Thursday, 17 August 2017

Pisco: Cultural Heritage of Peru

The Peruvian denomination of origin (DO) 'Pisco' has been declared Cultural Heritage of the Peruvian Nation.

Law 30639 which was published yesterday in the Official Gazette of Peru, aims to elevate to the rank of law the Resolution Jefatural 179-88/INC-J. The Peruvian Congress therefore, has declared Pisco as Cultural Patrimony of the Nation.

Law 30639 only contains two articles: Art 1 which establishes the purpose of the Law, that is to raise the rank of Resolution 179-88 / INC-J; and Art 2 which covers the compliance with the declaration granting power to the Ministry of Culture, the Ministry of Foreign Trade and Tourism, the Ministry of Foreign Affairs and the Ministry of Production to monitor and comply with this law.

What is the Law of cultural heritage for?
The Peruvian Law for the Cultural Heritage of the Nation (Law No. 28296) in its Preliminary Title, Art 5 establishes that “…assets belonging to the Cultural Heritage of the Nation, regardless of their private or public status, are protected by the State”. Also Chapter II, Art 24 institutes that the protection of intangible property includes its “identification, documentation, registration, research, preservation, promotion, valorisation, transmission and revitalisation.”

Last month we reported that Peruvian Pisco was granted (by INDECOPI) the character of reputable mark due to its well-known status (here).

In regards to the status of cultural heritage, the newspaper notes a remark made by INDECOPI (which is the national IPO office) that “Peru is here (in Spanish)).
moving forward with its strategy of obtaining the original name of Pisco, taking into account that it currently shares it with Chile”. But is this relevant? How will anything change by obtaining the official status of ‘cultural heritage’? Pisco is original to Peru as it is original to Chile. Both of them has obtained DO in their respective jurisdiction. There are some states that recognise Pisco as coming from Chile and Peru. Other states will recognised as only coming from Chile and others only from Peru (see this report from La Republica

Moreover, this goes in line with something that we reported recently i.e. that Peruvian Pisco could not compete in the category of ‘Pisco’ but of the ‘aguardientes’ in the international contest "Spirits Selection by Concours Mondial de Bruxelles" (Brussels Competition), taken place next week in La Serena, Chile.

Sources here, here and here.

Thursday, 10 August 2017

Franchise: rights over trade marks

The Colombia Superintendence of Industry and Commerce (SIC) has issued an important understanding when drafting franchise contracts. While it was specifically addressed to trade marks it also extended to other intellectual property rights.

Basically, the understanding establishes that franchise contracts and “license agreement can only be concluded through the effective owner, that is, the person or company to which that entity authorises the registration of the mark.” In other words if there is no registered trade mark there is no right to be given by the franchisor. According to Prof Germán Darío Flórez (Colombia National University) the franchisor must be the owner of the trade mark in the territory in which the figure is to be exercised. He also extends to say that "when a contract is made between a franchisor and a franchisee, the trade mark is the main element that is transferred because it includes knowledge or 'know-how', and the secret in order for the business to thrive." While indeed the trade mark is the main element in a franchise to what extend can we say that the know-how is attached to the trade mark?

A trade mark is the sign that distinguishes one good or service from those of another company. Its function is the origin and we connect this with quality as well. A trade mark does not include the know-how. A company can authorise another one to use its trade mark or logo without imparting any knowledge but establishing quality standards. For example if I use the trade mark ‘banana’ for
mobile phones and I authorise another company to use ‘banana’ for mobile charges, there is no need to disclose the know-how of the company – let alone any trade secret. Yet going back to the case of franchise contracts, the franchisor owns the overall rights and trade marks of the company and allows its franchisee to use these rights and trade marks to do business.

Recently in a training session I was asked what the best way to draft an IP licence agreement is - there is not straightforward answer. But there are crucial things to consider depending on the IP wanted to be shared. In a franchise the franchisee not only would like to use the trade mark but actually the know-how of the company…that is the point. Therefore in such type of contract different clauses are included: use of trade marks (limitations), know-how, trade dress and the like; each one is independent of the others. Moreover, a franchisor may have other know-how and trade secrets that in this particular contract do not want to disclose.

Franchise| Colombia - Juan Valdez Cafe

missing London
The standard noted by SIC also includes “inventions, models, processes, image and constant advice, among other aspects protected by intellectual property and industrial secrecy.” This understanding goes in line with national IPO offices in Latin America. For example in Brazil INPI neither annotates agreements nor issue certificate of registration for the license of non-patented proprietary technological knowledge. In Mexico IP license/assignment must be registered with the IMPI and will not register if the IP registration had expired or if the agreement is longer than its IP valid term.

In Colombia there is no legislation on franchising and thus according to Prof Flórez “companies have made contracts in this modality without being the owners of the trade mark".

Source El Tiempo.

Wednesday, 9 August 2017

Uruguay and Chile: new agreement in the region

Economic and trade relations between Chile and Uruguay are currently governed by the Economic Complementation Agreement between Chile and the Southern Common Market (MERCOSUR) which comprises also Argentina, Brazil, and Paraguay. In order to deepen and stimulate trade relations, both countries agreed to start negotiations in early 2016 to set up a Free Trade Agreement.

This project has now reached the Chilean Chamber of Deputies for its First Constitutional Process.
This Agreement in general will coexist with the international agreements in which both countries are parties. Therefore in regards to Intellectual Property they reaffirm the commitment of both parties to the Berne Convention, Paris Convention, the TRIPS agreement and to its amendment protocol contained in the Doha Declaration (re. access to generic medicines).

If you are looking at the agreement, see chapter 10 (at page 183) which is the one that covers IP.
Article 10.5 covers ‘principles’ which refers to a balanced treatment between the rights of innovators on their creations and the social component of the use of knowledge for the benefit of citizens – provided they are compatible with the IPRs provisions. In this we observed that Article 10.5bis refers to the commitment to public health acknowledging the Implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and public health WT/L/540; and furthermore, the commitment to support the agreement presented by WT/L/641: inserting Article 31bis after Article 31 and by inserting the Annex to the TRIPS Agreement after Article 73.

Article 10.11 covers ‘denominations of origin and geographical indications’. In this, it asserts that each party must ensure in its legal system the protection of DOs and GIs and this to be in line with the TRIPS. The agreement further contains an Annex, if you look at Annex 10.11 it only covers Pisco and it contains this disclaimer “The foregoing shall be understood without prejudice to the recognition that Uruguay may grant to a country which is not a party in relation to homonymous geographical indications and denominations of origin.” According to MENSAJE Nº 348-364/ Pisco then has automatically secured access to the Uruguayan market without any geographical identifier.

Annex 10.7 has a list of DOs and GIs from both parties. From Uruguay is is mainly wines while Chile shows others such as ‘Limón de Pica’, ‘Sandía de Paine’, ‘Aceituna de Azapa’, ‘Dulces de la Ligua’, ‘Oregano de Putre’, and ‘Cordero Chilote’ to name a few.

Tuesday, 8 August 2017

New Geographical Indications on the Sight

From various jurisdictions we received some Geographical Indication news:
Flag, Mexico, Mexican Flag, Sky
Mexico: The Mexican Industrial Property Institute (IMPI) informed that under International Register No. 1062, published in the Bulletin ‘Appellations of Origin’ No. 45, the WIPO has granted international protection for the Mexican ‘Cacao Grijalva.’ This cacao has been protected as denomination of origin in Mexico since August 2016.

For its part, the diary El Economista reported that the National Association of Designations of Origin (ANDO) of Mexico is seeking legal protection for the red octopus ‘Pulpo Maya,’ as well as international recognition for the appellation of origin ‘Arroz Morelos.’


Flag, Chile, Chilean, America
Chile: Lst Friday was inaugurated the ‘First Festival of the Longaniza’ in Chillán, Chile. According to the Regional Diary EDÑUBLE, this is one of many actions developed in the search for an appellation of origin to present this product to the world. Before the festival, local producers of 'longaniza' participated in a talk on geographical indications, featuring speakers from the INAPI. As reported by this news agency, at this stage, 20 local producers of longaniza have received the first general outlines to obtain the geographical indication ‘longaniza de Chillán.’


Post written by Florelia Vallejo Trujillo
Assistant Professor, Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK

Saturday, 5 August 2017

Concurso: 5ta edicion del Premio Antonio Delgado

Fredy Adolfo Forero Villa Coordinador Jurídico del Observatorio Iberoamericano de Derecho de Autor (ODAI) nos trae esta gran noticia para los investigadores. Se trata del nombrado premio Antonio Delgado sobre estudios de investigación en torno al derecho de autor y a los derechos conexos.

La nota de prensa:

El Instituto de Derecho de Autor (Instituto Autor) y el Observatorio Iberoamericano de Derecho de Autor (ODAI) convocan la 5ª edición del Premio Antonio Delgado (PAD) sobre estudios de investigación en torno al derecho de autor y a los derechos conexos; los cuales deberán de ser abordados desde una perspectiva internacional, siempre que la materia lo permita. Se admitirán también estudios de derecho comparado. La convocatoria está abierta hasta el próximo 10 de enero de 2018. Los trabajos han de remitirse antes de esa fecha por correo electrónico a la cuenta pad@institutoautor.org, con copia a fforero@cerlalc.org.

El premio tiene una dotación económica de 3.000 euros para el estudio ganador y un accésit dotado con 1.500 euros para el estudio finalista. Además, el estudio ganador será publicado por el Instituto Autor.

Con la convocatoria de este premio, el Instituto Autor trata de honrar la memoria y el legado de Antonio Delgado Porras, maestro de generaciones de profesionales de la propiedad intelectual, tanto en España como en Latinoamérica. Territorios donde tuvo un importante papel en el desarrollo de buena parte de sus legislaciones en materia de derecho de autor, derechos conexos y gestión colectiva.

El jurado del premio estará compuesto por tres juristas de reconocido prestigio, que tendrán en cuenta como criterios de valoración la originalidad y altura creativa, la actualidad o la aplicación práctica del tema, entre otros. El fallo del Jurado será comunicado, tanto en la web del Instituto Autor como del ODAI, el 16 de febrero de 2018.

Las bases reguladoras del concurso se encuentran en este link (aqui)

Asi que...pon tus manos a la obra! Suerte.

Friday, 4 August 2017

Brazil: shaping the examination process

Collective marks, certification marks and 3-D shape trade marks require specific requirements in Brazil. Additional documentation is needed for these type of marks and thus, the application process and its examination takes time and expertise.

"I spy with my little eye..."
As it is expected these applications have a long process – adding to the backlog that the INPI already has. Yet, the INPI acknowledges that since 2013, it has been adopting administrative measures to remedy this. It now affirms that applicants may expect to receive the first review in about six months.

The data released by INPI shows that approx. 900 applications for collective marks per year are received; 300 for certification marks and; 160 3-D. However, it admits that in cases of collective and certifications marks 90% of applications are wrongly classified or do not submit certain and crucial documentation. In regards to 3-D marks it notes that applicants need to submit images of all views of that object which needs to have a ‘specific format’ be ‘unique and different from the competition’ and more importantly, the shape cannot be dictated by a technical utility (technical function). It also elaborates that a 2-D draw of a mark ‘with shadow or volume effect does not configure a three-dimensional mark.’

Finally it informs that there are currently 476 3-D marks, 273 collective marks and 68 certification marks registered.