Traveling south (and even further south)

Kat friend Fredy Sánchez Merino provides Kat readers with his most recent summary of IP developments in Latin America.

Colombia-The Colombian State Council has ruled (here) against LVMH, affirming the previous decision given by the Superintendency of Industry and Commerce (SIC) (here) on the application for the registration of the trademark “Zephyr”. The refusal to register was based on a likelihood of confusion with the trademark “Tejidos Zephir”, registered by Saenz e Hijos S en C. The applicant was unsuccessful in its claim that the respective trademarks were not confusingly similar on the ground that the consumer populations were distinguishable based on the differences in the prices of the respective products.

Chile-The Chilean Supreme Court refused Amazon’s application for the trademark “Alexa” (here you may access the file finder since a direct link is not possible). The decision affirmed a previous ruling by the INAPI (Chilean National Institute of Industrial Property), where registration of the trademark had been denied because of a likelihood of confusion with the previously registered mark “Alexa”, owned by Arnold & Richter Cine Technik, a German audiovisual company. That decision was upheld despite that the two companies had reached agreement and a consent letter in support had been filed by Amazon.

Peru-The Peruvian National Institute for the Defense and Protection of Competence and Intellectual Property, INDECOPI, has ordered the shutdown of six websites, which without authorization transmitted matches from LaLiga-Spain's first football division (there were up to 3,5 million monthly visits to the sites). Through resolutions N° 97-2019/CDA-INDECOPI, N° 102-2019/CDA-INDECOPI, N° 99-2019/CDA-INDECOPI, N° 98-2019/CDA-INDECOPI and N° 112-2019/CDA (not yet available), the administrative agent ordered internet services providers Telefónica del Perú S.A.A., América Móvil Perú S.A.C, Entel Perú S.A and Viettel Perú SAC to block the following websites: www.rojadirectatv.football, www.rojadirectatv.online, www.rojadirecta.site, www.fulltelevisionhd.li www.supertelevisionhd.com, and www.canalenvivogratis.com. The CDA stated that the basis for the blocking order is copyright infringement, since the simultaneous retransmission of the matches constitutes a violation of LaLiga's right of communication to the public.

Peru-Closely related to these developments, INDECOPI and LaLiga have signed an agreement through which LaLiga will give INDECOPI a temporary, non-exclusive license for the use of the software Lumiere. This tool, developed by LaLiga, will facilitate and automate the process of identifying infringers and obtaining evidence against them.

Mexico-The Zapata and the Heirs of Revolution Foundation A.C., has recently obtained three trademark registrations for “Emiliano Zapata” in classes 25, 33 and 41 (here you may access the trademark finder, since a direct link to the file is not possible). IMPI seemingly did not ascribe importance to the fact that the trademarks, identifying a noted historical figure, will be used to market tequila and mezcal.

Brazil-The second phase of the pilot project for shared patent examination within the PPH between INPI (Brazil) and JPO (Japan) came into force on April 1, 2019. This stage will extend until March 31, 2021, and anticipates the participation of up to 200 applications from the two countries. Unlike the first stage of the project, in which INPI only accepted applications in the field of information technology, this one will also include macromolecular chemistry and polymers, metallurgy, agrochemicals, and microorganisms and enzymes; the Japanese office will continue to accept applications in all fields.

Argentina-The new trademark regulation (here) was published on April 3, 2019 and it will come into force from June 3, 2019. This regulation will complement the changes recently made to trademark applications and the opposition procedures, as the IPKat has previously discussed (here).

Notable changes include the recognition of secondary meaning for trademarks regulated under Art. 2 of the Law N.22.362 (here and yes, including three-dimensional trademarks); the refusal for the registration of trademarks consisting in a DO/GI, will only be applicable to those DO/GI's registered in Argentina, since the previous law did not so provide and therefore refusals could be based on any DO/GI, regardless of whether they were registered in the Argentinean Trademark Office (INPI); an owner who fails to submit a sworn declaration describing the use of the trademark will forfeit the right of renewal; the opposition process is further detailed as to deadlines; alternative conflict resolution is now available to stakeholders; and increasing the amount that can be awarded as an infringement sanction from to 100.000 to 660.000 pesos.

Photo by Andrew pmk and is licensed under the Creative Commons Attribution-Share Alike 3.0 unported license.