Marcasur Magazine 44

Magazine

the madrid protocol descends on latin america

FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nยบ 44 JANUARY-MARCH 2012

In the city of Santa Cruz ASIPI Event With all sweetness Interview with Laura Sansalvador Brazil 2014, RIO 2016 An extraordinary moment

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Table of contents 16

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Editorial Statistics. Trademark and patent proceedings in Latin America Have you heard?

Marcasur reports Brazil 2014, Rio 2016: an extraordinary moment.

Events. Hospitable India. AIPPI Forum & Exco 2011 The future will be in intellectual creativity.

Interview with José Rodrigo Roque Díaz Events. In the capital Santa Cruz. XVI ASIPI Days The Madrid Protocol descends on Latin America.

Feature Article Column. A personal experience, by Daniel Lamas Events. Alegría, Méndez & Fernández Wong Interview with Laura Sansalvador, of ARCOR With all sweetness. .

Events. Captivated by Miami. INTA Leadership Meeting

50 You have the floor. Francisco Espinosa Reboa and Andrés Grunewaldt 52 Events. Between Spain and Latin America.

Tenth regional seminar for Latin American judges and district attorneys 54 Attorneys in their free time. Something more than sport.

Brazilian Marcello do Nascimento and Argentine Matías Noetinger 56 Marcasur Travelling.Earth Nature. Native Latin America 60 Kidding but seriously 61 History of a trademark. Nikon photo camera

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ENERO / MARZO 2 0 1 2

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Del editor

staff Editor: Juan Pittaluga jpittaluga@marcasur.com

Writers: Karina González kgonzalez@marcasur.com

Juan Manuel Pittaluga manuel@marcasur.com

María Victoria Licio mlicio@marcasurmi.com

Academic Departament: Dr. Daniel Lamas dlamas@lamasgrimaldi.com.uy

Contributors: Juan Francisco Pittaluga francisco@marcasur.com

Teresa Pereira tere@marcasur.com

Cinemag

Its essence was almost intact after 15 years but we have chosen to change it.

Through this new more contemporary and dynamic logo which follows Marcasur's passion in searching for new challenges, we have a new look and here it is. We hope you like Marcasur's new layout which reflects the beginning of a more international approach, of growing towards other markets and committing to new formats. We will shortly have a new web site with a functional design, with higher quality and quantity of content.

The cover refers to the incipient introduction of the Madrid Protocol by Colombia. It is without doubt one of the most significant events of this century so far referring to Intellectual Property. The tough opposition by a vast majority of Latin American professionals, also supported in some way by the ASIPI and national Intellectual Property organisations, slowly weakened and today the Protocol is a reality. The United States laid the foundations with strong support and the pressure which it exerted, and exerts, makes this a dissimilar “fight”. Those professionals showing opposition in Colombia were defeated, those opposing it in other Latin American countries will surely also be defeated in the near future. It is only a matter of time before more Latin American countries adopt the Protocol. Even the European

Community has started to apply pressure. As on other occasions, we have to start thinking that the profession must adapt as soon as possible to this new stage. We know that those who do not will surely be left out.

The ASIPI Work Sessions were successfully held in Santa Cruz, Bolivia, in November. We therefore bring you a different report through the opinion of its very own participants which is worth reading. And of course the full photo coverage of the event through the eyes of Marcasur.

You will also be able to read several articles and interviews. The challenges which Brazilian professionals face in holding new sporting events in the country, the current ICANN situation and interviews with the Legal Services Manager of Arcor Group, the new president of the Mexican Patent Office, among others. All with the usual care for your reading enjoyment. And as always, we look forward to your comments.M jpittaluga@marcasur.com

Contributors in this edition: Jacinta Rivera, Iris Adriana Gonzalez Garduño and Andrés Felipe Hoyos Escobar.

Marketing Department / subscriptions: Mei-lin Che mche@marcasur.com

Design: LP / arte visual Photography: Mei-lin Che Communications: Natalia Domingo ndomingo@marcasur.com

Proofing: Alejandro Coto Printer: Gráfica Mosca Translation: VGM Perú info@vgm.pe

MARCASUR Year 16 nº 44 January-March 2012 Cont. Echevarriarza 3535 A, 1604 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 Fax: (598) 2623 2957 info@marcasur.com

Quarterly publication issued:

by Editorial MS S.R.L. >Marcasur Mail

Juan Antonio Pittaluga Editor

ISSN 1688-2121 D.L. 354.155 Comisión del Papel.

Edición amparada al decreto 218/96

Send your correspondence to: info@marcasur.com 06

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STATISTICS // TRADEMARK AND PATENT PROCEEDINGS IN LATIN AMERICA

Times MARCASUR ASKED LATIN AMERICAN INTELLECTUAL PROPERTY SPECIALISTS ABOUT THE AVERAGE TIME FOR GRANTING A TRADEMARK AND A PATENT, WITH OR WITHOUT OPPOSITION, IN EACH OF THE REGION'S COUNTRIES. THE RESULTS ARE PRESENTED BELOW. The report points out the speed of trademark and patent grant proceedings in Latin American countries. To prepare the report, professionals have provided data from each national office. The times include the grant of a trademark and a patent from when the application is filed until publication, with and without opposition. Other circumstances are indicated in the table.

We also asked them whether or not it is possible to carry out some of the trademark and patent prosecution steps on-line, and if so, what those steps are. In Latin America the surveyed countries were Argentina, Bolivia, Brazil, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Uruguay and Venezuela.

AVERAGE TIME FOR GRANTING A TRADEMARK Country Argentina Bolivia Brazil Chile Colombia Costa Rica Cuba Ecuador El Salvador Guatemala Honduras Mexico Nicaragua Panama Paraguay Peru Dominican Rep. Uruguay Venezuela

Without opposition 1 yr 10 mo 2 - 3 yr1 7 mo 2 - 3 mo 8 - 9 mo 12 -15 mo 9 mo 6 - 7 mo 6 - 8 mo 12 mo 4 -10 mo 14 mo 10 mo 9 mo - 1 yr 3 - 5 mo 3 mo 26 - 27 mo 8 -12 mo10

With opposition 18 - 24 mo 1 - 2 yr 2 - 5 yr 1 - 2 yr 1 - 2 yr 18 - 24 mo 2 - 4 yr 2 - 3 yr 8 - 10 mo5 2 - 3 yr 12 - 18 mo N/A6 2 - 4 yr 12 mo7 1 - 3 yr 1 yr 12 - 18 mo 33 mo 3 - 10 yr

1 The INPI has a backlog of prosecution proceedings and has a work overload.

2 Only for goods or services in the Nice Classification.

3 4 Can be done on-line by means of merely submitting the application.

5 12 to 15 months with third party opposition; 18 to 24 months with third party opposition and appealing.

6 The Intellectual Property Law does not recognise the opposition system.

7 If there is any observation by the Examiners of the Trademark Office, it could take up to two more months. In the case of opposition, it will depend on the time the opposition proceeding against the registration takes in Court, from 08

Online application No No Yes2 Yes3 Yes4 No No No No No No No No No No Yes Yes8 Yes9 No

one year onwards. In Panama trademark opposition proceedings are filed and heard in the free competition and consumer affairs civil courts, so it is not an administrative proceeding but a judicial proceeding.

8 Only application submission and payments can be done on-line by means of accessing the National Intellectual Property Office portal 9 Only payments can be made on-line.

10 If it is a composite or device mark, grant times range between approximately 14 and 18 months as long as there are no impediments. www.marcasur.com

AVERAGE TIME TAKEN FOR GRANTING A PATENT

THE TOP FIVE IN TRADEMARKS. The fastest country in processing trademarks is Colombia (2 to 3 months), followed by the Dominican Republic (3 months), then Peru (3 to 5 months), El Salvador (6 to 7 months) and Guatemala (6 to 7 months). Trademarks must be renewed every 10 years in every country except Venezuela, where it must be done every 15 years.

THE TOP FIVE IN PATENTS. The fastest country in processing patents is El Salvador, followed by Panama, Nicaragua, Cuba and Honduras. The Latin American countries adhering to the PCT are: Brazil, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, and Peru.

Those who do not are: Argentina, Bolivia, Panama, Paraguay Uruguay and Venezuela. M

Country Argentina Bolivia Brazil Chile Colombia Costa Rica Cuba Ecuador El Salvador Guatemala Honduras Mexico Nicaragua Panama Paraguay Peru Dominican Rep. Uruguay Venezuela

1 It is possible to file an application on-line, nevertheless, it is only an initial step which must be validated before the Patent Office with the printed documentation through a legal representative or directly by the applicant.

2 The required documentation can be authorised and sent via e-mail. The patent registration application can be authorised and all the documentation can be sent via e-mail for PCT applications; the e-mail route cannot be used in the entire proceeding in the case of a country requiring a certified paper copy of the priority.

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Times 4 - 6 yr 8 yr 7 - 12 yr 4 - 5 yr 4 - 5 yr 3 - 4 yr 2 - 5 yr 4 yr 1 - 1.5 yr 3 - 4 yr 3 yr 3 - 4 yr 2.5 - 3 yr 1.5 - 3 yr 6 - 7 yr 4 - 5 yr 3 - 4 yr 10 yr N/A3

On-line application No No No 1 Yes No No 2 Yes No No No No No No No No No No No No

3 It is not feasible to give an average time for granting a patent in Venezuela today since the registration processes and patentable products changed radically with the legislative change which occurred in 2008, which meant that the acting national office stopped patent registration processes for years. In fact, it has been several years since a patent was granted in Venezuela even though the patent registration process has been started up again during the present year.

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HAVE YOU HEARD?

They come& go

New information

In Brazil, Di Blasi, Parente & Asociados has a new website: www.diblasi.com.br

In Venezuela, Báez y Associados

In Venezuela, Monserrat & Asociados S.C. has moved their offices to: Centro Comercial Galerías Los Naranjos, 4th floor, office 02-103 Urbanización Los Naranjos, Caracas 1081, Venezuela Tel: 58212 985 23 28/ 985 25 04/ 985 87 33 Fax: 58 212 985 53 21

has moved to the following address: CCCT. Torre Invertida. 2nd floor, office 204. Chuao 1061 Caracas, Venezuela Tel: 58 212 427 32 33/ 514 35 04

In Guatemala, Arias & Muñoz has

In Mexico, Ernesto Meade has disassociated himself from Vadillo & Co. From the 24th October 2011 he has joined Uhthoff, Gómez Vega & Uhthoff, S. C. In Venezuela, Tehar S. C. has brought in a new attorney, Dr. Polo Casanova, to its Trademark Depar tment. Polo has professional experience in numerous matters and lawsuits related to civil and commercial law especially in those relating to proceedings before civil and commercial courts. He is currently majoring in constitutional

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procedure law at the Universidad Monteávila.

In Mexico, Alegría, Méndez & Fernández Wong S. C. has taken on Ana Gabriela Luna Valerio in their patents department. Ana Gabriela follows the family tradition since she is the daughter of Francisco Luna, partner in said firm. Her e-mail address is ana@alemef.mx

moved their offices to: Diagonal 6, 10-01 Zona 10, Centro Gerencial Las Margaritas, Torre II, office 402-B. The PBX 502 2382 7700 remains unchanged.

In Argentina, Moeller IP Advisors has moved to the following address: Av. Del Libertador 5954, 7th floor, C1428ARP Buenos Aires, Argentina The new contact numbers are: Tel: 54 11 4788-7777 Fax (Argentina): 54 11 4788-7776 Fax (Germany): 49 89 649 489 19 The e-mail address and website remain unchanged.

In Uruguay, Fox & Lapenne has its new offices at: Pedro Murillo 6136, 11500 Montevideo, Uruguay Their new telephone numbers are: Tel: 598 2604 0360 Fax: 598 2604 6669 The e-mail address and website remain unchanged.

In Peru, Union Andina de patentes SAC has moved their offices to: Edificio Reducto Business Center Av. Paseo de la República 6010 Of. 303. Lima 18 Telephone: 446 9176/ 446 9184 Postal Code 18-1524

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In El Salvador, Espino, Nieto & Asociados has a new webpage at www.espinolaw.com

News In Argentina, Erica D. Lerner has opened her own office, E. D. Lerner Abogados, specialising in Intellectual Proper ty. Their contact details are: info@edlerner.com.ar www.edlerner.com.ar In Venezuela, the new office Moreau Gonzalez & Asociados has been created. Its founding par tners Jacqueline Moreau Aymard and Ana Carolina González have an ample career in the Intellectual Proper ty field, d e f e n c e o f competition, mergers and acquisitions, consumer protection, unfair competition and administrative, economic and regulatory law.

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Their new e-mail addresses are: jmoreau@moreaugonzalez.com.ve and agonzalez@moreaugonzalez.com.ve Av. Eugenio Mendoza. Torre Banco Lara, 10th floor Urb. La Castellana, Caracas.

1061. Venezuela Tel: 58 212 6309950/ 6309951 In Chile, Sergio Amenábar V. took the position of general adviser of Estudio Villaseca the past 1st January 2012. From his new position he will actively participate a s a t t o r n e y, a d v i s e r a n d coordinator in the areas of Corporate Practice and Intellectual Estudio Federico Villaseca has gone on to be called Estudio Villaseca which is how it was mostly called by its clients and cor respondents during nearly 100 years of practice.

Congress The IX Congress on “Tourism trademarks Gates to Investment and the Protection of Local Identity” took place in Cancun with the par ticipation of prestigious associations such as the Mexican Intellectual Property Institute (MIPI) and the World Intellectual Property Organisation (WIPO). The event took place on from the 13th to 15th November and was organised by the Association of Old Alumni of the Magister Lvcentivs of the Universidad of Alicante, Spain (AOAML). The Cancun Center was the headquarters and its aim was to make an analysis for protecting, promoting and spreading tourism trademarks at an international level in various terms related to security, counter feiting and geographic identity. It was the ninth edition of the event and professionals from all over the world linked to tourism and Intellectual Property took part in order to analyse different aspects of the tourism trademarks.

Prizes & distinctions

Dr. Ramiro Moreno Baldivieso, a prestigious Bolivian attorney, was welcomed as foreign academic correspondent at the head office of the Academy of Law and Social Sciences of Córdoba on the past 18th October. He presented his thesis on “The suretyship insurance and the automatic guarantee clause on first demand” to said Academy in the presence of distinguished members of the respectable institution chaired by Dr. Juan Carlos Palmero and his honorary president Dr. Luis Moisset de Espanes.

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MARCASUR reports Paraguay: ALDO FABRIZIO MÓDICA OBTAINED A MASTERS IN INTELLECTUAL PROPERTY

Aldo Fabrizio Módica Bareiro, attorney of the Bareiro-Módica & Asociados law studio of Paraguay, obtained the Masters degree in Intellectual Property at the Universidad Austral of Buenos

Aires. Taking advantage of the graduation ceremony held in the Argentine capital, Aldo Fabrizio received two gold medals; one for being the best of last years graduates in the speciality and another for

having handed in the best thesis. It was about “The legal protection of ideas”. In the investigative work in which he compared Argentine and Paraguayan legislation, he began on the principle that ideas do not have copyright protection, to arrive at the conclusion that it is possible to protect them by means of other legal institutions.

Aldo Fabrizio practices law at one of the Paraguayan traditional studios specialising in Intellectual rights founded by his mother, Dr. Gladys Bareiro de Módica, who left the law firm at the end of 2010 to take the position of Supreme Court minister. aldo@bareiromodica.com.py aldo

MARCASUR reports Paraguay A WORK ON COPYRIGHTS

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The book Derecho paraguayo de autor by Gladys Bareiro de Módica and Carmelo Alberto Módica was published in Paraguay.

The presentation was the responsibility of Federico Villalba, a professor at the Universidad Austral of Buenos Aires.

Dr. Gladys Bareiro de Módica is a Paraguay Supreme Court Minister. She dedicated herself to the practice of Intellectual rights for nearly three decades. She was the founder of the BareiroMódica law studio, which is currently headed by her h u s b a n d , D r. C a r m e l o Alberto Módica and has their three children, Denise, Enzo and Fabrizio, specialising in the same discipline, as partners.

Professor Villalba expressed

that “it is necessary to know how to transmit the legal universe which covers the creators generously and also do it in a clear language so that everyone, regardless of whether they belong to this world or not, can understand.

In brief, this is Derecho paraguayo de autor. The authors, owners of a talented pen, with sharp observations and a clear and concise subtle prose, have achieved such objective. It is a modern and educational book”.

www.bareiromodica.com.py

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MARCASUR reports Bolivia: CREATION OF GUEVARA & GUTIÉRREZ INTELLECTUAL PROPERTY

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Guevara & Gutiérrez S. C. – Legal Services and Marcos Mercado announce the incorporation of a new company specialising in Intellectual rights, called Guevara & Gutiérrez – Intellectual Property.

Marcos Mercado was boss of the Intellectual Property practice of Guevara & Gutiérrez S. C. – Legal Services during the last five years.

The growth of the practice within the firm has made forming the specialised boutique with its own administrative management n e c e s s a r y. T h e n e w Intellectual Property firm will also cover related subjects such as publicity, domain names and unfair competition among others.

This union will continue to provide the clients of both entities with the security of a specialised and integral service in the Bolivian market.

Contact: Marcos Mercado: mmercado@gg-lex.com

Telephones: La Paz: +591 2277 0808 Santa Cruz: +591 3343 3594 Fax: +591 2279 6462 www.gg-lex.com

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opinion

Trade name and

services of class 35 Juan Carlos Salamanca Vera Abogados Asociados S.A. Colombia

In Colombia businessmen / women often think that by registering a trade name in the trade register the exclusivity right is obtained for that name, and that they can invoke the actions of the law on third parties using said name for the same commercial activities without their prior consent on the basis of that registration.

The interpretation made by businessmen / women does not correspond to the reality of the law, since there is plenty of case law, both of the Andean Community Court of Justice and the State Council in Colombia, where it is established that the simple company registration of the trade name does not grant rights but that the exclusivity right is acquired by the first real and effective use of such name in commerce.

Exclusivity right on a trade name is also not obtained by filing registration of said trade name before the competent national office in Colombia, The Superintendency of Industry and Commerce, since such filing is a simple legal presumption of use which is held until proof to the contrary.

The Superintendency of Industry and Commerce doctrine, upheld by case law of the State Council, sustains that such presumption must be reinforced with the proof of the effective use of the name.

Article 191 of Decision 486 stipulates that “the right on the trade name is acquired by means of use”; then no exclusivity right exists without real and permanent use, i.e., the businessman/ woman has to put the name into the commercial environment in a real and effective manner to be able to obtain the exclusivity right in relation to the commercial activities dependent on said name.

In addition, the Nice international trademark classification, from its seventh edition, used all the services of “import, export, manufacture, sale, purchase, distribution and trading of products” in class 35. www.marcasur.com

In practice there is a double opportunity for businessmen/ women to protect their right in relation to their trade names: one by the route of the first effective and real use and another by the route of registering such name as a trademark to distinguish the services of class 35.

The million dollar question is which route should the businessman/ woman take to protect his/ her trade name; and the answer is, according to my criterion, that once the “name” has been created it must be protected under the title of trademark in class 35 under the Nice classification and subsequently with its effective, real and material use. A double protection for the trade name created is thus obtained.

Juan Carlos Salamanca. Junior attorney, graduate of the Universidad la Gran Colombia (2011).

Associated with the firm Vera Abogados Asociados S.A. from 2004. Currently in the position of consultant in judicial matters.

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SPORT AND ENTERTAINMENT LAW

Simone Lahorgue Nunes

Gustavo Piva de Andrade

Alberto Guerra

BRAZIL 2014, RIO 2016: AN EXTRAORDINARY MOMENT TWO OF THE WORLD'S MOST IMPORTANT SPORTING EVENTS, THE FOOTBALL WORLD CUP AND THE OLYMPIC GAMES WILL BE HELD IN BRAZIL IN THE COMING YEARS. HOW WILL THE FIRMS PREPARE THEMSELVES TO FACE THE WORK OPPORTUNITIES? WHAT CHANGES MUST BE MADE TO THE APPLICABLE LEGAL SYSTEM? THREE BRAZILIAN ATTORNEYS SPECIALISING ON THE SUBJECT TALKED TO MARCASUR ABOUT THESE TOPICS AND MORE.

Before the whole world directs its attention to the development of these two events, the organisation steps are fundamental. Therefore the preparation of Brazilian law firms becomes vitally important in order to take on the work opportunities which these events generate and will generate in the next few years. We consulted Simone Lahorgue Nunes, a Levy & Salomao Advogados partner, Gustavo Piva de Andrade, a Dannemann Siemsen attorney and Alberto Guerra, a Guerra Advogados partner to learn about this subject and to analyse some of the points of particular interest on the applicable law system.

GET READY. Having been consulted by Marcasur on the changes they foresee in the law firm market, the three lawyers point out that some firms, especially those having clients with businesses linked to the sporting events, are hiring qualified professionals to meet a probable larger demand during said sporting events.

“The Brazilian firms are preparing in a special way to meet the demand which these large sporting events will generate” says Gustavo Piva de Andrade. In fact, Dannemann currently has a group of attorneys especially dedicated to the sports 16

area who are heavily involved in areas related to the World Cup and the Olympic Games.

Alberto Guerra is therefore of the opinion that there are several work opportunities for the law firms. “Be it directly, for those working for the businesses involved with the sporting events, or for other firms receiving demand from their clients who will take part in building the infrastructure for said events”. The strategy applied in Guerra Advogados is to qualify their technical team with partners and paralegals with the ability to meet the demand. Another fact: “to be close to the place where all the subjects related to the event are decided: Rio de Janeiro”.

For Simone Lahorgue Nunes, these events will generate opportunities for lawyers specialising in most diverse areas such as “Intellectual Property, sports law, corporate, tributary, administrative, contractual law and any other area related to the infrastructure of the games”, she says.

All agree that the services most demanded by clients in relation to the events is consulting about the applicable legislation, establishing and operating foreign companies in the country, matters relating to foreign workers entering the

country and negotiating and drawing up various types of contracts for service provision, joint ventures and supply of materials.

SPECIAL LAWS FOR THE EVENTS. Gustavo explains that a special legislation regulating the subject in relation to the Olympic Games already exists. It is the Olympic Law 12305 passed by the Brazilian Congress in 2009.

In terms of the World Cup a bill will be approved by the Congress shortly dealing with numerous questions related to the event: establishing half price tickets and insurance in favour of the International Football Federation (FIFA) to insure any harm the country could suffer as a result of organising the events. www.marcasur.com

“The nature of the regulations dictated by the International Olympic Committee (IOC) and by FIFA varies” he explains and adds: “some of them are international treaties to which Brazil agreed to: they were ratified by the federal Senate and incorporated into the Brazilian legal system, such as for example the Nairobi Treaty, which deals with the protection of the Olympic symbol”. It also indicates that one of the largest complexities that the World Cup will have is that since it will be held in twelve Brazilian cities, there will be concurrence between the municipal, state and federal laws.

IN DEFENCE OF IP. For Simone Intellectual Property is intimately related with entertainment, since it protects all the intellectual assets which are fundamental for this activity. “Be it in the sport, television, Internet or any other environment. One only needs to imagine what the sporting events would be without trademark protection and, therefore, the actions of sponsoring, or the activities of artistic content production if copyright did not exist and so on”, she sums up.

In relation to the area of trademarks, Gustavo clears up that the mentioned Olympic Law specifically indicates the widespread unauthorised use of Olympic symbols and it also points out that use of any of those symbols is prohibited. The

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bill for the World Cup also provides a special protection for the FIFA trademarks, such as for example: creating a special procedure before the IPNI for the trademarks related to the World Cup. In turn, this bill confers the status of wellknown trademark to various FIFA symbols.

The mentioned Olympic Law prohibits ambush marketing and any type of unauthorised publicity related to the games. “The World Cup bill goes further and classes ambush marketing by association and by intrusion as an offence, establishing the prohibition of unauthorised publicity of any type on the access routes to the stadiums or that are visible therefrom” says Gustavo.

retransmission limit must be 3% of the duration of the match. In that sense, Alberto points out that “a dispute will occur if it is clear that the object is reproducing part of the event and not informing”.

PRESENT LAW. There is still a long time to go before the events so there will be many emerging novelties as well as business and work opportunities for law firms who know that they are facing a unique opportunity which they cannot let slip way. M

RIGHT TO INFORMATION VS. OWNERS RIGHTS. Another fundamental point is striking the right balance between rights to information on the event and the rights of the owners to the rights of transmitting same. Gustavo emphasises that: “journalistic use performed to solely inform the public about what is happening in the competition is allowed. While the use for commercial purposes in order to gain profit is prohibited”. On this matter the World Cup bill establishes that retransmitting the images of the matches is allowed and some conditions must be respected; among which, that the

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EVENTS // XVI AIPPI FORUM AND EXCO 2011

INDIA THE FORUM AND EXCO 2011 ORGANISED BY AIPPI TOOK PLACE BETWEEN THE 13TH AND 18TH OF LAST OCTOBER. MORE THAN 700 PARTICIPANTS OVER 60 COUNTRIES HAD THE PRIVILEGE OF TAKING PART IN THE MEETING HELD IN THIS BEAUTIFUL AND SURPRISING COUNTRY. 24

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Touristy India. Alicia Ă lvarez Berkenwald (Berken IP Argentina), Diana Muller (Gottlieb, Rackman & Reisman, USA) Edy Portal (Portal & Asociados, El Salvador) at the City Palace in Jaipur

By Juan A. Pittaluga This was AIPPI's first event in India, and the second in Asia. India is a country of contrasts between the beauty of its palaces and monuments and the grey of its cities, the colourfulness of its women and fields and the deafening noise of its streets.

This country strives to be among the top five nations of this world and it is achieving it but it doesn't forget its people made up of 1.2 billion inhabitants. It continues to gradually and successfully lead those people from their extreme poverty.

Hospitable, its people transmits friendliness and security to visiting foreigners, allowing them to move around in peace. Them and their belongings will be respected, since Indians have very religious values instilled from generation to generation which we so lack in the West.

The AIPPI event took place in Hyderabad, a city with almost seven million inhabitants. Founded in 1590, it has a strategic location in the heart of India. It is one of the most important

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centres for information technology, not only in India but in the world, so it is also called Cyberabad (Cyber City).

The organising committee, chaired by Pravin Anand, organised the event in this city so that those participants could get to know the India of the past and of the future. A few kilometres from the so called old Hyderabad, the so called Hitech City has started to be built in the last five years. Foreign multinational technology companies, such as Microsoft, Google, Amazon, Facebook, Motorola, General Electric, Oracle and many others have chosen India to establish part of their activities changing the appearance of the place.

A few years ago, before the technology development, Hyderabad was known as the pearl city and also as the Nizam city by its protectors. Today it could be said that Hyderabad is the jewel in the crown of IT India.

From arriving at the modern and functional airport, to later arriving, via a magnificent motorway, to the new city, everything shows us where India is heading.

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India & Brazil, Sandra Leis (Danemann Siemsen, Brazil), at the K&S Partners reception.

Stephan Freischemm (AIPPI secretary general), James Pooley (WIPO director general of Patents), with his wife and Pravind Anand (Chair of the Organising Committee)

The event was held at the Hyderabad International Convention Centre and Novotel Hotel, in the modern part of the city.

In terms of the social part, two events were held in fantastic palaces. The presidents' dinner, which took place at the beautiful Falaknuma Palace, with the peculiarity that those attending were sat on a table for 101 people. And the gala dinner which took place at the Chowmahalla Palace, closely linked to the history of this city. A third event was held in Shilparamam, a very popular Hyderabad park.

At the Convention Centre, the young Indian ladies of Athreya Associates Kirti Mandesa, Ami Solanki, Avisha Metha and Soumya Ahuja

Neel Mason (Mason & Associates, India) and Karen Abraham (Shearn Delamore & Co., Malaysia) 20

Pravind Anand (Chair of the Organising Committee), with the beautiful presenter of all the shows www.marcasur.com

The stunning Falaknuma Palace where the presidents' dinner took place

From the academic point of view, as is usual, the workshops stood out not due to their subjects, since many are similar to those of other events (subjects related to new medical uses and their patentability, geographical indications and developing countries, border measures, social networks), but due to the quality of their speakers and the rigorous and exhaustive level of discussion of the panels.

The prepared professional enjoys it and it is like going to university for the novice.

We hope that another event will held soon in this country since it would be an excellent opportunity to return. We congratulate the organising committee and the AIPPI authorities. M

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Spontaneous India. Three passers by pose naturally for Marcasur at the entrance to the convention centre.

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INTERVIEW // JOSÉ RODRIGO ROQUE DÍAZ

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THE

WHEN THE PRESIDENT OF THE REPUBLIC, FELIPE CALDERÓN HINOJOSA, DESIGNATED HIM AS DIRECTOR GENERAL OF THE MEXICAN INTELLECTUAL PROPERTY INSTITUTE LAST APRIL, JOSÉ RODRIGO ROQUE DÍAZ KNEW THAT HE WAS FACING A GREAT CHALLENGE. “INTELLECTUAL PROPERTY IS ONE OF THE MOST INTERESTING SUBJECTS IN TERMS OF ECONOMIC REGULATION, WHICH IS SOMETHING I HAVE DEDICATED MYSELF TO FOR MANY YEARS AS A CIVIL SERVANT”.

FUTURE

WILL BE IN INTELLECTUAL CREATIVITY

He did his bachelor's degree in law, he subsequently obtained masters degrees in Tax Law and Public Finances, as well as a master's degree in Political Sciences and he is a doctor in Law. His experience in Intellectual Property began at the General Directorate of Copyright, today National Institute of Copyright, where he was the Legal Director of the General Directorate of Copyright. He has worked in the legal areas of different state organisations and in the economy sector. He was in charge of the General Legal Coordination of the Federal Regulatory Improvement Commission, 28

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“THE IMPI IS LOOKING TO CONSOLIDATE ITSELF AS A LEADING OFFICE IN TERMS OF PROMOTING, USING AND PROTECTING INTELLECTUAL PROPERTY RIGHTS ON A WORLD WIDE LEVEL”

the General Directorate of Regulations and of the Deputy Attorney General's Inspector's Office of the Federal Attorney's Office of the Consumer. He was deputy federal prosecutor of Investigations in the Office of the Attorney General for Tax Matters in The Ministry of Finance and Public Credit. A vast professional career which today has him leading the IMPI (Mexican Intellectual Property Institute).

Tell us what your work as a director consists of?

There are many duties but I would like to highlight the following: firstly, directing, supervising and coordinating all the institutional activities to provide protection or registry services to the users of the national intellectual property system by means of diverse protection c o n c e p t s . S e c o n d l y, p r o m o t i n g knowledge with respect to the Institute and the services it provides, as well as stimulating respect towards intellectual property rights, both from the national and international perspective. And lastly, encouraging the cooperation with national and international institutions for the benefit and development of the Mexican intellectual property system.

How would you define the institute?

As an entity decentralised from the federal public administration which ensures the compliance of intellectual property rights, the practices and functions of which have been evolving according to the needs of the country.

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IMPI is also looking to consolidate itself as a leading office in terms of promoting, using and protecting intellectual property rights on a world wide level.

Name us three ingredients which an IP institute needs in order to develop.

One: Shared responsibility in exercising a first class public service based on a judicial framework strongly orientated towards attending the user's needs. Two: a commitment to innovation. Three: a team of collaborators committed to the economic development of the country.

And in the time you have got to know the institute from the inside, “what evaluation can you give in terms of trademark and patent registration procedures?

With respect to studying and granting trademarks the processes are faster compared with other countries; however, studies are being carried out to identify the areas of opportunity of the Trademark Office processes with the aim of making them more efficient and provide greater legal certainty in the registration of distinctive symbols. In addition, the procedures for granting patents and registering utility and industrial design models are efficient, fast and of good quality, which is known on a world wide level and places the institute as one of the top 20 best offices in the world.

The prosecution times of these protection figures are homogenous when it comes to granting and in quality of any of the results that can be obtained in an

THE TIMES Trademarks: 4 months for formal examination; 6 months for substantive examination. This means that a registration can be obtained in 6 months if there are no complete or partial prohibitions.

In Mexico opposition is made after registration (administrative annulment declaration procedure) so this step cannot be included in the trademark granting process and its deadlines.

Patents: 1 year for industrial designs; 1 to 3 years for most utility models; 3 to 5 years for patents.

He has recently signed three agreements to implement pilot programmes for accelerated patent processing with the United States Patent and Trademark Office, the Japanese Patent Office and the Spanish Patent and Trademark Office, which allow applicants to obtain patents more quickly and efficiently in Mexico. Subscription to a fourth agreement with the United Kingdom Intellectual Property Office is also being analysed.

“WE ARE CURRENTLY REVIEWING OUR TRADEMARK AND PATENT APPLICATION RECEIVING PROCESSES WITH THE AIM OF MODERNISING THEM”

8 “WITHOUT A DOUBT, THE TRADITIONAL CONCEPTS OF PROPERTY HAVE CHANGED SUBSTANTIVELY, SINCE IT IS STARTING TO BE INSERTED INTO TO A NEW INTANGIBLE MODEL OR REGIME”

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8

THE IMPI Until 1993, the immediate predecessor of the IMPI was the General Directorate for Technological Development of the then Department of Commerce and Industrial Development. The Mexican Intellectual Property Institution was then created by presidential decree on 10th December 1993 and the institution was physically created in 1994, the Intellectual Property law was amended and it was given administrative authority on the matter. It has two buildings in Mexico city: one which includes the General Directorate, two Deputy General Directorates and the areas with less public dealing, the other building, acquired in 2003, includes the largest areas for public dealing that includes Trademarks, Patents and Intellectual Property Protection, in addition to the Technological Information Centre, which has an archive with more than 30 million documents related to patented technology.

The staff consists of 887 people. 4% of the civil servants have basic knowledge as the highest level of education, 24% have professional technical education, 66% have degrees and 6% have a doctorate or masters (figures from December 2010). It has five regional offices where the users can file their applications and receive advice, these offices are: Office

Date of inauguration

Western Regional Office Northern Regional Office Southeastern Regional Office “Bajio� Regional Office Center Regional Office

10th April 2000 21st November 2000 22nd February 2002 15th August 2002 28th April 2009

office such as the United States Patent and Trademark Office, the European Patent Office, Japan Patent Office or any office from around the world. Staff in charge of carrying out the substantive examination is highly trained for performing their job and apply the patentability criteria according to the law and the applicable treaties on the matter.

Let's talk about the challenges of your administration. What proposals do you intend to implement in the short term?

We are currently revising our trademark and patent receiving processes with the aim of modernising them, adopting advance electronic signature process so

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that the IMPI users can request for our services in distinctive symbols and inventions from their home or office located in any part of the country.

We are making every effort to improve our customer service and user reply capabilities and this is not just a case of an empirical effort but a systematic and technical one, participated by very prestigious institutes such as the Centre for Economic Research and Teaching and COFEMER (Federal Commission for Regulatory Improvement) which provide technical orientation about different options to consider in order to obtain the best results.

Lastly, how does Dr. Roque envisage the future of Intellectual Property?

The future will be based on intellectual creativity within the technological and industrial activity transformed into tangible and useful benefits for the society.

To that end, the challenge is to facilitate the possibility for the Mexican inventors to support the boost of the Mexican businesses with their creativity; we must link the invention to the businessman/woman and we must work hard in order to do so. This future is closely linked to the evolution of an Institute which has been doing an excellent job and accordingly we will continue preparing ourselves to make the registration and intellectual property processes more efficient in general. Without a doubt the traditional concepts of property have substantively changed, since it is starting to be inserted into to a new intangible model or regime; i.e., in the case of businesses, today it is considered that their value is not based on, for example, the machinery but in intangible assets which to a large extent is made up of IP. In the next few years, the IMPI will play, on one hand, a larger role in fighting counterfeiting and unfair competition which greatly harms the society, and on the other hand, will push for active participation in Mexican innovation, bringing about the technical updating of businesses. M

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EVENTS // ASIPI XVI WORK SESSIONS AND ADMINISTRATIVE COUNCIL

in the city of

santa cruz

NEARLY 400 PROFESSIONALS CALLED ON BY THE INTER AMERICAN ASSOCIATION OF INTELLECTUAL PROPERTY MET FOR FOUR DAYS IN SANTA CRUZ TO HOLD THE SIXTEENTH WORK SESSIONS AND ADMINISTRATIVE COUNCIL.

The ASIPI work sessions were held from 30th October to 2nd November, with a full agenda of academic and social activities. “The programmes were a great success”, the president of the Association, Fernando Triana, told Marcasur. Attendance was close to one hundred people on average for each of the conferences and there was an active business meeting among the participants both in the Los Tajibos and Camino Real Hotels, he specified.

For Marcos Mercado, president of the hosting committee, the outcome of the sessions was positive. “The social programme was to the liking of the visitors, and there was a good atmosphere in general” he highlighted. The cohesion of the national group in receiving their colleagues and friends, and particularly the party given by the Bolivian offices stood out”. Fifteen firms participated, a record for the size of the country and the IP practice”, he specified proudly.

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Well connected. Arturo Pérez Guerrero (Pérez-Guerrero & Asoc., Puerto Rico) and Gustavo Ortega (Provimarcas, Colombia)

Spontaneous! Samuel Pamias (Hoglund & Pamias, Puerto Rico) and Virginia Servent (Arias & Muñoz, Guatemala)

Joyful sessions. Enrique Moller (Bufete Moller y Asociados, Guatemala) and Paulo Parente (Di Blasi, Parente & Asociados, Brazil)

A lovely bunch! Stephania Céspedes (Headrick, Rizik, Álvarez & Fernández, Dominican Republic), Meris Francisco (Headrick, Rizik, Álvarez & Fernández, Dominican Republic ), Gabriela Núñez (Asesores del Caribe, Dominican Republic) and Elena Puente (Espino Nieto & Asociados, El Salvador) www.marcasur.com

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Co-ordinations were made with the academic, host and executive committees in order to choose subjects and panellists. “It took approximately one year” Triana explained.

It dealt with aspects as diverse as regulatory aspects vs. trademark rights, folklore and craftwork protection, invention patentability, the application and the validity of collective trademarks, office administration and marketing, copyright limitations and exceptions in the digital environment, new domain name extensions, and advancements and setbacks In Latin American IP offices.

Team work. Perla Koziner, Fernando Aguirre and Pilar Salazar from Bufete Aguirre of Bolivia

The panel calling the most attention was “Regulatory aspects vs. trademark rights”, which had Brazilian attorney María Isabel Cardozo from Phillip Morris, as one of its speakers. She criticised excessive health warnings that come on cigarette packets and cover trademark logos. For the ASIPI president, interest is mainly because “interference of regulatory law in the way in which trademarks must be used in tobacco industry is a worldwide concern”. Another member of the panel, Ricardo V. Gordó Llobell, confirmed that a registered trademark must be distinctive enough to avoid conflicting with other regulations of different jurisdictions which may revoke it.

A matter of affection. Jaime Delgado (Mario Delgado Echeverry e hijos LTDA, Colombia), Luis Guinard (Vallarino, Vallarino & García-Maritano, Panama) and Marcello do Nascimento (David do Nascimento Advogados, Brazil)

REASONS FOR ATTENDING THE SESSIONS, BY ITS PRESIDENT One. It is the most robust association in the continent pooling together Intellectual Property practitioners, operating as a union in more than 35 countries and with national delegates in each one of them. It offers permanent technical assistance and has cooperation agreements with organisations such as WIPO, LESI; ITECHLAW, CERLALC, among others.

Two. The professional can present his/her work on our forums since he/she has the option to meet the colleagues with whom he/she works with and the ones he/she would like to work with. The spreading out of the events establishes relationships through the connections made and through all the work that those colleagues refer to us from other countries.

Three. Latin American professionals require a large dose of confidence to build their network of correspondents. There's a cultural thing in that: Latin Americans do not do business with someone they do not know. Therefore, it is important to attend our work sessions since it is the only forum with participants originating mainly from Latin American Countries and with a programme especially focused on the region. www.marcasur.com

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With a drink in hand. Andrés Moreno (Gabriel Patent and Trademark Office, Bolivia), Sandra Milena Rodríguez (Cl Abogados, Colombia) and Salvador Saravia (Saravia & Muñoz, Guatemala)

Trademarks and new domain names: new challenges, old debates The panel which focused on showing the community the process arising with new gTLDs or new domain name system extensions, was Erick Iriarte Ahon, of Iriarte & Asociados (Peru), Brian Winterfeldt, of Intellectual Property Constituency-IPC (United States) and Eugenio Torres de Ferraiuolias Torres, of Marchand & Rovira, P.S.C. (Puerto Rico) as moderator.

Erick Iriarte emphasized to Marcasur that they showed the community the main challenges trademark owners will face and also the communications occurring at an international level and the tools being used to protect already registered trademarks against possible abuse by third parties. He also showed that the challenges they were facing with the incorporation of systems for resolving disputes

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in various local registries (ccTLDS), in essence due to the signing of free trade agreements and TPPA type agreements, which include clauses for protecting trademarks against abusive domain name registrations, has driven the incorporation of UDRP/LDRP systems in various registries in the last few years.

According to him “it is important to point out that domain names are an identification system which at times clash with the trademark system, since the combination of characters (between a domain name and a trademark) can be the same or similar, and accordingly the prompt settlement of disputes being the best mechanism for an adequate protection both for the owner of the trademark and the owner of the DNS system, which clearly has the job of protecting the local and global Internet community at the ccTLDS level”, he finished.

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Thanks for everything! Some of the hosts of the party given by the Bolivian IP Offices…

REGULATORY ASPECTS VS TRADEMARK RIGHTS

Feeling the rhythm. Alberto Berton Moreno (Sena & Berton, Argentina), Pilar Soruco (Orpan, Bolivia), Santiago Bustamante (Tobar & Bustamante, Ecuador), Irene De Sola Lander (De Sola & Pate & Brown, Venezuela) and Marta Pequeño (Advoc. Pietro Ariboni, Brazil)

Caribbean flavour. María Milagros Nebreda (Hoet Peláez Castillo & Duque, Venezuela) and Manuel Polanco (Bolet & Terrero, Venezuela) www.marcasur.com

María Izabel Andrade Lima Cardozo, of Phillip Morris (Brazil), Ricardo V. Gordó Llobell, of Gordó Llobell Abogados (Argentina) were the first panel and Ovidio Parra, of Lexincorp (Guatemala) the moderator.

Ricardo V. Gordó Llobell referred to the controversies caused by the contradicting regulatory laws that invade trademark law in the food sector and their enforcement.

“My point of view is that there should be a balance in the application of the different regulations integrated by the different authorities to avoid contradiction in the actions regulating trademark registration and its use, and my panel wanted to provide the Intellectual Proper ty specialists with a wider view on trademark restrictions in the field of food and drink marketing”. According to him, these subjects are still not very widespread and “it is good to bear in mind that the registered trademark must be distinctive enough so as to avoid clashing with other regulations of different jurisdictions which may disallow it”, he stated to Marcasur.

Another subject which caused debate was “Trademarks and new domain names”. Erick Iriarte, one of the speakers on the panel, explained that the prompt settlement of disputes is the best mechanism for an adequate protection both for the owner of the trademark and the owner of the DNS system.

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I will bite you! Maritza Reategui (Estudio Muñiz, Ramírez, Pérez-Taiman & Olaya, Peru), Beatriz Ayala (Ayala & López Abogados, Venezuela) and María Auxiliadora Jurado (Bolet & Terrero, Venezuela)

The sessions once again made it clear that Intellectual Property is one of the most important engines for business development and the future for industry competitiveness, products and, on the whole, the countries' economic development.

Triana concluded that “as long as innovations are adequately protected, people will have an incentive for new inventions and foreign investment will increase as a result of a greater certainty and trust that the rights of these inventions will be protected”. M Olé! Adelaida Ponti and Carles Jordi de Oficina Ponti from Spain

With another view. Marvin Caldera (Caldera & Solano, Nicaragua) and Jaime Duvanced (DH Abogados, Chile)

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The Madrid Protocol descends on Latin America

FEATURE ARTICLE

COLOMBIA WILL BE THE SECOND LATIN AMERICAN COUNTRY, AFTER CUBA, AND 86TH IN THE WORLD, TO JOIN THE GROUP OF COUNTRIES ADHERING TO THE MADRID PROTOCOL. WHAT ARE THE CONSEQUENCES OF ITS IMPLEMENTATION AND APPLICATION IN THE COUNTRY? WE ASK THE PRACTITIONERS OF INTELLECTUAL PROPERTY IN COLOMBIA.

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«LA PROFEsIóN DE ABOgADO Es RELATIVAMENTE RECIENTE Y, PEsE A QUE TODAVíA sE ENCUENTRA EN DEsARROLLO, FROM MADRID TO COLOMBIA. After the Congress of the Republic passed Law 1455 in June last year, the country adhered to the Madrid Protocol relating to international trademark registration. This adoption was accompanied by adhesion to the Trademark Law Treaty (TLT) involving a significant change to the current Colombian intellectual property system. Law 1455 is currently under constitutionality study by the Colombian Constitutional. “If constitutionality is decreed, the protocol would be in force three months after the ratification instrument has been deposited” says Juan Carlos Cuesta (attorney and president of the Colombian Intellectual Property Association. At the same time, the wait for the enforcement TLT by means of Law 1343 of 2009 is on going.

THE STAGE. Through the adhesion, the IP systems that will coexist in Colombia will be according to the Trade-Related Aspects of Intellectual Property Rights ( T R I P S ) o f t h e Wo r l d T r a d e Organisation, Decision 486 of the Andean Community of Nations (CAN), the Patent Cooperation Treaty (PCT), the TLT and the Madrid Protocol. The possibility of registering international trademarks in practice and within the IP system mainly affects four levels of practitioners: the local trademark office of the Superintendency of Trade and Commerce (SIC), foreign applicants, national applicants and Colombian agents and professionals.

Luz Helena Adarve and Juanita Acosta (attorneys, partners of the Cárdenas & Cárdenas Abogados IP practice) explain that it is a new system that will accompany the existing one. “In fact the adoption of TLT will be a complementary tool which will facilitate the coexistence of the two protection systems” they add to Marcasur. “It will be an alternative protection system, such as that existing today in the European Union, where three systems coexist: i) the national systems, ii) the community trademark and iii) the international trademark” they say.

Nelson Urrego (associate attorney of Brigard & Urriata) on his part asserts that “the Colombian government must assure by means of implementing TLT regulations and the Madrid Protocol, that there will not be an unjustified differential treatment in terms of legal requirements, costs and processing time for the national trademark applications and the registration of international applications for extended protection”.

In as much, Luis Felipe Castillo (attorney and partner of Castillo Grau & Abogados) points out that the main challenge today is to harmonise the regulations contained in Decision 486 as well as possible with the regulations of the TLT and of the Protocol. “In some cases they complement each other but they are contradictory in others”, he says, giving an example: “Decision 486 requires certain document formalities, while the TLT eliminates such formalities; the TLT is only applied to visual trademarks while Decision 486 is applied trademarks to all types. In the case of the Protocol, we can say that in this regulatory body the grounds for refusal of a registration application by a designated office are more restrictive than in Decision 486”; and he clarifies that: “It is important to take into account that Decision 486 is a community regulation which, unlike a national law, cannot be revoked or suspended due to the fact of adhering to an international treaty”.

THE KEYS >>Trademark protection in Columbia is achieved by means of registration before the Superintendency of Trade and Commerce, as established by article 154 of Decision 486 of the Andean Community Commission. >>The Madrid system offers the trademark owner the possibility of protecting it in several countries (members of the Madrid Union) by means of filing a single application in its own national or regional trademark office. >>International registration has the same effect as a trademark registration application filed in each of the designated countries by the applicant. >>If the trademark office of a designated country does not refuse protection within a certain period, the trademark obtains the same protection as if it had been registered through that office. >> It simplifies subsequent trademark management since changes made later on can be recorded or the registration can be renewed with a single administrative procedure. And it facilitates the subsequent designation of other countries. >>85 countries currently adhere to the Madrid Protocol, among them Cuba. The Dominican Republic, Brazil and Costa Rica are in the process of doing so. >>This Protocol forms part of the so-called Madrid System for the International Registration of Trademarks established in 1891, which is governed by the Madrid System administered by the International Office of WIPO with its headquarters in Geneva.

“IT WILL BE AN ALTERNATIVE PROTECTION SYSTEM, SUCH AS THAT EXISTING IN THE EUROPEAN UNION TODAY” LUZ HELENA AND JUANITA ACOSTA www.marcasur.com

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Jorge Vera (attorney, founding partner and director of Vera Abogados Asociados) agrees that judicial problems will arise between the current system of the CAN and the international trademarks registered under the Protocol. “They must be solved with case laws during the course of time”, he says adding that: “The main problems lie in the Andean opposition and the cancellation of international trademarks”.

For his part, Cuesta emphasizes to Marcasur that in addition to the Protocol, the application of the TLT will involve “less formalities for filing applicationspower of attorney or notarization where appropriate will no longer be neededand it will allow applicants to file applications in a single class or in several classes”.

TOO MUCH AND TOO LITTLE. After everything, local professionals point out that the advantages will still revolve around the fact that the owner of a

“THE PROTOCOL HAS TWO WEAKNESSES FOR COLOMBIAN BUSINESSMEN/WOMEN: FIRSTLY, THE IGNORANCE ABOUT IT AND S E C O N D LY, T H E L A C K O F ADHESION OF THE COUNTRIES M A K I N G U P I T S N AT U R A L MARKET” JORGE VERA

national trademark registration or application will be able to file a single international application in the trademark office of his/her country, in which he/she will be able to simultaneously designate all those member countries of the Protocol in which they wish to obtain protection for their trademark with a single payment which is lower than the payments than the trademark applicant had to pay if he/she had chosen the national route.

For Urrego, it means the possibility to reduce costs in obtaining trademark protection in multiple countries as well as to reduce subsequent cost for keeping the trademark registration in force and for updating its owner information. He details that cost reduction will depend greatly on the nature of the trademark.

In this sense, Cuesta points out that “the system can be advantageous or disadvantageous depending on the perspective of each practitioner, that is, the country, the user and the professionals providing IP services”.

BACKGROUND Madrid Protocol began to be discussed, as part of the demands to Colombia, in the negotiations of Free Trade Treaty (FTA) with the United States, Luis Felipe Castillo (partner of Castillo Grau and Associates) tells Marcasur. In fact the obligation to adhere to said international agreement was already found in Law 1143 of 2007, approving the FTA with United States. Cuesta summarises to Marcasur that at the moment that the Protocol was discussed the arguments in favour sustained that it was an international trend which must be followed and that it was a tool that would allow protecting trademarks in other markets at lower cost. Those radically questioning the adherence founded their position on the unconstitutionality of the Protocol due to exchanging national sovereignty for awarding a monopoly to an international organisation. Others who are more moderate, pointed out the probability that the Protocol would create better trademark rights in favour of foreigners rather than locals. And others showed that adhering to it was inconvenient economically speaking given that it was a highway with six entrance lanes which would be used by many foreign businessmen/women while for the exit lanes, if they were the same, there would not be as many Colombians who could use them and that its adherence would imply a reduction in the income of the SIC by the concept of portfolio administration (renewals, transfers, changes of name, address, licences).

“BUSINESSES WITH PORTFOLIOS OF MAINLY FOREIGN CLIENTS COULD SUFFER A DROP IN THE VOLUME OF WORK” LUIS FELIPE CASTILLO

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FROM THE NATIONAL TRADEMARK OFFICE When consulted on what will be the changes and training, design and implementation costs which the SIC will have to face for this new procedure, Luis Soldoño, IP Director of the Trademark Office, told Marcasur that the office is focused on strengthening its infrastructure in terms of personnel and technological capacity in order to achieve two fundamental objectives: efficiently manage intellectual property registration and promote the use of the system in such a way that the rights which they recognise and grant will be useful tools in generating added value and competitiveness.

They have several training sessions planned which would start next year from when the Court decides. Nevertheless, they have already brought forward a session for the Madrid Protocol as well as for TLT thanks to the support of ACPI, INTA and the USPTO. On the other hand, the SIC and WIPO have traditionally had good relations and therefore their support for its implementation are expected.

They are studying according to the WIPO guidelines in relation to the use of the system, whether forming a special group within the entity which would be in charge of mainly handling international applications coming out of Colombia would be necessary once the country joins it. “It is important to clarify that the incoming applications via the Protocol would follow the same procedure as the trademarks filed directly in Colombia and their substantial study would also be the same” said Soldoño. According to him the first advantage is the alternative to the traditional method of applying for a trademark registration in other jurisdictions using a single application format. “However, the main advantage is the ease of managing trademark portfolio, especially once protection has been obtained in the designated countries, since renewals and affectations to the registration would always have a single date” he points out.

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“TWO FUNDAMENTAL OBJECTIVES: EFFICIENTLY MANAGE INTELLECTUAL PROPERTY REGISTRATION AND PROMOTE THE USE OF THE SYSTEM IN SUCH A WAY THAT THE RIGHTS WHICH THEY RECOGNISE AND GRANT WILL BE USEFUL TOOLS IN GENERATING ADDED VALUE AND COMPETITIVENESS” LUIS SOLDOÑO

According to him, trademark owners must analyse the position of their respective trademarks in the different markets before trying to prosecute all their registrations making use of the Protocol. “If the country gets up to speed with the international tendency of adopting international trademark mechanisms, international trend can also be interpreted as the search for reducing costs for businesses with a presence in different countries encompassed with the aim of conquering markets via the trademark route and with the eagerness of generating income for a central administration of the trademark system”, he concludes.

Next, Vera specifies that it is a great advantage for businesses, as long as they have a realistic view of the markets in the ascribed countries, “since so far the member countries of the Protocol, with the exception of the United States, do not make up the natural market of a vast

percentage of Colombian businesses, exporting their goods abroad mainly to the Andean, Venezuelan, Central American and Mercosur markets”. He also warns that: “The protocol has two weaknesses for Colombian businessmen/women: firstly, the ignorance about it and secondly, the lack of adhesion of the countries making up its natural market”.

ARE YOU READY According to Urrego, those depending on the foreign business trademark registration applications will have the challenge of changing their business model in order to face a probable drop in foreign applications and costs in training, design and implementation of new procedures or software adaptations to handle applications and oppositions under the new system. “Surely this impact will be mitigated by means of guidance by the intellectual property services based on a

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“THE SYSTEM CAN BE ADVANTAGEOUS OR DISADVANTAGEOUS DEPENDING ON THE PERSPECTIVE OF EACH PRACTITIONER, THAT IS, THE COUNTRY, THE USER AND THE PROFESSIONALS PROVIDING IP SERVICES” JUAN CARLOS CUESTA

single trademark application to a strategic application filing consultancy closely coordinated with the clients and agents of the member countries of the Protocol, and the litigation consultancy to assure the effective protection of Intellectual Property rights of their clients”, he says.

Castillo as much expresses that “businesses with portfolios of mainly foreign clients could suffer a drop in the volume of work, although this does not mean that all the applicants originating from the member countries will opt for this route”. In the same sense, Cuesta sustains that “as soon as TLT (multiclass) and the Madrid Protocol are applicable, the work of the professional attorney offices which normally dedicate themselves to trademark applications and registrations will reduce”.

Castillo also acknowledges that professional activity must be performed aiming at other IP aspects other that of mere registrations, covering new trends and other fields where attorneys and agents can develop their abilities. “We could possibly be walking in the direction of a synergy between small or medium firms which will allow them to join forces and maximise administrative

tools in benefit of their clients”. Cuesta also understands that new sources of work will spring up from the detailed knowledge of the advantages and disadvantages each system has to offer and the attention of requirements, vigilance and opposition filing, among other aspects. “The challenge is to broaden the use of intellectual property system, understood as a greater learning and spreading of its virtues” he says.

Developing business strategies more centred in legal consultancy and Intellectual Property consultancy rather than in the more traditional registration business, which has regrettably been commoditising by many factors, among them competition, intermediates or IP service wholesalers and the lack of professionalism demanded or offered by the market will be imminent”.

Vera as much confirmed that Colombian professionals have been preparing themselves for its implementation. “We are letting our clients know the opportunity of registering their trademarks at an international level in order to take advantage of the strengths”.

In this sense, “the offices will have to adequately prepare in order to continue strengthening the practice of Intellectual

FROM THE BUSINESSMAN The National Association of Colombian Industrialists (ANDI) and the Federation of Coffee Growers among many other voices in the country have expressed the convenience of the Protocol. The director of the ANDI Legal Services Chamber, Sebastian Unda McFarlane, told Marcasur that the adhesion is very positive for trademark owners, wherein another form of registering their trademarks is available. So they consider that “the way that the Protocol is implemented will greatly define its usefulness”. “For local businessmen/women the fact of protecting their trademarks through the Protocol can be very practical and particularly for those exporting, since it allows them to register their trademarks in more than eighty countries”. “They understand that they can register their trademarks in very interesting jurisdictions such as the European countries, the United States of America, Turkey and Korea with which the country will very soon have commercial agreements in force, through a registration done in Spanish and paying fees in local currency.” “It is clear that the Protocol can reduce registration times as compared with the local current system and in cost matters, in principle, it depends on what validity Colombian businessmen/women want in their registrations” he said. If they are only interested for the registration to be valid in a few jurisdictions or if they want it to be valid in all the designated countries”.

“THE ADHESION IS VERY POSITIVE FOR TRADEMARK OWNERS, WHEREIN ANOTHER FORM OF REGISTERING THEIR TRADEMARKS IS AVAILABLE” SEBASTIÁN UNDA www.marcasur.com

Property in such a way that they can offer their clients the adequate support, showing the different registration and protection systems in an effective manner assuring them the best protection, which ever it is” say Andrave and Acosta.

THE POINT. Among the points highlighted by the Colombian professionals it is pointed out that Colombia “becomes the only Latin American country which has accepted, via the Free Trade Agreement with the United States, the commitment to adhere to the Madrid Protocol”, Vera pointed out to Marcasur.

Ardave and Acosta describe that historically the country has stood out for being a pioneer in adopting international treaties related to Intellectual Property.

“Without a doubt in this opportunity adopting the Madrid Protocol accompanied by the TLT not only puts Colombia at the vanguard of the first world countries but make additional protection tools available for national and international businesses with the aim

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of facilitating and harmonising the world wide protection of their IP portfolios”.

Urrego emphasises that “by adopting these treaties the country becomes a reference for other Latin American countries contemplating the idea of adopting them, which predicts the strengthening of the Colombian Intellectual Property system and the ties between Colombia and WIPO, administrator of both treaties”.

In this sense, Cuesta maintains that Colombians will have the opportunity to use the Madrid Protocol for the first time in a Latin American country, with the exception of Cuba, “which will enable us to prepare ourselves as regional guides and leaders making the best implementation and application practices our own”.

Leaving opinions aside, or as result of them, the need to achieve a new management model is a focus point for Colombian law professionals. We will be vigilant. M

“THE COUNTRY BECOMES A REFERENCE FOR OTHER LATIN AMERICAN COUNTRIES CONTEMPLATING THE IDEA OF ADOPTING THEM” NELSON URREGO

JANUARY / MARCH 2 0 1 2

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COLUMN

A PERSONAL EXPERIENCE THE SECOND ACADEMIC SESSION OF THE URUGUAYAN ASSOCIATION OF INTELLECTUAL PROPERTY AGENTS TOOK PLACE ON THE LAST DAY OF NOVEMBER, WHERE I HAD THE HONOUR OF BEING PART OF ONE OF THE PANELS AND SPEAK ON THE SUBJECT OF “INTELLECTUAL PROPERTY AND CLAIMING DAMAGES IN CIVIL ACTIONS”. THE SUBJECT PROVOKES SOME PERSONAL THOUGHTS WHICH I WISH TO SHARE WITH MARCASUR READERS.

By Daniel Lamas

Columnist. Daniel Lamas. Uruguayan. 62 years old. Attorney, expert in Intellectual and Industrial Property. He is also a teacher and a writer. He has published numerous writings on law. He was elected congressman for the 42nd Legislative term from 1985 to 1990.

He presented numerous law projects during his legislative term. He was associated with Cikato Abogados for more than thirty years where he was the managing director until his disassociation in 2010. He is currently a columnist for Marcasur, among other activities.

E-mail: dlamas@lamasgrimaldi.com.uy 38

First, I would like to make it clear that I am not going to take part in processing trivialities or set out problems only arising in Uruguay.

I am more interested in rescuing what are undoubtedly common problems in all Latin American countries when we attorneys have to act in defence of our clients' rights. Because besides the fact that some States have advanced more than others in the legal regulation of Intellectual Property, there are always problems deriving from the delayed comprehension of the courts of justice that we are in the presence of intellectual goods, which are different from material assets regulated by civil law, the protection of which requires an integral compensation for damages resulting from unlawful use.

My first words in the mentioned event were to point out my disagreement with the title chosen for the panel. In my opinion, especially in terms of compensation, it is time for us to get used to addressing the issue not in terms of the limited vision of trademarks, patents or copyrights or as Industrial Property problems different from copyright problems, but as a whole of Intellectual Property concerning assets with the same legal nature. Despite the fact that there are various legal systems in many countries, as in Uruguay, we must try to find common solutions as long as the legal provisions allow, especially in those cases in which due to interpretation difficulties or legal voids similar legal grounds or the most recent doctrines must be used.

It is therefore indispensable to start

building the theoretical concept of Intellectual Property going beyond the mere description of lists of what items can be included, such as that found for example on WIPO's very own webpage.

Personally, I think that Intellectual Property must be considered as the right to exclusive, and usually temporary, exploitation of intellectual assets. The characteristic of being able to be registered is not common to all of them.

However, it must be made clear that it relates to patrimonial rights subject to trade and to disposition by “inter vivos” or “mortis causa” transactions.

In many cases they coexist with rights inherent to human personality (creation rights of inventors, authors and artists, right to name, image, privacy in the case of right of publicity). In other words, two simultaneous rights are exerted over the same possession, one being a patrimonial right and this one, which is a moral, inalienable, imprescriptibly and immeasurable right. In other words, it cannot be subject to trade. The simultaneous infringement of the two rights can lead to combined actions due to patrimonial and moral damage.

Further clarifications regarding the scope of Intellectual Property rights and the consequences of infringement by third parties should be addressed.

It is evident that beyond what is precisely written in national legal texts, the law grants proprietors the right to exclusively exploit them, as much as the economic benefits deriving from that exploitation.

In other words, when there is exploitation by third parties without express authorization from the proprietor, it is always unlawful, notwithstanding the fact that the law exceptionally authorises www.marcasur.com

uses that in no case represent exploitation with profitable purposes.

The laws only show that the infringement of the right deriving from the unauthorised exploitation or from the use intending to cause damages entitles the proprietor to claim compensation for damages sustained.

It is well known that lawmakers endeavour to make things return to the state previous to committing the guilty or malicious act in cases where extra contractual liability exists due to damages to material assets, so that the affected party recovers the value of the damaged asset by means of compensations at the cost of the infringing party or, in the case of complete destruction, compensation by means of the payment of an equivalent sum of money.

What are the damages that proprietors of intellectual assets could sustain?

The infringement of Intellectual Property rights may or may not accumulatively cause both the drop in value of the trademark, patent, copyright, reputation or other distinguishing sign (resulting damage caused by non-payment) and the loss of sales (loss of profit).

However, in any case it must be borne in mind that there is damage deriving from the loss of exclusivity established by the

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law, which may or mat not coexist with some of the damages mentioned in the preceding paragraph. When an intellectual asset has been damaged and the unauthorised exploitation causes damage in re ipsa, compensation must correspond to the value of the damaged right. Consequently, there should be more severe compensations as the commercial value of the damaged asset increases, the same way that there are very large civil compensations when a very valuable material asset is subject to damages. The idea is to always repair material damage, not moral damage. The amount can be established on the basis of presumptions supported by objective facts (widespread coverage on the market or abroad, a value estimated by an expert, number of sales made in a specific time, etc.).

The basis of the value can be taken from the infringing goods, the loss of sales or benefits obtained by the infringing party.

However, I insist on the following concept. If the aim of the action for damages regulated by civil legislation, and applicable by many legislations to Intellectual Property infringements, is to return to the previous situation before the illicit act was committed, the person benefiting from the illegal exploitation should not be allowed to keep the obtained profit as he or she would not

have obtained it if the exclusivity assured under the law and justice had been complied with.

If civil law forces the holder to reimburse the fruits of the asset held in bad faith, how is it possible to allow it in Intellectual Property cases, especially in those cases where bad faith is flagrant?

And if it is not possible to talk about possession in the case of intellectual assets, the different legal nature with respect to material assets will force judges to apply the specific regulation, if any, or to integrally interpret the law in such a way that the right to exclusivity protected by the law and often times supported by constitutional provisions does not become insignificant. M

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ALEGRÍA, MÉNDEZ & FERNÁNDEZ WONG S.C.'S TENTH ANNIVERSARY

A decade

The partners: Sergio Gutiérrez, Abraham Alegría, Patricia Fernández Wong and Jose Juan Méndez

of commitment THE PALACIO DE LA AUTONOMÍA IN MEXICO CITY SERVED AS THE STAGE SO ALEGRÍA, MÉNDEZ & FERNÁNDEZ WONG S.C. COULD CELEBRATE THEIR FIRST TEN YEARS, BASED ON DEDICATION AND CONSTANT WORK IN THE SEARCH FOR EXCELLENCE IN PROVIDING THEIR SERVICES AND ADDED VALUE TO THEIR CLIENTS IN ALL AREAS OF INTELLECTUAL PROPERTY.

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David Ocejo, director of Indelpa, Héctor Velasco and Luis Trigos, director of Ecología Aplicada In this meeting partners Sergio Gutierrez, Abraham Alegría, Patricia Fernández Wong and José Juan Méndez thanked their clients, colleagues and friends, present and absent, for the blessing of being able to share a decade of excitement and commitment to services with them, as well as for the show of affection received during that time with the satisfaction of an accomplished job.

An exquisite selection of music, food and drink which could not be missed, allowed those assisting to share a nice time, which is a reflection of what this first decade had been, and made the commitment of the entire team for constant improvement clear. M www.marcasur.com

FEMSA legal team with Abrahám Alegría and Patricia Fernández Wong

Juan Manuel Chávez of Nestle, one of the hosts Francisco Luna and Sato Yoshiki also of Nestle

Sergio Gutierrez and Dr. Jorge Cueto.

General director of Café Punta del Cielo Pablo González, Patricia Fernández Wong, Ms. Pablo González and Abraham Alegría www.marcasur.com

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INTERVIEW// LAURA SANSALVADOR

WITH ALL IT IS THE NUMBER ONE SWEET MANUFACTURER IN THE WORLD, THE LARGEST BISCUIT COMPANY IN SOUTH AMERICA AND THE MAIN EXPORTER OF CONFECTIONARY IN THE REGION. THE ARGENTINE ATTORNEY LAURA SANSALVADOR FROM THE INTELLECTUAL PROPERTY MANAGEMENT OF GRUPO ARCOR TELLS US ABOUT THE EXPERIENCE OF MANAGING ELEVEN THOUSAND TRADEMARK REGISTRATIONS AROUND THE WORLD.

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Her incursion into the Intellectual Property area was by chance. After several years of litigating as an attorney in the area of damages and losses for various offices, she wanted to turn her career around. Suddenly the opportunity to join the Gordó Llobell office arose and she worked there for nearly three years.

“Ricardo V. Gordó Llobell and Ricardo M. Gordó Llobell (h) were the ones that gave me the tools to be able to develop in this speciality”, she admitted gratefully.

In mid-2000 Grupo Arcor had a period of large international growth and started their search for someone to cover the position of attorney specialised in Intellectual Property, who would be in charge of all IP matters. Laura put herself forward and was finally selected. She exclusively tells her story to Marcasur readers.

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ARCOR FOR ARCOR Arcor is a business born in Argentina in 1951. Its name is the first syllables of Arroyito-Córdoba, the place in which it established its first candy factory.

Today, 60 years after its birth, it is the number one sweet manufacturer in the world, the largest biscuit company in South America (through its alliance with the Danone Group and the main exporter of confectionary in Argentina, Brazil, Chile and Peru reaching more than 120 countries around the world with leading brands. It possesses 40 industrial plants throughout Latin America, business offices in America, Europe, Asia and Africa and it employs nearly 20,000 people. It has numerous products with internationally well known brands such as the bonbon Bon o Bon and the sweets Butter Toffees to name but two trademarks with strong presence abroad.

At this stage the company is strengthening its penetration into further afield markets: it is setting up business offices in Canada, Spain, South Africa and China, it is opening nine industrial plants in different parts of the world. It is also consolidating its strategic participation with the major world-leading companies, it is acquiring Nestlé brands, establishing alliances with Brach's, going into partnership with the Danone group creating the largest biscuit company in South America under the company Bagley Latinoamérica S.A., going into partnership with Grupo Bimbo creating Mundo Dulce with the aim of producing sweets and chocolate for the Mexican market and exporting, establishing an alliance with Coca-Cola in order to develop new products. It is also expanding its product line with the launch of its line of ice-creams and with the acquisition of the company Benvenuto S.A.C.I. –previous owner of La Campagnolaadding up to three new factories.

SWEETNESS Tell us Laura, what does your job as a legal manager precisely involves?

From this Intellectual Property management –which directly depends on the Legal Directorate of the group - we guide and coordinate the Intellectual Property management of all the Grupo Arcor businesses around the world and our main objective is to assure the availability of all the trademarks in all countries where they are intended to be marketed.

We are also responsible for coordinating the activity of the external studios managing the IP rights at a local level; we advise various areas of the company in IP matters and plan strategies for the global protection of our trademarks, both in terms of obtaining registrations and eradicating infringements by third parties, something which occurs frequently in some world markets. www.marcasur.com

Who makes up the legal team? And what are the dynamics of the job?

My team is made up of Gimena Olmos and Carolina Benítez who have worked with me for several years in meeting the objectives of the sector. Furthermore, we have the cooperation of María Paz Ortega and Vera Pereira Neto in Chile and Brazil, who deal with this subject in their respective markets.

Since it is a small team the collaboration ties with the local studios, which are a very important support to our management, are essential.

Do you often work with external professionals?

Yes. We choose to work with studios in countries in which we are going to protect our rights or in which an infringement has occurred. We use the services of more than 30 attorney studios

in Latin America, Europe and China. In those countries where the regional particularities make selecting a local firm difficult for us, we prefer to pass the management on to Marval, O'Farrell & Mairal, who has a wide network of correspondents around the world.

How many trademark registrations are there?

There are currently around eleven thousand trademark registrations around the world, the majority of them corresponding to products of JANUARY / MARCH 2 0 1 2

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“THE OBJECTIVE IS TO ASSURE THE AVAILABILITY OF ALL GRUPO ARCOR TRADEMARKS IN ALL COUNTRIES WHERE THEY ARE INTENDED TO BE MARKETED” confectionary, chocolate and biscuit lines.

In general terms, how do you manage this trademark portfolio?

In these 11 years of management we have always tried to achieve a synergy with the various areas of the company. It is very important for us to take part in the creative process of a brand from its beginning interacting with the development, marketing, design and food legislation areas. The interaction between the commercial areas and local distributors, which are our main sources of information with respect to particularities of each market and are a great help in detecting infringements, is very important once the brand is on the market.

In your opinion, which is the best way to efficiently manage a trademark portfolio?

It is important to keep a creative mentality and be sufficiently flexible in order to adapt to changes. This specialised area of law must be permanently nourished with experiences from professionals from other fields and it must be up to date with the ever evolving innovation processes.

And which are the most important things?

In a multinational company like our own it is essential to take into account the different cultures of the various markets in which it operates in, this is vital for adopting the most convenient legal strategies for each case.

Which are the areas needing a greater protection?

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In countries where counterfeits or imitations are a staple it is very important to protect trademarks in every way possible, both its denominative form and all its design varieties, not being exclusively limited to trademark rights protection, but making use of all the available means. This will allow us, when facing a case of infringement, to have a greater amount of legal options depending on which will be more effective according to the particular case. It is not the same suing a Chinese infringing party as a Guatemalan or Argentine; each reacts differently.

And what is the most difficult task in managing the trademark portfolio?

I think that the most difficult task in a mass consumer market is to increase the awareness about the IP aspects I mentioned earlier and learn how to streamline the trademark portfolio.

Approximately 200 different product presentations per year are launched in our company, which multiplied by the number of countries which we export to would make a huge number of trademarks to register per year, so learning to make the right choice is a challenge.

reflect the global image which Arcor already had onto the virtual stage.

In relation to improving the practice and increasing business, what are the common problems faced by the company's attorneys?

The main problems in my area of speciality come from the slowness in registering trademarks and solving disputes in some regions.

What are the next challenges?

They will be determined by the evolution of the company. At the moment we are collaborating with the process of regionalising trademarks through which we aim to achieve a regional identity of our products instead of local launches in each market.

I assume that there will be constant growth in the next few years. We are already working on a plan called “2020” which contemplates actions in different parts of the world, with which we will surely have a lot of work in the future.M

Could you share a case or an important lesson which made you grow professionally?

I especially learnt to be perseverant and fight for the things I believe to be fair during this time. One of the most important cases that proved to us that you should never give up is the recovery of our domain name arcor.com at the end of 2009, after 12 years of being in the possession of a third party without any legitimate interest. This allowed us to

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OCTUBRE / DICIEMBRE 2 0 1 1

67

EVENTS

Captivated

by Miami

By MartĂ­n Pittaluga

The chosen host was the Fontainebleau hotel, an icon of this city since its inauguration in 1954, and even more so after it was used to film several scenes of the famous movie, The Bodyguard. It closed its doors in 2006 to later be wildly re-inaugurated in 2008, currently looking more like a shopping mall or a train station or airport than a hotel. It has a huge infrastructure with twelve restaurants serving international cuisine, two night clubs, several swimming pools and the famous and colourful Bleu Bar. And even better, it is located only minutes away from valued tourist areas such as South Beach, Lincoln Road and Bal Harbour.

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THE INTA LEADERSHIP MEETING WAS HELD AS USUAL BETWEEN THE 8TH AND 12TH OF NOVEMBER. THIS YEAR THE HOST WAS AGAIN THE STATE OF FLORIDA, USA, MAINTAINING THE WARM CLIMATE OF THE LAST YEAR, BUT CHANGING THE CACTUS AND ARID ARIZONA CLIMATE FOR THE SUN AND THE BEACHES OF MIAMI.

It was in this paradise like scenario were the conference with very interesting presentations took place gathering more than one thousand professionals from all over the world. First in relation to these, it is worth pointing out the participation, each year more active, of several and distinguished Latin American colleagues both in the role of speakers and exhibitors.

The subjects covered were focused to various topics of interest, such as social networks, attorney-client ethics and relationship, trademarks on the Internet, the work of in-house attorneys and ambush marketing among others. But the peculiar and entertaining thing was in how these panels were organised and presented, using games, competitions, www.marcasur.com

Chile and Brasil. Juan Pablo Silva (Silva & Cia., Chile), Luiz Edgard Montaury (Montaury, Pimenta Machado & Vieira de Mello, Brazil), Francisco Silva (Silva y Cia.), Eduardo M. Machado (Montaury, Pimenta Machado & Vieira de Mello, Brazil)

surveys or simply gatherings among the speakers themselves with the aim that these could transmit their vast knowledge to the public, but without the need to go into the typical boring and monotonous and even tiresome dissertation method in which speakers speak to one another, the audience listens and finally asks.

On its part, the meetings of several and varied INTA committees were held, since it is the real reason for this meeting and requirement (being a member of one) to be able to attend. Reaching their final term in December the committees consequently carried out their last meeting, which in most cases was the opportunity to finish a two-year project, draw a line under and present the final conclusions. A mixture of satisfaction from their accomplishment, the logical sadness for leaving a committee after two or more years of work and the enthusiasm for the challenges leading to the integration of a new committee filled in the air.

This was the last gathering of the year for many colleagues, which added to the fact that the holidays are around the corner, it was the perfect excuse for toasts, warm greetings and best wishes for Christmas and the coming New Year 2012. www.marcasur.com

The new generation of IP. Otavio Padilha (Soerensen Garcia, Brazil), Lourenco de Sampaio (J. E. Dias Costa Ltda., Portugal)

Beauties. Marissa Lasso de la Vega (AFRA, Panama) and Mar铆a del Pilar L贸pez (Zurcher Lawyers, Costa Rica) JANUARY / MARCH 2 0 1 2

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Very elegant. Alda Correa da Costa (Montary, Pimenta, Machado & Vieira de Mello, Brazil) Monica Wolf (Wolf Mendez abogados, Colombia), Joana Siqueira (Montaury, Pimenta Machado & Vieira de Mello, Brazil) and Rosemary Turpin (Lilly Corporation, USA)

Brazilian happiness. De Dannemann Siemsen, Rafaela Borges Walter Carneiro and Rodrigo Borges Carneiro

Now we just simply have to wait for the surprise which the land of Mickey Mouse has in store for us in November 2012, when the INTA Leadership Meeting once again reunites us in Orlando… Florida again! M

Out for a drink. Luis Gonzales (Friedl and Vining, USA), Juan Ignacio Zapata (Bolet & Terrero, Bolivia), Martín Pittaluga (Pittaluga abogados, Uruguay) 20 Avenida “A”1 y 2 Calle, S.O. Barrio Rio de Piedras, PO Box 1744 San Pedro Sula, Honduras, C.A. Tel. (504) 550-7744/550-2624/552-8615 Fax: (504) 550-0795/552-8570 e-mail:rmejia@bufetemejia.com www.bufetemejia.com

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ppta 1d anun CTA ABOG ingles tr.indd 1

11/4/12 17:47:20

You have the floor

Acceptance of trademark coexistence agreements When trademarks ask why they cannot live together Some say that the possible combination of words and letters is too vast to be arguing about similar trademarks.

However, the amount of trademarks used in the market and applying to be registered is also very large, and it unavoidably ends up creating conflicts and situations where the trademarks authority considers that there is a risk of confusion.

The peculiar thing is that there are cases where the directly “affected” parties in the supposed conflict do not see any problem with the coexistence of their symbols and do not understand why the trademark authority insists on avoiding the registration of one of them.

It is thought that if the parties involved do not have a problem with their trademarks coexisting and, furthermore clearly manifest this in writing, the authority should not be “holier than the Pope” and should accept the registration that is being requested.

In countries like Peru, however, the authority has always considered that beyond what the two interested parties may consider within their private environments, its job as State organisation is to protect public interest and finally evaluate if the coexistence of two trademarks will cause consumers to buy one of the products thinking that it is the other or thinking that it is manufactured by the same company, causing a misinformed consumer decision and consequently an inadequate purchase, all of which effects the transparency and operation of the market and the economy in general.

Beyond theoretical discussions about how flexible or inflexible the authority should be in these cases, what is true is that if the company or person in possession of the registered trademark voluntarily allows the use of another trademark which could eventually be considered to be mistaken with it, both trademarks would end up coexisting in

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the market in practice without any importance being given to the authority's opinion.

When faced with it, we were always of the opinion that coexistence agreements foresee a very good opportunity for the parties involved to not only declare that the owner of the trademark does not object to the registration and use of the “new trademark” but mainly so that they agree on a set of rules assuring that said coexistence will duly be controlled by and that the necessary measures will be taken so that the consumers are not exposed to a risk of confusion greater than that acceptable, or to establish the way that they will have enough information enabling them to avoid making a mistake when making a consumer decision.

Therefore it can be convenient that the authority should analyse each case individually with the aim of seeing if each coexistence agreement provide the appropriate guarantees so that consumers aren't at risk of being confused despite the similarities between the symbols of different companies, which are trying to coexist in the market and registry.

Even though these agreements have been accepted for a long time in many countries, in Peru they were up until

recently limited to the cases in which the parties involved had a social or economic link and formed part of the same business group. Said criterion, which is valid only as one of the possible cases of coexistence agreements, nevertheless became a unique requirement in order to accept said agreements, such that the authority could simplify its assessment by means of an automatic rule without having to evaluate each particular case and agreement, but with the negative and excluding consequences for users of the system.

However, in the last few years the Peruvian authority has been a little flexible in their criteria with respect to such cases, which are worth analysing in greater detail but due to lack of space we shall leave for a next issue.

Francisco Espinosa Reboa Office: Espinosa Bellido Abogados Place and date of birth: Peru, 14.7.1973 Profession: Attorney Academic record: Attorney graduating from the Universidad de Lima in 1997, with a master in Intellectual Property Law (LLM) from Franklin Pierce Law Center, Concord, New Hampshire, USA, in 2001.

He has been president of the Intellectual Property and Copyright Association of Peru and of the AIPPI Peruvian group. fespinosar@espinosabellido.com

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You have the floor

Chilean judgement on quotations declares them as an exception to Intellectual Property The way of quoting in a book was the key element for a judgement in Chile accusing its author of unauthorised reproduction, since she did not respect the three step rule of the Bern Convention nor the way of quoting which Chilean law contemplates to allow quotation rights as an exception to copyright.

The criminal convictions which the tribunals dictate when faced with copyright infringements are generally limited to trading counterfeit goods, without going into other subjects of interest. That is why the recent judgement passed by a civil judge of Santiago de Chile is exceedingly relevant, since it covers how unauthorised reproduction, plagiarism and quotation rights are dealt with from a penal point of view. What happened?

Basically the defendant wrote and published a book containing a large number of pictures and complete paragraphs belonging to a document in order to obtain the degree in archaeology registered before the Intellectual Property Registrar.

The first criminal court responsible for the trial sentenced her to 61 days of imprisonment for unauthorised reproduction of a literary work, without referring to the special hypothesis of plagiarism contemplated by Chilean law.

This judgement was the object of an appeal for annulment known by the Appeals Court of Santiago which annulled the oral trial and the judgement arguing that the judge did not take all the criminal responsibility modifying circumstances into account, in particular, the existence of a possible exemption based on quotation exception and ordered a new trial.

Finally, another judge analysed the case more deeply. With respect to quotation

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rights, the judge deemed that the defendant should have cited the original literary work, its title and author in each fragment used, so that the reader would immediately know its author because otherwise it would be assumed that it was the work of the author of the book being read. The literary work being objected only had a general mention of that document in the bibliography, so it did not meet the three step rule of the Bern Convention or the way of quoting contemplated by the Chilean law.

On the other hand, the judge made a big mistake in assuming that copyright arose from its registration, which is expressly against Chilean law, which points out that this right arises from the moment the work is created no matter how it is expressed.

The judgement also refers to the acts or omissions to be considered as a criminal offense, providing a plagiarism definition practically non-existent in our legal system, defining it as: “Appropriating someone else's work, passing it off as one's own or using the creative elements thereof to elaborate a new creation of an illegitimate nature”.

The court finally sentenced the defendant to 41 days imprisonment for the crime of unauthorised reproduction avoiding the special plagiarism criminal sentence contemplated by the law, presumably due to the existence of a general mention to the document in the bibliography. A greater reasoning by the tribunal is missing with respect to the applicable crime at this point, since the special case of plagiarism, fairly sentencing whoever reproduces a literary work deleting or changing the author's name or title of the literary work, looked to be more fitting.

Without prejudice of this and of the little significance of the prison sentence, this judgement lays out an important precedent for future unauthorised reproduction and plagiarism cases in Chile.

Andrés Grunewaldt Cabrera Office: Silva & Cia Place and date of birth: Santiago de Chile, 7th October 1977 Nationality: Chilean Profession: Attorney Academic record: Attorney graduating from the Universidad de Chile in 2003, with a master in Law (LLM) from Duke University, USA, in 2011 (Scholarship for the “Becas Bicentenario”, Government of Chile). Master in Financial and Tributary Law Universidad de Valencia 2005 (Scholarship for the “Becas MAE-AECI” Government of Spain) Master in Law with Honors in Economics LawUniversidad de Chile 2004 agrunewaldt@silva.cl

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EVENT

TENTH REGIONAL SEMINAR ABOUT INTELLECTUAL PROPERTY FOR LATIN AMERICAN JUDGES AND DISTRICT ATTORNEYS

During the opening ceremony. Alberto Casado, director general of the Spanish Patent and Trademarks Office.

AECID/Ramiro Rodríguez Barilari©

BETWEEN SPAIN AND LATIN AMERICA She has the floor. Aurora Díaz-Rato, Spanish ambassador in Uruguay and Marco Matiás Aleman WIPO deputy director of Patents and Innovations Division listening to her carefully.

THE TENTH REGIONAL SEMINAR ABOUT INTELLECTUAL PROPERTY FOR LATIN AMERICAN JUDGES AND DISTRICT ATTORNEYS WAS HELD FROM 17TH TO 21ST OF OCTOBER AT THE TRAINING CENTRE OF THE SPANISH COOPERATION IN MONTEVIDEO. THE OBJECTIVE WAS TO PROMOTE AND IMPROVE INTELLECTUAL PROPERTY THROUGH THE CREATION OF A NETWORK OF IP INSTRUCTORS IN THE JUDICIARIES OF THE STATES.

Close up. Fabrizio Miazzeto, Intellectual Property attorney and agent in Salvador Ferrandis & Partners, of Spain, and Blas González, court judge of the Commercial Court of Granada, Spain.

View of the event.

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Intellectual property and competition rights, the current matters about trademark rights, the flexibility on patents, judiciary specialisation, the protection limits between trademark rights and design rights, the new orientations in copyright protection, the new Intellectual Property infringements in the digital environment were some of the topics during the four days in which nearly 20 Latin American and Spanish court professionals met.

The event was jointly organised by the World Intellectual Property Organisation (WIPO), European Patent Office (EPO), the Spanish Patent and Trademarks Office (SPTO) and the Spanish Agency of International Development Cooperation (AECID) with the collaboration of the Spanish General Council of Judiciary (CGPJ) and the Attorney General of the State of Spain (FGE). www.marcasur.com

AECID/Ramiro Rodríguez Barilari©

At a work bench. From left to right: Alfredo Scafati, President oft the Copyright Council of the MEC,, Valentín Mir Guillén, director of International Cooperation of the European Patent Office, Aurora Díaz-Rato, Marco Matías Alemán and Violeta Dominguez, Director of the Spanish Coopperation Training Centre in Montevideo

With the presence of WIPO. Marco Matías Deputy Director of the Patent and Innovations Division of the organisation.

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During the opening ceremony, because they come from the Alberto Gestal, Director of the same family and are more Intellectual Property General frequent than they look. All Directorate of Uruguay, said those attending enthusiastically that this course is essential for participated in the work Latin American countries. “It is benches. When the seminar a learning process for everyone finished, Marta Fernández and an opportunity for specific Rivas, from the WIPO Latin American and Caribbean training”, he stated.

Alberto Casado Cerviño, Development Cooperation Director of the Spanish Patent office, talked about the WIPO a n d Tr a d e m a r k s O f f i c e and SPTO joint project on the explained that there are more mechanisms for documenting a n d m o r e c o m p a n i e s and accessing judiciary and combining trademark and administrative decisions about patent rights with other types of Intellectual Property in Spanish. M IP rights or unfair competition.

He mentioned the case of Apple versus Samsung as an example.

With this case, he said, “we realise that the fight is much more complex than we imagined because the right of a patent is stronger than that offered by copyright or a trademark”. He also highlighted that the conflict areas between More information at: IP and economy still remain www.aecidf.org.uy

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ATTORNEYS IN THEIR FREE TIME

SOMETHING THAN

MORE SPORT IN THE WATER. He won the Silver medal with a second place finish at the world water polo tournament held by the International Swimming Federation every two years and he finished third on many occasions. 45 year old Marcello do Nascimento, from Sao Paulo an attorney and partner of David do Nascimento Advogados Associados, is a double time professional.

It all began when, tired of playing tennis at competition level, he went with a friend to the swimming pool of the Paulistano Athletics Club, a traditional Sao Paulo sports and social club to watch a water polo training session. The coach made him swim one thousand meters and he did. It was then when he decided to keep practicing it.

He was already semi-professional at 20 years of age. He practiced it at competition level and took part in national and international competitions. He even managed to get the University to pay the Paulistano Club membership so he could play.

Marcello recalls that the beginning wasn't easy. “Keeping up with the pace of the training sessions requires a lot of energy”. Basic training consists of a 400 meter swim to warm up, a strong swim of between 2000 and 2500 m for time, leg exercises, passing the ball, shooting at the goal, training games or tactics.

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WHEN ATTORNEYS PUT SKILL AND DEDICATION INTO THEIR SPORTS THE PROFESSION BECOMES MORE GRATIFYING. THE BRAZILIAN MARCELLO DO NASCIMENTO AND THE ARGENTINE MATÍAS NOETINGER TELL US ABOUT IT. www.marcasur.com

his competitiveness and selfimprovement ability “so useful in professional life”. Today he practices two or three times a week at senior level at the Paulistano Club and Pinheiros Club, another traditional and important Club for practicing water polo. These practices include playing against senior and junior teams. “I have the pleasure of playing, on several occasions –one more pleasure- with my 17 year old son who also practices water polo since he was 12”. His next challenge? The FINA world cup in Italy, in June 2012.

It is usually two hours spent in the water and barbell training in the gym to complement it.

“This sport clearly demands, you to be an advanced, physically strong and courageous swimmer”, he quickly makes clear. “You can't play at “half speed” or for example when people get together to kick a football around. In water polo you play seriously or you don't play at all (if you don't play there's no game)”, he underlines. And since it is a sport with a lot of physical contact, fouls are commonplace. You are sent off for 30 seconds for every serious foul committed and you can no longer return to the match after committing three serious fouls.

Besides the results, he likes “the feeling of being relaxed after training or a match, the vigour of the sport and how good it is for your body and mind”, he says. Furthermore, practicing it at competition level makes him develop www.marcasur.com

ON THE GROUND. Unless one is born with a special gene for sport, a lot of dedication and effort is required. Those ingredients were what 39 year old Matías Noetinger from Buenos Aires, an attorney and partner of Noetinger & Armando, provided when at the beginning of 2004 –with two children, a third on the way and serious overweight due to lack of exercise- he realized that he had to practice a sport for his health.

And so he took up running. The sport was booming in Argentina at that moment and he signed up to one of the thousands of groups which were created then. “In doing this I started on the long road to the best physical shape of my life”, he recalls.

The running training routine consists of sub aerobic exercises, followed by other more strenuous ones with a change in rhythm and intensity sets mixed with active rest. Furthermore, you have to do a lot of stretching and it is important to dedicate one or two days to bodybuilding since you slowly suffer muscle mass deterioration over time.

His training consists of running between

three or four times a week. “My practice is amateur” he quickly points out modestly. The good thing about running for Matías is the ease in which it can be practiced. “You only need to take your sneakers and you can practice it anywhere in the world”, he says. And he adds, “It is very fun entering 10 K, 21 K races or marathons in cities which you don't know and you will take advantage of it to take a lengthy and interesting tour around them”. He has covered Chicago, Boston and Munich.

His great milestone was his first 42 km marathon in Montevideo in 2004. His time? 3 hours 55 minutes. “Marathons are exhausting races”, he declares. “It takes the individual to the limits of his/her physical and mental strengths, it is pure suffering after kilometer 30, but reaching the finish line is one of the best feelings one could have as the reward to a great effort”.

Being in great physical shape has many benefits in every aspect of life, including professional life. In 2005 he bumped into a French friend of an important Paris office, whom he knew since 1998 but had never worked with. When he told him that he had run his first marathon he told him: “Now that you are a marathon runner you can start receiving work from our office” and work started arriving the following month.

There was a fourth addition to the family a year ago and if both work and family time allows it, he plans on running a marathon in 2012. That's why he meets up with a training group twice a week and they run through the parks located in the Palermo area, in the city of Buenos Aires.

He adds another training session in and a longer run on Sundays. “Once you start running seriously you are a runner for the rest of your life”, he concludes. M JANUARY / MARCH 2 0 1 2

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MARCASUR TRAVELLING

An ice bridge at the Perito Moreno glacier

Earth REPLETE WITH REGIONS, CLIMATES, VEGETATION AND ECOSYSTEMS, LATIN AMERICA HAS NATURAL BLESSINGS IN WHICH HUMANS DOES NOT INTERFERE BUT JUST SIMPLY ENJOY. HERE WE WILL COVER FIVE PLACES WHICH ARE WORTH VISITING AT SOME POINT IN YOUR LIFE.

THE SOUTHERN GLACIERS. The Southern glaciers are a vast extension of continental ice, the third largest after the Antarctic and Greenland, located in the Patagonian Andes on the border between Argentina and Chile.

The territory covers nearly 360 km from north to south and has a total of 49 glaciers. Approaching it from the Argentine side we find the Glacier National Park, in which the famous Perito Moreno is found, a gigantic glacier, the constant advancing of which causes the breaking and falling of large blocks of ice. Tourists from all over the world come to see that magical moment every year.

In Chile the route starts at the impressive lake O'Higgins and it is possible to see several glaciers as you journey onwards, among which the O'Higgins glacier, one of the five largest in Patagonia, stands out. There are also steep mountains (among which the impressive mount Fitz Roy), valleys, lakes, beautiful Lenga 56

forests, diverse species of birds, areas to take refuge and camp.

We also find the vast Torres del Paine National Park which is ideal for those wishing to practice adventure sports.

To reach the southern glaciers you travel from Buenos Aires to Río Gallegos or to El Calafate, where the Glacier National Park is. You can also travel from Santiago de Chile to Punta Arenas and from there on to Puerto Natales, a city located 154 km from the entrance of Torres del Paine National Park. Going from El Calafate to Puerto Natales takes around four hours by land.

Although surrounded by ice, your heart will be warmer than ever!

THE IGUAZÚ FALLS. These spectacular waterfalls, of unequalled natural beauty, are in the province of Misiones, Argentina and in the state of Paraná, Brazil.

The area is known as the “triple border” because the convergence of the Paraná River and the Iguazú River delimits Argentina, Brazil and Paraguay.

In November 2011 they were chosen as one of the new natural Seven Wonders of the World…and for a reason: they are made up 276 falls of up to 80 meters high, fed by the waters of the Iguazú River. They are laid out in a shape resembling a large inverted j. The right margin where 25% of the falls are found is on the Brazilian territory.

You can go on boat rides beneath the falls and walk on paths with truly wild fauna. Something which is truly worth seeing is the legendary Devil's throat, the fall with the most water flow, and the highest with 80 meters, which can be enjoyed in all its majesty from a mere 50 meters.

If the hand of man has had a bearing on the landscape it has only been to build the walkway which allows getting around easier in such natural richness and almost touching the water.

It is said that you see the falls from the Brazilian side but you live them from the Argentinean one. You should not miss from either side.

There are daily flights to the Iguazú Falls International Airport from Buenos Aires, Sao Paulo and other Latin American cities. There are five star www.marcasur.com

nature hotels to sleep, some of them very close to the falls and with picturesque-postcard views you will never forget. Like everything that can be seen in the falls‌

THE AMAZON. To the east of the Andes, in a vast region of the central and northern part of South America, extends the tropical rainforest of the Amazon River basin.

The Amazon is known as the lungs of the world, since it is the largest jungle in the world. It covers seven million square kilometres comprised in nine countries: Brazil, Venezuela, Colombia, Peru, Bolivia, Ecuador, Surinam, Guyana and French Guyana. The Amazon rainforest is also a natural reserve of immeasurable proportions. Two million species of insects, more than two thousand bird and mammal species, more than one hundred and forty thousand different types of www.marcasur.com

plants and eighty thousand different types of trees inhabit the area.

It was declared as one of the new Seven Natural Wonders of the World along with the IguazĂş falls.

The rivers are the best way to discover the mysteries of this glorious jungle. The main river is the Amazon, the second longest after the Nile and the one with the largest water flow, which covers 6,400 kilometres from the peaks of the Peruvian Andes to the Atlantic coast of Brazil.

The Negro River is the most important tributary of the Amazon and is navigable over 300 km for large vessels. That's why sailing both the Amazon and Negro River and other tributaries is recommended. It can be done from Colombia, Peru and Brazil on single day or week long trips, staying on the boats or in camps in the middle of the jungle.

Aerial view of a section of the Amazon River bowl tropical rainforest

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The Iguazú falls, one of the new Seven Natural Wonders of the World

If you want to submerge yourself in the most primitive place on Earth, the Amazon awaits you.

THE GALAPAGOS ISLANDS. The Galapagos Islands (also known as Island of the Galapagos and officially Archipiélago de Colón) are an archipelago in the Pacific Ocean located about one thousand kilometres from the coast of Ecuador. It is formed by thirteen large volcanic islands, six smaller islands and 108 islets. Administratively they are a province of Ecuador.

The Galapagos Islands are very well known around the world since its flora and fauna are unique and cannot be found anywhere else on the planet.

You need to go on a cruise to truly enjoy and see the Galapagos Islands. Some tours offer land based day trips but there are cruises of up to eight days if you want to travel to farther islands.

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You can also go on day trips to other Galapagos Islands: there are four islands with hotels, some of them very comfortable. Other recommended options are to travel by kayak or go diving since it is one of the most fascinating places in the world to do so.

Go and enjoy. Where else can you walk among nests of blue-footed boobies and swim with sea lions, penguins and sharks?

www.marcasur.com

THE ATACAMA DESERT. The Atacama Desert is in the north of Chile in the Antofagasta region. Bordered by the Andes mountain range and the coast, covering 100,000 square kilometres it is the most arid and the driest desert in the world. It has salt flats, thermal geysers, mountains in the high plateau, fertile streams and very rich in fruit producing oasis.

Among outstanding tours you must see the Moon Valley, a depression surrounded by sand dunes and hills with impressive sharp ridges found on the Cordillera de la Sal. It is given that name because of the great resemblance it has with the surface of the moon.

We also recommend visiting Toconao, Salar de Atacama and the Chaxa lagoon, which is a natural reserve for large flamingos. The 100 kilometre long and 80 wide Salar de Atacama is the largest salt reserve in Chile and the fifth largest in the world. It has magnificent views of the mountains and volcanoes.

Add the Tatio geyser to your visit, a wonderful walk through the different geysers and hot mud pools, the Puritana thermal pools and the high plateau lagoons such as Legia, Miscanti and Mi単iques. To reach Atacama you must take a flight from Santiago de Chile to El Loa international airport, 5 kilometres from the city of Calama and from there go to San Pedro de Atacama by land.

There are flights from Argentina and Brazil to El Loa. San Pedro has a population of 5,000 inhabitants and is surrounded by the beauties of the desert, where most of the hotels and hostels of the area are found, and is the centre for desert expeditions.

Be ready for a breathtaking experience.

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Giant tortoises in the Galapagos Islands.

Panoramic view of the Atacama Desert from the top of the Licancabur volcano.

www.marcasur.com

JANUARY / MARCH 2 0 1 2

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HIsTORIA DE UNA MARCA

kidding but

seriously

Ups and downs At the beginning of 2011 I invested part of my savings in a portfolio offered by my bank. I thought it was a good decision since it would pay a reasonable interest. Anyway, it was the thirty ninth investment offer which my bank had offered me…

That portfolio was made up of shares which were expected to shoot up. That's why I started to follow what was going on in the NYSE at breakfast. The headlines of my daily newspaper showed me an important lesson in time: Values were volatile.

Very volatile! So much so that they were varying wildly in the second quarter of 2011. One day they rose and everybody foresee benefits. Next day they fell and the specialists indicated losses. Such frenzy ups and downs caught me as well: my pleasant morning paper reading was transformed into a compulsion for newspapers, TV channels, websites and cell phone applications. It wasn't just breakfast, but lunch, in the afternoon, during dinner and even in the wee hours of the morning. The NYSE figures weren't enough and I started to follow Sao Paulo, Buenos Aires, Hong Kong, Bombay, Frankfurt and London.

I quickly learnt another lesson: Values changes for mysterious reasons. One afternoon, for example they shot up because

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the French president had left smiling after a meeting with the German prime minister.

However, the following morning they tumbled down because Silvio Berlusconi's girlfriend left the house in a taxi and not in her usual Rolls Royce. Besides, she was dressed in jeans and not in a Gucci.

I was enormously confused when the following midday the values started to climb. The reason? The FMI director told some journalists that she felt “very calm” after having a family lunch.

And so the madness of the ups and downs continued…

If the Spanish Economy minister had bought a house or Obama said that he “feared for Greece”, the population in China had reduced their consumption of rice, or that Dilma Roussef planned serious changes in his cabinet…

Six months had passed and my life was guided by that chaotic addiction. I had lost a lot of money since my shares had considerably dropped. I also lost my capacity to coax sleep: I used to wake up by midnight desperately screaming: “Sell, sell!”

I decided to go to a psychiatrist. But instead of telling him my problems, I only asked if he could predict Angela Merkel's mood through photographs. He of course threw me out after the second session…

Desperate, I started to assist any seminar, debate, interview, wedding or even wake where some distinguished prestigious economist gave suggestions about the international financial panorama. I thus tremendously increased my level of information on the subject. What was it good for? For nothing, because I learnt a third lesson: Even the most informed person doesn't have a clue about what will happen with shares.

One day I was invited to a conference given by a very successful Italian businessman, with textile companies all over Europe listed on the stock exchanges and with future investments in Asia. After finishing his speech I asked him anxiously how he studied the volatility of shares. “I'm only interested in the profitability of my

businesses. The stock exchanges don't exist to me. If I wasted my time on them my businesses would be a failure”, he replied.

He said it so surely that it was enough to end my state of madness. I suddenly understood that I had been naive: the stock exchange is a game full of chance and little reasoning.

No doubt some gain in it, but they are very few, they know how to play very well, and they don't give out advice to anyone! They sell when the experts say to buy. And vice versa…

The bank called me a few weeks ago to start to talk about the renewal of my portfolio.

They confirmed that I had no profits in 2011 but that in the future climate was very positive since my portfolio had not worsened as the average portfolios had.

They added that it was probable that in the first quarter of 2012, after a recovery of the stock markets, my portfolio would be the first to go up. They decidedly advised me to renew. ”Thanks but no thanks” I told them.

“I decided to put my savings in a game with more fun: horse races” I explained. And so I did. “NYSE” is the name of my horse, which won last Sunday and made me happy in a way that not even the rise of a thousand shares could beat.

Worried, an economist friend told me that you lose money on horse races. “True”, I accepted “You do with shares as well, but turf doesn't give me nightmares”. M

www.marcasur.com

HISTORY OF A TRADEMARK

PHOTOGRAPHIC CAMERA CREATED IN 1948

WITH ONE CLICK! IT HAS CAPTIVATED AMATEUR AND PROFESSIONAL PHOTOGRAPHERS AND FEATURED SOME OF THE BEST AND WORST MOMENTS OF MILLIONS OF PEOPLE AROUND THE WORLD. ITS FAME BROKE THE BOUNDARIES OF JAPAN AT THE HAND OF LIFE PHOTO JOURNALIST AND VERY QUICKLY CONQUERED ALL MARKETS. NINETY FOUR YEARS OF HISTORY PLACE NIKON CORPORATION AS ONE OF THE LEADING TRADEMARKS IN THE PHOTOGRAPHY INDUSTRY.

It was at the heart of the Mitsubishi group, founded in 1870 by Yataro Iwasaki, that the company Nippon Kogaku (Japanese optics) was created in 1917, to manufacture optical lenses and photographic objective lenses. When the Second World War broke out, the company was chosen to supply optical military equipment to the Japanese military.

At a point in 1945 the company proposed itself to manufacture a photographic camera based on the expectation that a great demand for this product was foreseen if a reasonably priced camera was produced. Although Nippon Kogaku has experience in manufacturing aerial cameras and telescopes, it was its first experience in manufacturing mass consumer products.

Research started with 35mm 6X6 telemetric TLR cameras with interchangeable objective lenses. In September 1946 the design of the camera was finished and it was given the name Nikon, a combination of Nippon Kogaku and Ikon, as reference to the Zeiss Ikon cameras, manufactured by a branch company of the German giant Karl Zeiss.

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The person responsible for this change in name was Joe Ehrenreich, the distributor of Nippon Kogaku in the United States.

The first Nikon film camera appeared in 1948 and its design was basically a combination of the elements of Leica and Contax cameras. The engineers adapted the shape of the Contax body and the layout of the controls to create the perfect design, making the first Nikon very similar to the German camera. The telemetric focusing system and the cloth shutter with horizontal movement were adapted from Leica.

This first marketed camera was used by all the western reporters during the Korean War. Douglas Duncan, from Life magazine used Nikon objective lenses and satisfied with their quality, became an enthusiast of the brand. In 1959 the company opened a new page in its history when it created the Nikon F 35mm reflex camera with its famous bayonet frame. It was the most important in the history of photography for being the first professional camera, and therefore, the

first option for professional photographers. In the mid 1980s the NT 1000 model opened the way for numeric or digital photography. In 2005 Nikon was the first manufacturer to propose a compact digital camera with integrated WiFi, the Coolplix PI. In 2006 it decided to leave film photography in favour of digital, which already represents 98% of its sales. Reflection on current times, the Nikon D3000 is one of the most sold reflex cameras on Amazon.

A nikonist club exists since the year 2000, made up of millions of fans of the brand from around the world (nikonists.com). Its slogan, as no other could be possible: “In the centre of the picture”. Click. M

Sources: Petites histories de marques by Jean Watin-Augounard and www.nikon.com. www.marcasur.com

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