Dear Clients, Colleagues and Friends,
In view of latest developments with respect to the novel Coronavirus (COVID-19) outbreak, we at Moeller IP Advisors S.A. would like to share the following:
Firstly, preventive contingency measures have been taken to ensure undisrupted continuity of business in all of our offices around the globe. Our digital infrastructure enables us to securely operate regardless of physical presence, and any incoming work will be processed in the same manner and with the same professional care as before. We will be carefully tracking any updates from local authorities in regard to the progression of the situation.
Secondly, we have taken steps to ensure the full protection of our complete team in all offices by ensuring minimum physical client contact, extensive daily maintenance and cleaning of the offices, repetitive reminding of over-protective hygienic measures and informative remote seminars on the developments of the virus and the situation as a whole.
We would also like to use this opportunity to ensure Moeller’s full collaboration in solidarity with any clients or colleagues in need of professional aid due to disruption of business.
Finally, we wish everyone the very best and hope for the situation to clear up soon. Our sincerest sympathies to anyone personally affected.
Your Moeller IP team
Gerardo Messerer, Global Managing PartnerRead More
After receiving a Fast-Track designation from the FDA last March for the development of an anti-Ebola viral therapeutic, Tekmira Pharmaceuticals Corporation (a Canadian leading developer of RNA interference therapeutics) announced on August 7 that the U.S. Food & Drug Administration has confirmed they have modified the full clinical hold placed on the TKM-Ebola Investigational New Drug application to a partial clinical hold. This would enable the potential use of TKM-Ebola in individuals infected with Ebola virus.
Ebola virus disease (EVD), formerly known as Ebola hemorrhagic fever, is a severe, often fatal illness in humans. Ebola outbreaks have a case fatality rate of up to 90%. The virus is transmitted to people from wild animals and spreads in the human population through human-to-human transmission. In the light of the recent developments associated with the latest outbreak that involves the virus transmission in Guinea, Liberia, Nigeria and Sierra Leone, the World Health Organization (WHO) released a statement on August 8 informing that the conditions for a Public Health Emergency of International Concern (PHEIC) have been met.
No licensed vaccine neither a specific treatment are currently available, hence the importance of finding an effective drug that could be used to treat this serious and devastating illness.
Sources: WHO (World Health organization) – http://who.int
Bloomberg – http://www.bloomberg.comRead More
Following Apple’s problems in Mexico and Brazil related to the registration of the mark “iPhone,” in April an Argentine Tribunal of second instance upheld a judicial decision holding that the opposition filed by the owner of the Argentine registration for the word mark “WORK” claiming certain products of Class 9 against Apple´s application for “iWORK” in the same class was not undue or meritless given that both terms were confusingly similar.
As a background to this case, it is worth pointing out that the Argentine PTO (INPI) database shows that an Argentine individual filed an application for the mark “WORK” in Class 9 in 1993. That application, renewed in 2012, claimed only “teaching apparatus and instruments, automatic sales apparatus that function through the introduction of coins or tokens, cash register, machines for calculating and controlling (sic) and computers of general data.” Moreover, INPI’s database shows that on August 6, 2004, Apple filed an application for the word mark “iWORK” in Class 9, which was opposed by the mentioned individual based on his mark “WORK.”
According to the April 23 decision issued by the Chamber III of the Federal Appellate Tribunal on Civil and Commercial Matters, the enormous level of fame and recognition of the Apple brand was of no help to repel the opposition of the owner of WORK because the dispute was related to the signs “WORK” and “iWORK” without any further reference to Apple in the most recent Apple application.
Moreover, the Tribunal noted that the information gathered during the process resulted in no proof that Apple had commercialized a product using the sign “iWORK” although it was found that sales started in 2004 when the company filed its trademark application. This is not surprising given that this mark is applied to software sold online by Apple. It seems that proving some kind of commercialization of the products in Argentina could not have helped Apple much because Argentine trademark law follows a “first to file” system, as most countries worldwide do (except for the U.S., and a few others). Thus, although the use of unregistered marks (called “de facto marks”) has been increasingly recognized as a source of legal protection by Argentine judges, this trend is limited and does not result in giving priority to a junior “de facto” mark over a senior owner of an identical registered mark.
Furthermore, the judges mentioned that the argument about the lack of any proof supporting any “concrete economic activity” of the opposing individual owing the sign “WORK” was introduced too late into the judicial process, which sounds like closing the door to bring a cancellation action as a counterclaim. The Tribunal gave the same consideration to the argument on the limited scope of protection of the registration, which sounds like Apple argued that the goods of each marks were different and therefore no confusion among consumers would follow.
It is worth clarifying that under Argentinean trademark law the procedure to handle oppositions follows these steps: 1) The opposing and opposed parties have one year to privately negotiate the withdrawal of the opposition; 2) If no agreement is reached by the parties, the opposed party must file a legal action against the opposing party arguing the lack of merits of the opposition with the Federal Court on Civil and Commercial Matters; otherwise, the application filed by the opposed party would be considered abandoned; and 3) Before the judicial proceedings start, the opposed party must serve the defendant to attend a mandatory mediation procedure, which usually, but not always, results in the settlement of the case.
We hope this helps you understand the importance of preparing in the best possible way and setting up a sound legal strategy before starting a mediation where the claims to be litigated must be fully introduced by both parties.
Now it seems that Apple may end up needing to buy the mark “WORK” without any known use of it by its owner. This is possible in Argentina (and most countries other than the U.S.), where no affidavit proving use of the registered mark must be submitted to maintain or renew it. The only instrument to remove “deadwood” records is waiting for a third party to file a cancellation action for non-use of the mark.
As a final note, it is interesting that, perhaps due to the opposition analyzed herein, in May 2009, Apple filed applications for the word “iWORK” in Classes 38 and 42 that matured into registrations. Also, on May 5, 2012, Apple filed again for the mark “iWORK” in Class 9, but excluded the products covered by the mark “WORK” already mentioned.
From all of the facts, it is possible to infer that Apple may be trying to get a registration for “iWORK” in Class 9 that would not conflict with the mark “WORK” and also in other related classes that would allow it to use the mark without infringing the rights of the defendant in this case. This strategy would have to be tested in the courts, so we will keep an eye on these matters and report back on them in the future.Read More
We are glad to share with you that Dra. Natalia Pennisi (IP Lawyer), has been accepted to join the WIPO Summer School in Intellectual Property, which will be held in Mexico from July 29th to August 9th. The program consists of lectures by eminent WIPO and external experts in the field of IP as well as case studies and group discussions on selected IP topics, and it’s offered by the WIPO Academy and the Mexican Institute of Industrial Property.
Natalia is specialized in Copyright and in order to deep her knowledge in this field throughout Latin America, she will be doing an internship at the Copyright Department of Dumont Bergmann Bider, one of the most prestigious IP Law Firm in Mexico.Read More
Mariano Municoy (Attorney at Law) was accepted to spend one semester as a Foreign Visiting Professor at Chicago Kent College of Law following an invitation extended by Professor Mickie Piatt.
During his stay, Mariano is going to teach the course “Trademark Law in Latin America” (LAW 139), which is a two credit optional course open to JD and LLM students. This course will address the various substantive laws of trademarks in various Latin American countries for the purpose of comparison and contrast. The course will include discussion of the international treaties and trade agreements that exist among and between the United States and the various countries. Particular attention will be paid to the strategies that might be considered in registering trademarks in Latin America and in enforcing those trademarks. Additionally, the procedural differences of the trademark/intellectual property offices in the countries will also be covered.
Moreover, Mariano was invited to participate in the Boot Camp to be conducted during two weeks in August 2013 prior to the beginning of the Master on IP Management and Markets, which is a unique program worth taking a look at on http://www.kentlaw.iit.edu/academics/master-of-ip-management-and-markets LLM on Management of IP.
Finally, during the months Mariano is going to spend in Chicago he will be doing some academic research on different topics related to the potential legal changes that may be desirable following the further adoption of the Madrid Protocol by Latin American countries. For instance, he will be analyzing the social benefits that could be brought by establishing stricter requirements of using a registered mark in order to keep in force.Read More