Peru

The Pisco War in Peru

By Maria Sol Porro, Trademark Lawyer

A Chilean proposal has once again brought back the battle of Peru against Chile to recognize pisco as a national drink of one of these two countries. The aforementioned proposal came from the Chilean Minister of Agriculture, Antonio Walker, who proposed in mid-February that both countries reach an agreement to complement each other in order to obtain that their corresponding liquor is recognized as ¨pisco¨ in each country.

Although the Chilean Minister of Agriculture said that during a recent visit to Lima he proposed to his Peruvian counterpart, Gustavo Mostajo, a formula to put an end to the dispute between both countries regarding the denomination of origin of the alcoholic beverage, by complementing and recognizing the ip right of both of them over the aforementioned denomination in the international markets, the Peruvian Minister of Culture, Rogers Valencia, said that it is not possible that within the Peruvian legislation “the Chilean liquor is considered pisco”, highlighting that the right of denomination of origin is related to a geographical space, to a specific process and that, in addition, pisco is made with a specific variety of “grape”.

In this sense, the pisco war not only transcended borders, but also continents. On the Peru side, according to Indecopi (Office of the National Institute for the Defense of Competition and the Protection of Intellectual Property), 71 countries recognize the Peruvian right over the denomination of origin over pisco, such as India, Thailand, Ukraine, South Africa, Bolivia, Guatemala and Colombia, among others. Also, the Peruvian institute added that Chile “improperly modified” the name of a region of its territory (Pisco Elqui) in order to appropriate the term, an argument that is widely rejected by the neighboring country. As for Chile, it was explained that there are only four countries that recognize the appellation of origin of pisco as exclusively Chilean, which are Australia, Brunei, New Zealand and Turkey.

On the other hand, both countries prevent in their respective territories that the pisco of the opposite retains that name when they enter their corresponding markets, trying to enforce, in this way, the exercise of the rights that they understand the denomination of origin grants to them. Clearly, the last word in this historic dispute over the original ownership of this grape-based drink, of which the international community will continue to be a spectator, has not yet been said.

Source:  elcomercio.pe

Indecopi vs. Web “Piratas”

By Maria Sol Porro

The fight against piracy always meant an important effort for the governments, but in the last years, due to the accelerated evolution that the different technological means have experienced in a short period, the fight against piracy is not only physical and tangible but also digital, being often the digital piracy more powerful and damaging by having no defined limits.

For this reason, different governments began to take measures in line with this new type of online piracy. An example of the abovementioned measures are the new strategies for the fight against piracy taken in Peru (including digital anti-piracy) by the Indecopi – National Institute for the Defense of Competition and the Protection of Intellectual Property – during the first quarter of the current year.

As Indecopi was able to determine, the sectors most affected by digital piracy within the Peruvian territory are those related to music and the retransmission of soccer programs. This is why the institution will begin to review a series of cases both by complaints by parties and by ex officio against certain pirate websites. In the case of music, Indecopi aimed to sites such as “Godaddy”, to which the Official Author Institution has issued precautionary measures to indicate the removal of pirated websites hosted within its platform, even though these sites do not have domicile in Peru. In regards to the retransmission of football matches, the Peruvian institution pointed to sites such as “Direct Red”, which would be reproducing copyright and related rights of others, without paying any kind of right. For that reason, Indecopi not only dictated a series of precautionary measures to suspend this website, but also requested the Peruvian telecommunication operators (Telefónica, Claro, Bitel) to cut off the possibility of this site to continuing to transmit this soccer programs.

In this regard, it is important to highlight that the commitment of the Peruvian government in the fight against piracy has begun a few years ago, with the closest background being the one carried out by the Specialized Prosecutor’s Office in Customs Crimes and Intellectual Property of Lima against the Pelis24 domain.tv. Therefore, these last measures come from a serious and continuous policy that Indecopi, together with other Peruvian associations, have been applying for some years in Peru, and it is expected that this line will continue and be reinforced in the coming years.

Source: https://www.indecopi.gob.pe/

Significant Fines for Infringement of the Data Protection Law

By Maria Sol Porro

The National Authority for the Protection of Personal Data (ANPDP), which belongs to the Ministry of Justice, imposed fines for a total of $ USD 232,271.- to public and private institutions that violated the personal data protection law. According to the Peruvian law which governs this matter (Law No. 29733 of Protection of Personal Data of Peru), the processing of personal data requires, as a general rule, obtaining the free, prior, informed, express and unambiguous consent of its owner, except as provided in the law. Likewise, security measures must be implemented to protect the collected personal data, such as documenting security protocols for access and privilege management, as well as periodically reviewing the aforementioned privileges, among others.

Example of this new policy followed by the National Data Protection Authority was one of the last sanctions imposed on ¨Supermercados Peruanos S.A.¨, which had collected personal data without the authorization of its clients. Likewise, security measures were not implemented and the Authority was not notified of the transfer of data outside the Peruvian territory.

Also, during 2018, the ANPDP also prepared 105 final reports of instruction, made 283 visits to public and private institutions on personal data, and issued 3.278 resolutions on the National Registry of Personal Data Protection. In this sense and in order to inform the data managers, conducted the training of more than 1.700 people in various events and 689 queries on standard interpretation of data protection legislation, as well as made the first Report on Supervision of Transparency Portals Standard of public entities.

In this way, it is important to highlight that these new measures clearly demonstrate that the APDP is fully committed to the actions necessary to guarantee the right to the protection of personal data in Peru, in relation to the new measures taken by several Latin American countries and The EU.

Source: https://gestion.pe/economia/

Peru Joins the Global Patent Prosecution Highway Pilot Program

By Marta García

On January 6, 2019, the National Institute for the Defense of Competition and Intellectual Property Protection of Peru (INDECOPI) joined the Global Patent Prosecution Highway (GPPH) Pilot Program.

The aim of the PPH program is to expedite the processing of patent applications and to reduce overlapping examination work done by different patent offices. Under a PPH program, an applicant who has filed a first application with a first patent office and has received a positive opinion that the claims are allowable/patentable, may request fast-track examination of a corresponding application pending at a second office.

The GPPH pilot program allows patent applicants to request accelerated examination of a patent application at any of the participating offices if its claims have been found to be acceptable by any of the other participating offices. The system includes both national and PCT applications.

Currently the following patent offices participate in the GPPH pilot program: IP Australia (IP Australia), Austrian Patent Office (APO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Estonian Patent Office (EPA), Finnish Patent and Registration Office (PRH), German Patent and Trade Mark Office (DPMA), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Intellectual Property Office of New Zealand (IPONZ), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), National Institute for the Defense of Competition and Intellectual Property Protection of Peru (INDECOPI), National Institute of Industrial Property of Portugal (INPI), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Patent Office of the Republic of Poland (PPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Intellectual Property Office of Singapore (IPOS), Spanish Patent and Trademark Office (OEPM), Superintendence of Industry and Commerce of Colombia (SIC), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (UKIPO), United States Patent and Trademark Office (USPTO) and Visegrad Patent Institute (VPI).

Additionally, the following PPH programs are currently running in the INDECOPI:

• PPH INDECOPI-OEPM: On January 1, 2016, a PPH pilot program started between the INDECOPI and the Spanish Patent and Trademark Office (OEPM). The pilot program runs in automatically renewable 2-year periods.
• PPH Pacific Alliance: On July 1, 2016, a PPH pilot program started between the Chilean, Colombian, Mexican and Peruvian PTOs, all members of the regional collaborative project Pacific Alliance. The program will have a duration of three years, extendable to four years with previous agreement between the parties.
• PPH PROSUR: On October 1, 2016, a PPH pilot program started between the Argentinian, Brazilian, Chilean, Colombian, Costa Rican, Ecuadorian, Paraguayan, Peruvian and Uruguayan PTOs, all members of the regional collaborative project on Industrial Property PROSUR. The program will have a duration of three years, extendable to four years with previous agreement between the parties.
• PPH INDECOPI-JPO: On November 1, 2017, a PPH pilot program started between the INDECOPI and the Japan Patent Office (JPO). The pilot program was approved to run for a period of three years, which could be extended.

Source:  https://www.wipo.int

Can registration of a trademark be challenged?

By Maria Sol Porro

Last March the Constitutional Court of Peru, faced with a conflict related to the rejection of the registration of a trademark, established that the registration has no direct constitutional support based on the right to intellectual creation or the right to the protection of intellectual creation.

The above-mentioned dispute was originated because of the registration of the “G-Kristal” brand by import and export company, Goldsun before the Peruvian Trademark Office. Once the registration of the mark was accepted by the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), the company Backus and Johnston S.A. initiated a process of challenging the administrative resolution in an attempt to revoke the above mentioned registration based on its brand “Cristal.” In response to this request, the Supreme Court decided to revoke the registration by the INDECOPI, rejecting the registration of the “G-Kristal” mark, in finding that there are notable similarities between the “Cristal” and “G-Kristal” brands that might confuse the consumers.

Faced with this decision, Goldsun filed a constitutional judiciary protection order to reverse this decision. The First Constitutional body, in this case the Review Chamber, upheld the decision of the Supreme Court to hold that the contested jurisdictional decision was properly reasoned and had been issued in a regular proceeding.

However, the issue took an unexpected turn when the Constitutional Court (TC) found the request for judiciary protection order filed by the Goldsun Company to be well founded. Once the judiciary protection order was admitted, the matter was reconsidered.

On one hand, the TC established that the appellant’s claim (the protection of its right to the registration of the G-Kristal trademark) had no direct constitutional basis based on the right to intellectual creation (which, protects the broad possibility of creation in literary, scientific, technological or artistic areas without obstacles, censors or restrictions on the part of the state or individuals) or on the right to the protection of intellectual creation (guarantees the existence of a regime of protection of moral and material interests that derive from the said creations). This was the reason why it rejected this end of the demand. On the other hand, the TC found that the judgment of the Supreme Court had not been duly substantiated, since it did not sufficiently explain the reasons that led to the conclusion that the decision of the INDECOPI should be revoked.

Consequently, the Constitutional Court declared that the claim was properly supported based on the violation of the right to the due justification of judicial decisions and, consequently, it nullified the decision of the Supreme Court. Finally, it provided that the Supreme Court must reiterate its’ the decision, taking into accounts the grounds contained in this judgment.

Source: http://laley.pe/not/3956/

The Market of Generic Pharmaceuticals in Peru: Approval Process and Concept of Bioequivalence

By Moeller IP Advisors

In Peru, patent coverage for branded pharmaceuticals lasts for 20 years from the date of filing, in line with most jurisdictions. Once the 20-year term has expired, the same product can be marketed as generic. A generic drug must be equivalent to a branded drug in dosage form, safety, strength, quality, and intended use.

As the development costs are lower, generics are generally cheaper than branded pharmaceuticals, while they ensure the same therapeutic effect. The World Health Organization recommends the implementation of Generic Drug Policies and in the last years, many Latin American countries have taken steps to increase access to more affordable pharmaceuticals.

According to data from the consulting company Pharmexcil, in 2016 the market of generics accounted for about the 38% of the total pharma market in Peru, totalling $ 605 million.

Regulation of generics pharmaceuticals in Peru

According to the recommendations issued by the WHO, generics must ensure that they achieve the very same therapeutic effect as a branded pharmaceutical. They should, before entering the market, undergo a bioequivalence test. Pharmaceutical equivalence entails that both generic and branded drug should have the same amount of the same active substance, in the same dosage form, for the same route of administration and meeting the same or comparable standards.

In 2009, Peru enacted Act n. 29459 on Pharmaceutical Products, Medical Devices and Health Products. Article 10 states that companies, which aim at registering drugs in the Health Registry, must submit interchangeability studies; and that in vivo studies may be requested for drugs that may entail a higher health hazard.

The law then establishes that the procedure to evaluate the interchangeability of two pharmaceuticals will have to be defined by specific regulations.

For this purpose, the DIGEMID – General Bureau for Medicines, Inputs and Drugs of the Health Ministry was in charge of preparing a regulation detailing bioequivalence requirements, together with the CNCC – the National Center of Quality Control of the Health National Institute.

However, to this date, clear bioequivalence standards are yet to be enforced in Peru.

The economic interest of pharmaceutical companies that patented the branded products clashes with the interest of generic producers: in particular, producers of generics have been demanding to submit bioequivalence tests only for products that present a high hazard, claiming that conducting these studies involve a large investment that will eventually increase the final cost of the generic to the consumer.

On the other hand, it is undeniable and in line with the WHO requirements, that generics should at least comply with the minimum standards of interchangeability before entering the market. In this sense,  DIGEMID has been requiring a bioequivalence test for both new and existing generics, starting from drugs of narrow therapeutic index, that is those drugs in which small variations in dosage may cause serious health risks to the patient. Other generics, however, keep on being commercialized in absence of bioequivalence studies.

Clear requirements would benefit not only final consumers, but would also improve the access to the market for foreign companies wishing to commercialize their own generic medicines in the country.

IP capacitation for micro- and small enterprises (MSEs)

By Natalia Julia Rodriguez

On November 15^th, 2016, with the aim of promoting the importance of Trademark protection and other distinctive signs among Peruvian micro entrepreneurs, the National Institute for the Defense of Competition and the Protection of Intellectual Property (Indecopi), in coordination with the Ministry of Production, made a presentation, under the slogan “Protect your brand, protect your investment: Indecopi advises you” to a total of 176 small enterprises (Mses).

The business focuses for the Mses were related to the areas of food and beverages, leather and footwear, wood, textiles and clothing, agro-industry, industrial products, Andean grains, handicrafts, metalworking and construction, among others.

This training took place within the framework of the “Program of Trade Shows and Business Rounds: MYPERU, articulating markets”, organized by the Market Articulation Department of the Ministry of Production.

The information provided included mainly the importance of the effective registration of trademarks for products and services, as well as legal aspects in order to be taken into account prior to the registration of the signs.

In this sense, the purpose of the capacitation was also informing the MSes about the services of assessment and assistance in order to identify correctly the products or services by the correct classification prior to the filing of trademarks, also conducting previous searches in order to detect possible antecedents or opponents due to prior registrations which could eventually be in conflict, filing of forms, and providing general information.

The audience was able to know and understand the importance of the registration and protection of distinctive signs, and they also became aware of why it is not good to copy trademarks of their competitors, and to take notice of those signs which are prohibited to registration.

Source: www.indecopi.gob.pe