A designer's best friend.

A common issue when providing legal representation and advice to start-ups and entrepreneurs is to find trademarks that were not created taking into account the legal side of the trademark’s wording and design. The creative process that produces a mark is often regarded exclusively from the standpoint of its marketability, the message it sends to consumers and its relation to the products or services that the company provides. However, this is a deeply flawed method. As any experienced company in protection and management of IP assets will tell you, your attorney should be by your side from the very moment when you decide to create a trademark.

The ultimate goal of any IP assets is to generate renevue. Early legal advice will not only reduce litigation costs (since the chances of getting your application opposed, or denied, will be greatly reduced) but it could also improve the competitive advantage that your trademark provides. In short: Early legal advice will provide a greater profit margin for you.

Therefore, our advice for you is to:

1. First listen, then trademark. It is highly advisable to consult your attorney during the creative process for the mark. This will help you detect similar or un-registrable trademarks in the early stages of the process.

It is important to remember that not all words and not all signs may be registered as trademarks. In addition, if you provide services or sell your products in several countries, the added legal complexity of different jurisdictions  (with differents requirements and standards) should be taken into account when you trademark your products/services.

2. Be flexible. Allow us to emphasize that: you really need to be flexible. A very common issue in a Trademark Law practice is to find trademark owners who have grown emotionally attached to their marks, and disregard the legal drawbacks of that particular mark.

Therefore, if your attorney considers that the best option is to modify your trademark (either by changing the wording or adding a logo, for example) it is probably best to listen to him. This will ultimately result in reduced litigation costs for you.

3. Be creative. This may seem to be an obvious thing, but it’s one of the golden rules to having a healthy portfolio of IP assets.

This includes minding the wording of the trademark as how it relates to your field of work. For example, if you own a Tech company, avoid trademarks that include “Tech”, “Tec”, “Tek” or “Teq” in their wording. Your chances of getting your application opposed or denied will be significantly high. Take, for example, the trademark “Apple” for a hardware and software company: Although it is a commonly used word, it is not related in any way to their field of business, and the chances of finding a similar trademark belonging to a similar company are very low.

And finally, if you have no option but to use a wording closely related to your field of business, it is advisable to add a logo. The chances of finding two similar logos are much lower than it is with wordmarks.

For any additional advices or recommendations for the early stages of creation of your IP assets, feel free to contact us. And remember: Your IP is not ‘accessory’ to your business, having a healthy IP portfolio and a strong strategy for management of your IP assets often marks the difference between winners and loser in the business world.

Small changes make a big difference in official fees.

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.

Colombia.

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)

Argentina.

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.

Risky regulation in Ecuador

The Ecuatorian PTO -the IEPI- and the Ecuatorian government have alarmed the Latin American IP community with recent decisions regarding IP procedures in this country. Two regulatory changes affecting the domestic PTO seem to reflect a change in perspective from governmental authorities on Intellectual Property issues, and are worrying trends for investors and IP attorneys.

At B&R Latin America, while being respectful of the decisions that each domestic PTO takes in order to protect IP in their countries, we firmly reject any decision that may result damaging to a country’s innovation and research market. Indeed, we consider that Ecuador may be taking steps in a way that is neither convenient nor smart for their economic development.

Higher official fees for IP procedures.

As from October of 2012, most official fees for IP procedures in Ecuador were raised. In some cases, fees had as much as a tenfold increase.

However, as explained below, this increase in fees won’t affect all applicants, and will be specially damaging for foreign corporations and multinational companies. This is especially worrying since over 99% of all patent applications and nearly 50% of all other IP applications in Ecuador are from non-resident applicants. Furthermore, given the small amount of R+D that is conducted in Ecuador (and in Latin America as a whole), increased fees will created an entry barrier for R+D big players that will slow down technology transfer to the country.

The IEPI states that the increased fees aim at “Providing equity to the fees that are currently charged in Ecuador and those charged worldwide”. However, for example, the new fees for annuities for patents go as high as:

-2371% or 23 times higher than annuities in Colombia (From the 1^st to the 20^th year)

-1417% or 14 times higher than annuities in the United States (From the 1^st to the 20^th year)

-505% or 5 times higher than annuities before the European Patent Office (From the 1^st to the 20^th year)

Therefore, there is no equity in the new schedule of fees of the Ecuadorian PTO, and they become real entry barriers for the Ecuadorian IP market.

These are the old and the new fees for the most common procedures:

Patents

Trademarks

Industrial Designs

Plant-breeders rights

The Ecuatorian PTO has furthermore included a discount of up to 90% on these official fees for the following categories of applicants:

1. Small and median-sized companies (Mipymes)

2. Universities

3. Independent inventors

4. Public institutions

5. Small and median-sized farmers

6. Cooperative companies

Therefore, the applicants that will really be damaged will really be foreign companies, multinational corporations and big Ecuadorian companies. Given the fact that the research and development (R+D) that is required for a steady flow of innovation and patenting is not only expensive but also time-consuming, it is mostly big corporations and foreign companies the drivers of the patent (and other IP) applications in Latin American countries. The result will probably be a dramatic drop in IP applications in Ecuador, and that large foreign companies will search for other attractive markets with lower entry barriers.

However, this doesn’t mean that you should not file patent applications in Ecuador. The protection of the patent system is still highly valuable and not patenting could result in even higher losses than the official fees charged by the IEPI. Despite the existence of an entry barrier, the Ecuadorian IP market remains highly valuable and profitable.

Restructuring of the Ecuadorian PTO

Besides the increase in Official Fees, the Ecuadorian government has made profound changes to the Instituto Ecuatoriano para la Propiedad Intelectual, IEPI. As from October the 19^th and through Executive Decree No. 1322, Ecuador’s president, Rafael Correa, has ordered:

-That the Ecuadorian PTO, the IEPI, will now be attached to the National Secretary for Higher Education, Science, Technology and Innovation –SENECYT-. In practice, this means that the PTO will no longer be an independent entity, and its main goal of protection of IP rights will now be second to educational and scientific-development goals. However, this approach is misguided, since adequate protection (neither too much nor too little) of IP rights is necessary for “education, science and innovation”. Au contraire, a non-independent IP Office will likely result in isolation of the country from the international R+D and innovation flows and distrust in the decisions of the PTO.

-Finally, the Directive Board of the PTO was modified.  The board will now be integrated by representatives from the presidency and by the ministries of Agriculture, Culture, Industries, Environment, and Health; and by the Secretary General for Planning and Development. The President of the IEPI will now have the title of “Executive Director” and will serve as secretary of the Directive Board, without the right to vote on the board’s decisions. Once again, this amounts to reduced independency of the PTO and more control from government authorities over its decisions.

The right problem, the wrong solution.

It is no secret that there are problems with the patent system on a worldwide scale, and that the excesses of the patent system can result highly damaging for a country’s development. However, establishing high entry barriers and isolating the country from the world IP market is clearly not the solution for solving these problems.

As a law firm with a cross-border practice that holds the Ecuadorian IP market as very valuable for investors in Latin America, we expect the IEPI to take a more reasonable approach in the future. Furthermore, we expect the IEPI to remain impartial and fair in its decisions.

For more information on Ecuatorian IP, follow this link to WIPO’s country statistics for Ecuador: http://www.wipo.int/ipstats/en/statistics/country_profile/countries/ec.html

PTO to PTO Cooperation

Latin American PTOs have spent several years working on two major cooperation agreements, designed to not only speed up procedures but also to increase the reliability of information and to avoid duplicated procedures, especially in patent examinations. The two projects, known as PROSUR and CADOPAT cover almost the entire continent, and have been the central topic of several high profile meetings between the heads of the Latin American PTOs.

PROSUR – Regional Cooperation System on Industrial Property

Nine South American countries belong to this project; namely: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay. The system has been active since August 2011, and its main goal is to become a platform for sharing information from patent examinations between PTOs, therefore reducing the effort of examining the same patent application in several countries.

The project is aimed at easing procedures for creators, entrepreneurs and IP attorneys; and is being funded by the Inter-American Development Bank (IDB). Chile’s PTO, the INAPI, has assumed the presidency of the project. The success or failure of the project is still not clear, since the effects of the agreement will really be visible within the PTOs.

In the earlier stages of this project, possibilities for a regional trademark registry and deeper regional integration of procedures have been discussed. However, these proposals have not been very successful since a regional trademark registry without an integrated regional market would be of little use and could even be unadvisable, since the trademark registry would no longer reflect the reality of the marketplaces.

The project doesn’t look for legal harmonization, but it does create a common platform for systems integration. WIPO has agreed to act as a supervisor of the project, and the experience of the WIPO CASE and the e-PEC (From Brazil’s PTO) platforms is being used for the project.

CADOPAT – Support System for the Management of Patent Applications

This is a web portal created by the Mexican PTO, the Mexican Institute for Industrial Property. It basically shares the information from patent examinations with more than 9 countries from Central America, the Caribbean and Colombia. The Mexican PTO sends its information to Recipient Offices; this means that the information is shared in one direction only, unlike the PROSUR project. Indeed, the CADOPAT system is a unilateral project from the Mexican PTO. It also shares information on searches and other procedures but it is clear that this system has a lot of room for growth.

Current members of the CADOPAT system include Costa Rica, El Salvador, Guatemala, Honduras, Panama, Nicaragua, Dominican Republic, Cuba, Colombia.

WIPO CASE – The Centralized Access to Search and Examination system

The WIPO Centralized Access to Search and Examination (WIPO CASE) system is designed to facilitate the sharing of confidential search and examination information between IP offices, and to help enhance the quality and efficiency of search and examination and minimize unnecessary duplication of work. Using this platform, patent examiners from one group of participating offices can access the collection of patent search and examination reports shared by the office group. According to the Canadian PTO, the launch of the CASE is a significant advancement towards greater cooperation between IP offices in sharing the results of examination work. This will help reduce the time spent on processing duplicate applications filed in multiple offices. The duplication of work is a contributing factor to the growing patent backlog.

The platform is intended for use by groups of IP offices that mutually recognize their search and examination work. Patent documents and data shared though WIPO-CASE can either be hosted by WIPO or the digital libraries of national offices. Initially developed to support the work sharing efforts of the IP offices of Australia, Canada and the UK, WIPO-CASE is now being used or evaluated by other regional groupings of IP offices.

e-PEC – Electronic Platform for Collaborative Examination

Argentina and Brazil have created the e-PEC, which is a trilingual platform allowing the PTOs to exchange information on identical patent applications. The e-PEC aims at enabling patent examiners to perform collaborative examination of patent applications, without the need for physical proximity between the examiners. Thus, the system offers efficiency and quality technical examination which is made in all national institutes. However, to each country remains the ultimate decision on whether or not to grant the patent. Other countries that currently use the e-PEC platform include Chile, Ecuador, Colombia, Paraguay, Uruguay, Surinam and Peru.

Source: Wikimedia Commons

Colombia is the first Latin American emerging country to ratify the Protocol on the Madrid Agreement Concerning the International Registration of Marks of 1989.

The Constitutional Court of Colombia has recently declared the comformity of the law No. 1455 of 2011 with the Constitution. Such law ratified the Protocol and provided a new procedure for trademark owners to protect their trademarks in Colombia’s emerging market.

The Court’s decision is the final step in the colombian legislative process and it makes Colombia the second country in Latin America (after Cuba) to approve such treaty. There are 84 contracting parties to the protocol so far, including the European Union, the US, China, Japan and most of the developed and the developing world. The approval of this international instrument was an obligation from the Free Trade Agreement between Colombia and the United States, which will have effect since may 15th of 2012.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

This Protocol greatly simplifies the procedures for the international protection of trademarks, while leaving the national tradermark registration procedure virtually intact. Before the Madrid protocol, a trademark owner wishing to protect his trademark in several countries had to apply for registration in every one of the countries, an extremely inefficient and expensive procedure, contrary to a true global economy. Multi-national companies or smaller companies with international expantion plans, had to spend a significant amount of time and resources in this procedure, a huge transaction cost to enter international markets.

Under the Protocol, once an application for a trademark registration has been filed (Or the trademark has been already registered) the applicant or the trademark owner can file an international application. The national office (The Superintendy for Industry and Commerce -SIC- in Colombia) sends the international application to the WIPO’s International Office, which in turn notifies the offices of the contracting parties where protection was requested.

The flexibility of the Protocol allows for the applicant to choose not only the countried in which to protect it’s trademark, but also decide on the level of protection on each one of them. Each national office is free to deny the registry and the expiration by lack of use of a trademark is independent in each national office. Finally, transactions on the trademark can be registered for offices of all the contracting parties, or just selected countries.

This implies a new level of protection for trademark owners and a great reduction in transaction costs for international business.

UPDATE:

According to WIPO’s information notices, the Madrid Protocol will enter into force en Colombia in August 29 of 2012.
The approved treaty was delivered at the WIPO headquarters in May 29 and the Colombian PTO has announced new regulation for procedures under the Protocol.

The instrument of accession was accompanied by the following declarations:

– The declaration referred to in Article 5(2)(b) and (c) of the Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit.

– The declaration referred to in Article 8(7)(a) of the Protocol, whereby Colombia wishes to receive an individual fee where it is designated in an international application, in a designation subsequent to an international registration or in respect of the renewal of an international registration (instead of a share in the revenue produced by the supplementary and complementary fees). The amounts, in Swiss francs, of the said individual fee will be the subject of a separate information notice.

according to the INAPI, CHILE REACHES ONE MILLION TRADEMARK APPLICATIONS

With the filing of the application for registration of the trademark “OMNIDANZ” by National Real Estate Commercial & SA to protect the service academy education, cultural and recreational sports, the National Institute of Industrial Property (INAPI) reached one million trademark applications.
For the National Director of INAPI, Maximiliano Santa Cruz, reach one million applications filed “shows the interest that exists in our country for industrial property rights.”
During 2011, 35,866 new applications were presented, showing an increase of 12% compared to 2010. The total in 2011 was higher than 51 000, by adding registered trademark renewals.
This growth is accord with the latest report of the World Intellectual Property Organization (WIPO) called “World Intellectual Property Indicators 2011″, in which Chile has one of the highest level of applications for trademarks in Latin America. http://www.brlatina.com/chile-leader-trademark-registration/

In the last two years in Chile has been a clear increase in the filing of trademark applications, thanks to the modernization of the INAPI (changes of the platform, the digitization of all the presentations made before the Institute and the news tools online.)