to find judges with little or no knowledge of Intellectual Property, which lead to having an unpredictable judicial system in which the arguments of the parties were often not properly understood. Added to this problem is the already inefficient national judicial system, which is going through one of its strongest crisis in recent history and backlog on courtrooms is endemic… This is all to say: Having these administrative entities deciding on IP disputes is indeed a very good thing.
The rules under which these new courts will be implemented are:
- -The new IP courts will work alongside the regular courts. The plaintiff will decide whether if suing before the IP Court or the regular courts. Most plaintiffs will surely prefer the IP courts.
- -The procedure before the IP court will follow the same procedural rules than regular courts. The general rule will be to have oral procedures and the decision will be communicated to the parts on a final oral hearing.
- -The decisions on these cases can be appealed before the judge superior to the one that would usually hear these matters. E.g.: If the matter is competency of a “Circuit judge” (Juez de Circuito) the appeal would be decided by his superior, the “High Tribunal” (Tribunal Superior). And these decisions can’t be disputed before administrative courts.
Some insights from the National Direction for Author’s Rights .
On the 14th of November our firm attended a meeting with the Head of the National Direction for Author’s Rights, Mr. Felipe Garcia. He provided very useful insights on how are these institutions addressing this new challenge. The DNDA authorities are fairly excited and optimistic about their new jurisdictional functions, and their goal is to create a strong set of judicial decisions that will shape judicial precedent in both IP and regular courts.
It was slightly worrying to learn that the DNDA expects to receive approx. 10 cases at a time, starting on January 2013, while they adjust to this new function. Given the lack of reliable data on the number of IP cases in the country, these institutions are probably underestimating the amount of cases that they will receive once these courts start to function. It is also very likely that, given that the SIC already has experience in judicial procedures* the other two institutions will rely heavily on its support.
At B&R Latin America we also welcome these changes to national IP regulation, and will be sure to provide the best legal representation for our clients before these courts.
*Remember: The Superintendence for Industry and Commerce already had judicial functions on matters of Unfair Competition and Consumer Protection. Now, jurisdiction on IP matters has been added to their list of functions.