Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.
In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.
However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.
When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.
In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to reply to it, including whichever argumentation, agreements and limitations the applicant may deem sufficient to overcome the objection.
Unfortunately, due to a recent amendment to WIPO regulations, any limitation or clarification to the applications must be made through WIPO, and not directly before the national Offices. As a result, the reply to the objection would require a higher expense, both in time and money.
In light of an amendment to the Mexican Trademarks Law, which came into effect last August 2018, coexistence agreements are now binding for the Examiners, as long as the trademarks are not identical. If the owners of the marks consider that there is no risk of confusion in case of coexistence, the IP Office is compelled to admit said coexistence.
Despite the fact that registering trademarks through the Madrid Protocol is indeed a simpler procedure, the implications and possible consequences of this must be taken in consideration, and the necessary preventive measures (availability searches, possible negative connotations of words or designs, negotiations, agreements, limitations in scopes of protection) should be undertaken.
Lastly, it must be mentioned that, despite the simpler application procedure, Madrid Protocol designations tend to be longer procedures, as there is an international and a national stage, whereas national applications just have the latter.
All in all, designations of international registrations through Madrid Protocol are really useful, and they do simplify the registration procedure for applicants that want to protect their brands worldwide, but the national consequences must be taken in consideration. The professional advice of an IP expert in the region is always recommended in order to avoid conflict and dilations.
Source: www.inpi.gov.br/Read More
La periodista Pamela Hernández entrevistó a José Santacroce, Director del clúster de invenciones implementadas por computador la oficina europea de patentes, quien explica brevemente la diferencia entre lo que conocemos como software y una invención implementada por computador, la cual conlleva un concepto mucho más extenso dada su definición, ejecución y aplicación tomando como base el desarrollo económico de un país como Colombia, sus retos, la cobertura tecnológica y la búsqueda de conceptos comunes con el fin de beneficiar la certidumbre del inventor. Lea la nota en: www.sic.gov.co/ruta-pi/julio19/que-hay-detras-de-las-invenciones-implementadas-por-computador
The Criminal Court of the Zipaquirá Circuit has issued the first punishable sentence in Colombia for Defrauding Author Rights and Related Rights. The businessman Jairo Ramón Jurado Mesa received a sentence of 48 months in prison and a fine of 26.66 current minimum wages, equivalent to more than USD 7,000.
According to the information provided by the Society of Authors and Composers (SAYCO), in February 2013, the businessman Jurado Mesa held a concert called “Live the Barranquilla Festival” in a commercial establishment in the municipality of Chía, Cundinamarca. It was during this concert where the group El Gran Combo de Puerto Rico interpreted 12 songs represented in Colombian territory by SAYCO, for which said collective management society should receive the sum of twenty three million pesos (USD 8,050).
The 12 songs interpreted in this concert are represented by SAYCO in Colombian territory in execution of agreements signed with foreign collective management societies, of which ASCAP (USA) manages 7 works, SGAE (SPAIN) 2, BMI (USA) 1, SBACEM (BRAZIL) 1 and SAYCO (COLOMBIA) 1.
According to the statement made by Dr. Ricardo Gómez Durán, Legal Director of SAYCO, the condemnatory sentence to Jurado Mesa is a wake-up call for business executives and organizers of concerts. It shows in Colombia for them to fulfill their duty to work with SAYCO, which is the collective management society that represents approximately 98% of the musical works that are performed in the country, as well as the one responsible for carrying out the collection on behalf of more than 110 sister societies around the world.
From his side, the manager of SAYCO, César Ahumada, expressed his satisfaction with the ruling and indicated that the conviction of Jurado Mesa “set an important precedent” in Colombia in terms of copyright.
The Director of transport of Sayco and Acinpro (Colombian management entity of communication rights, musical works and audiovisual productions), announced in the National Congress of Taxi Drivers that they will begin to charge to taxi drivers rates between $ 7,000 (2.15 USD) and $ 19,000 (5.84 USD) for the copyrights of the music that is heard on the vehicles. According to the management company, this announcement has been taking place since 2016.
In relation to the aforementioned announcement, Sayco assures that this charge is different from the one they make to radio stations, since they pay to play music, while taxi drivers (and also intermunicipal service drivers) will be charged for lending an additional service in their vehicles.
Before this news, the Association of Owners and Drivers of Taxi (Asoproctax) asked Sayco’s manager to clarify the circumstances in which the union should pay royalties for the use of copyright. Also, Asoproctax warned that if the new payment was executed, the item would be paid by the users of the transport service through new rates since the taxi drivers would not be willing to pay, since they consider that they do not use the music radio for profit.
Regarding this conflict, it is important to highlight that it is not new, due to the fact that since 2016 the National Directorate of Copyright (DNDA) and the Ministry of Transport created a working table and issued a joint circular that guided on the compliance with these regulations based on Law 23 of 1982 and Andean Decision 351 of 1993, referring to the rights of authors of public communication in Colombia. The aforementioned laws establish that “the use of audiovisual or musical works necessarily requires a license or authorization” so if they do not have them, royalties must be paid to the holders of the corresponding rights.
In conclusion, based on the positions adopted by both parties in relation to the new regulation, it is reasonable to understand that the conflict will be extended for a longer time until an agreement is reached.
SOURCE: https://www.elespectador.com/Read More
After arduous debates in the legislature and the public sphere, Law 1915 was enacted in Colombia in July. This also means Law 23 of 1982 is modified and new provisions are established in the area of copyright and related rights.
The law had a very controversial debate process, taking six years of discussions with working groups from organizations that defend digital rights, rights of people with visual disabilities, library advocates and journalists.
This project, in principle, responded to the need of Colombia to comply with some commitments acquired by the country in the framework of the Free Trade Agreement with the United States, in force since May 15, 2012.
According to the National Directorate of Colombian Law, the main changes that Law 1915 establishes include
- Specifies the scope of some author and related patrimonial rights with respect to the digital rights.
- Extends the term of protection when the rights are headed by legal persons.
- Expands the range of limitations and exceptions to copyright and related rights, reaffirming Colombia as the owner of one of the broadest ranges in these issues.
- Regulates the use of orphan works, placing Colombia as the pioneer in this type of regulation.
- Establishes provisions with respect to technological protection measures.
- Updates observance of rights regarding provisions.
However, the new law did not incorporate certain current issues, for example, the exceptions to the responsibility of internet service providers for infractions of copyright or related rights (CHECK – a point that is part of both FTA signed with the United States and agreement signed with the European Union).
These absences do not obscure the fact that this reform is an important novelty for copyright in Colombia since it is a fundamental reform of the aforementioned right, and not a formal amendment. The focus is to modernize different aspects rrelated toColombian authors and creative industries and their correlative relationship with foreign colleagues.
Concerts of the “Tigres del Norte”, a Mexican popular band, scheduled in Colombia for the first days of November were not carried out because the event’s entrepreneur did not cancel the Colombian Authors and Composers Society, (SAYCO ), the copyright of the musical works that would be heard in the show.
This precautionary measure was issued by the National Directorate of Copyright, (DNDA), and marks a historic milestone in the fight against the illegal practice of individual management in Colombia, which will make it possible to bluntly prevent any previous event musical that uses works protected by copyright, without the corresponding payment to SAYCO.
It is important to remark that SAYCO is the only Collective Management Company authorized in the country to collect the author’s rights, and according to what was expressed by the Manager, Cesar Ahumada, “(…) the organizers of the aforementioned event canceled the rights of an individual manager which corresponds to collect SAYCO.
In this way, the management company SAYCO advances in the protection of copyrights within Colombia through these and other sanctions, to prevent this kind of behavior that affects protected works from spreading.
SOURCE: http://sayco.org/Read More
On December 15, 2016, in an operation carried out by the National Institute of Food and Drug Surveillance (INVIMA), with the support of the Metropolitan Police of Bogotá, approximately 15,000 dietary supplement units were seized in the commercial center of San Victorino, Bogotá, Colombia.
The dietary supplements as well as medications which were seized,were a public health danger. .
Some of the fraudulent products involved were:“Mero Macho”,“Arrechón, Vitacitacerebrina Francesa”,“Sangre de Dragon”,“Artrin Gel”,“Flexdol” among others.
The General Director of INVIMA, Javier Humberto Guzmán Cruz, alerted the public in order to prevent it residents from taking the falsely named “miracle products”. The products did not comply with sanitary registration, or had a fraudulent permission.
Guzmán Cruz emphasized the necessity of ongoing operations in order to minimize and avoid possible risks caused by consuming fraudulent “miracle products.”
The operation was undertaken by the INVIMA as part of the continuous fight against the illegal sales of medical products.
INVIMA is conducting constant investigations in order to mitigate the consequences on the public and prevent possible risks generated by the commercialization of fraudulent products that are being sold illegally and without authorization, and with an unknown composition.
As a punitive measure, the illegal producers on the labels of the fraudulent dietary supplements will face judicial action.
Within the year 2016, INVIMA had 161 preventive operations in which smuggling and illegal and fraudulent products were discovered. These were mainly meat products, vegetable fats and oils, dietary supplements, alcoholic beverages, drugs and sexual enhancers.
On October 25, 2016, the Sectional Directorate of Customs of Barranquilla, in coordination with its Operational Group of the Division of Fiscalization Management, confiscated smuggled merchandise in different sectors of the Metropolitan Area of Barranquilla, valued at USD 144,530,000.
According to U.S. officials, Colombia is ranked in the top five of counterfeit countries in relation to the value of seized counterfeits. This is a result of the government’s limited resources and the country’s complex socio-political issues. For these reasons, the suppression of counterfeiting operations in Colombia is as complicated as in the fight against drug traffic.
During the year 2013, over 10 million people were economically affected by the purchase and use of fake goods in Colombia, losing an income of up to $ 720M due to the counterfeiting of their products. As a result, the Colombian government has launched the campaign “Whatever you do, play fair,” in an attempt to raise awareness among the Colombian population about this problem and in order for them to purchase original products, support new creations and respect copyright.
As the penalties from the government for this illegal activities are not significant, the companies themselves have to take action to protect its products. Particularly, companies in the pharmaceutical, music recording, computer, electronics, and software industries have encountered widespread piracy and counterfeiting of their products over many years. In these regards, it is highly recommended that companies request the advice of IP law firms on these issues to avoid being plagued by this problem.
Sources: http://www.dian.gov.coRead More
Two draft amendments to the Copyright Law 23 of 1982 covering Columbian copyright law are being reviewed in Congress and are awaiting approval.
While one of the drafts, promoted by the Congressional House of Representatives Congress, seeks to establish a remuneration right for authors of cinematographic works, the second draft is required by the FTA (Free Trade Agreement) between Colombia and United States.
This last draft, which aims to a broader amendment of Law 23, has as one of its objectives the inclusion of new technologies among its regulations. In this regard, it proposes, among other things, to update the digital divide of some Article 8 definitions and the powers of the holders of copyright and/or its assignees. Moreover, it establishes civil liability for people who avoid technological protection measures of copyright whether they configure an infringement of copyright or not.
Finally, one of the substantive changes proposed in the second draft is the extension of the term of protection of copyright from 30 to 70 years as well as the inclusion of new limitations and exceptions to copyright and increases in penalties for offenses related to infringements of copyright.
Source: http://www.phrlegal.comRead More
Compulsory license on Imatinib Mesylate – drug determined to be of public interest by the Colombian government
Translation by Carla Mendes Neto
WHAT THE GOVERNMENT CLAIMS
The Colombian Ministry of Health, through its Minister Alejandro Gaviria, seeks to declare the drug product Glivec® of public interest, meaning it would improve the well-being of the general population The product is used to treat Leukemia,its active ingredient being polymorph β of Imatinib mesylate and is currently marketed by Novartis, holder of exclusive rights the drug. This is the first step for the Colombian Superintendence of Industry and Commerce to declare the compulsory license for the production of the drug product by generic laboratories, which would allow the commercialization of the drug product at a lower price.
Novartis holds the invention patent No. 29270, called «Crystal Modification Of a N-Phenyl-2-Pyrimidineamine Derivative, Processes for its Manufacture and its Use», granted by the Superintendence of Industry and Commerce through Resolution No. 24250 of April 25, 2012, in force until July 9, 2018.
The patent claims the polymorphic form β of the compound Imatinib mesylate and it is intended for the treatment of all the stages of Philadelphia chromosome-positive leukemia and Chronic Myeloid Leukemia (Ph+ CML), metastasis and/or KIT (CD117)-positive unresectable and/or metastatic malignant gastrointestinal stromal tumors (GIST), as well as other types of cancer). Patients receiving Glivec® show a survival rate of 90% and can often achieve a long and productive life. To the contrary, patients who are not treated with Glivec® show a life expectancy of only 30%.
The patent application was filed before the Colombian Superintendence of Industry and Commerce on July 9, 1998. In 2003, after the examination process, the application was rejected for non-compliance with the patentability requirements of novelty and inventive step, pursuant to Decision 486. The resolution of denial allowed Colombian laboratories to manufacture and commercialize the generic products of the same molecule for several years. Novartis appealed the decision before the State Council: the company obtained a favorable ruling and the patent was finally granted in 2012. As a consequence, the domestic laboratories were forced to withdraw their generics out of the market and they had no choice but to negotiate a patent license with Novartis.
According to Colombian Ministry of Health, the granting of the patent resulted in a significant growth of the costs of public health regarding the treatment of leukemia. The Ministry tried to set the price of Glivec® at 140 Colombian pesos (equivalent to USD 0.05) per mg, (less than 50% of the annual USD 15,000 that the Government spends per treatment per patient) –but Novartis rejected the proposal.
This decision boosted the Ministry of Health to declare the molecule Imatinib (Glivec®) of public interest; and, for the first time in Colombia, a compulsory license would force Novartis to negotiate the price of this product with other laboratories.
The Ministry argues the existence of a growing pressure on the health budget requires putting an end to Novartis’ control on Imatinib supply and the issuing of a compulsory license as an exception to a patent when deemed a matter of public interest.
The imposition of a compulsory license, however, would not lead to similar measures for other drug products as this is a legal but exceptional decision, according to the Ministry.
Glivec® was Novartis’ most sold product last year, generating incomes of USD 4,700 billion. Sales drop dramatically after a cheaper generic version was launched into the US market in February.
The debate over Imatinib could set a precedent for other countries facing rising drug prices.
WHAT NOVARTIS CLAIMS
Novartis opposes a declaration of public interest. The company argues that there is no legitimate basis for the Ministry of Health to issue a compulsory license on Imatinib patent. This position is founded on the following grounds:
- 1. The patent in question has been legitimately granted for the crystal form of Imatinib mesylate, marketed in Colombia as Glivec®.
- 2. Sanitary records for Novartis Glivec are in force.
- 3. There are already other four pharmaceutical companies on the market that commercialize Imatinib and do not infringe Novartis’ patent. In the INVIMA [Colombian National Institute for Medicine and Food Surveillance] there are 19 sanitary records of new drug products pending approval.
- 4. The existence of Glivec® patent does not affect patients’ access to treatment. The molecule is part of the treatment of Chronic Myeloid Leukemia included in the Colombian Compulsory Health Plan (POS).
- 5. Glivec® price has been set and controlled since 2011 by the National Government.
- 6. A public interest declaration on Glivec® does not represent a solution to the financial challenges faced by the Colombian healthcare system.
- 7. There is no threat of Imatinib shortage: Novartis has always guaranteed adequate and uninterrupted access to the treatment.
Source: Novartis webpage