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Global Report: Latin America In the News continued from page 25 Despite the fact that registrations protecting the texture of the Old Parr bottle have already been granted in other jurisdictions, such as Ecuador and the United States, this marks the first tactile trademark registration in Colombia. For local trademark practice and rights owners in Colombia and abroad, this is excellent news, as the time has come to protect the creativity and investment of companies and product designers that create textures that are distinctive enough to obtain trademark protection. Contributor: José Roberto Herrera Herrera Díaz Abogados, Bogota, Colombia Verifier: Pedro Vilhena Kasznar Leonardos Advogados, Brazil COLOMBIA: New Software for Managing Trademarks Launched On July 18, 2016, the Superintendencia de Industria y Comercio (SIC) launched a new technology platform (SIPI) to manage and handle all aspects of trademark and patent prosecution in Colombia. With this new software, the SIC has taken another step in its process of modernization and adaptation toward international standards regarding the management of trademarks, patents, and industrial designs. The hope is that all of the procedures and paperwork related to registration, appeals, cancellations, recordal of assignments, changes of names, changes of domiciles, and renewals will be able to done online, including the presentation of evidence. Furthermore, the SIC is in the process of improving the process of revising and correcting its database of trademark registrations and applications, which contains more than 700,000 trademarks. It is expected that with this revision and the new system, the reliability of information about the intellectual property protected in Colombia will be enhanced. Among the new tools, SIPI will provide the possibility of keeping information on patent and trademark owners up to date in a more agile and efficient manner. Because all of the information in the files will be digital, the hope is that the examiners’ reviews of the relevant information will be available more quickly and will be more precise. At the same time, SIPI will introduce a new electronic payment method focused on making the trademark and patent filing procedure a much easier task. Likewise, with SIPI, one will be able to access the trademark class in order to make product descriptions. Examiners will be able to discuss salient points with the representatives in case any doubts arise during the administrative process. This will be done by implementing a system based on tasks and conversations that each representative will receive every day according to the different requirements that arise during the administrative process. It’s important to take into account that SIPI will allow representatives to view and reply to those requirements in a very intuitive way, providing the possibility of attaching digital files and images instead of filing them in a physical way. In addition, Colombia’s Industrial Property Gazette will be published more regularly and will include direct access to the digital dossier of the application, making it possible to present evidence supporting oppositions in a more effective manner. The intellectual property community views this software as extremely positive for IP owners. It will almost certainly allow the SIC to improve its industrial property procedures and make their responses more timely. Contributor: Tatiana Carrillo Lloreda Camacho, Bogota, Colombia Verifier: Gerardo Florez Philippi Prietocarrizosa & Uria S.A.S., Bogota, Colombia INTA Bulletins Law & Practice—Latin America Subcommittee JAMAICA: Seek and Ye Shall NOT Find: New Rules for Searches at JIPO On September 20, 2016, the Jamaica Intellectual Property Office (JIPO) issued a notice to its customers stating that trademark searches done via JIPO’s publicly available computers would be limited to searches for “obtaining information on specific trade marks and trade mark clearance searches, i.e. checking if a similar or identical trade mark has been filed.” Proprietor and date range searches, among other types of searches, will no longer be available, except “upon request and payment of the requisite fees.” The most notable change in practice is that of the newly restricted proprietor searches. Prior to this change in policy and the issuance of this notice, it was possible for any member of the public to use public computers at JIPO’s New Kingston offices to search for the trademark holdings of any person or entity. The information supplied would include details on pending applications not yet accepted for registration and not yet published in the Trade Marks Journal. With this new policy in place, it will no longer be possible to get this type of information in this manner, although applicants can still use JIPO’s facilities for trademark clearance searches. The trademark statute and regulations are not clear as to whether unpublished applications should be accessible to searching, and so it is possible that JIPO’s position could change in the future. Contributor: Kathryn Pearson Livingston Alexander & Levy, Kingston, Jamaica Verifier: Katherine Van Deusen Hely Caribbean IP, West Palm Beach, Florida Ms. Pearson is a member and Ms. Van Deusen Hely is Co-Chair of the INTA Bulletins Law & Practice— Latin America Subcommittee. 26 INTA Global Report, February 2017
Global Report: Latin America MEXICO: Burden of Proof in Trademark Invalidation Actions Clarified In a binding decision published July 1, 2016, Contradicción de tesis 9/2016; tesis PC.I.A. J/78 A (10a.), a Mexican appellate court resolved a conflict between previous decisions regarding the burden of proof in trademark invalidation actions brought on the basis of false statements in the application. The court held that the burden in these actions falls on the plaintiff, reversing years of practice by the Mexican Institute for Industrial Property (IMPI) and earlier jurisprudence of IMPI’s primary reviewing court. A trademark registration may be declared invalid under Article 151.III of the Industrial Property Law (LPI) if it was granted on the basis of an application containing false information. Typically, cases under Article 151.III involve dates of first use. The LPI is silent on the burden of proof under Article 151.III. However, under Article 81 of the Federal Code of Civil Procedure, a plaintiff must prove the facts that form the basis of its action. Also, Articles 82.I and 82.II of the Code state that a party that denies a fact need only support the denial with evidence if the denial involves the express affirmation of another fact or if it seeks to rebut a legal presumption. The application of these principles to cases arising under Article 151.III was subject of great debate between plaintiffs and registrants. Historically, IMPI has placed the burden of proof on the registrant, reasoning that the documents required to prove the truth or falsity of a claimed date of first use are in the possession of the registrant. IMPI’s primary reviewing court, the Federal Court for Fiscal and Administrative Justice (TFJFA), reached the same conclusion in a binding decision published in 2006, tesis V-J- SS-90. However, the Collegiate Circuit Courts for Administrative Matters of the First Circuit, which review decisions of the TFJFA, have issued conflicting decisions. The recent decision, published by the Plenary of the Collegiate Circuit Court for the First Circuit, resolves the issue by placing the burden of proof on the plaintiff. The court reasoned as follows: • As a general rule, that which is ordinary may be presumed, while that which is extraordinary must be proven; • An applicant for trademark registration need not provide evidence to corroborate its claimed date of first use. In other words, the LPI presumes the good faith of the applicant and the accuracy of the date of first use claimed in the application; • Because of this presumption, a plaintiff seeking the invalidation of a trademark registration under Article 151.III is claiming something “extraordinary” (an incorrect date of first use) which must be proven; and • Further, from a public policy standpoint, placing the burden on the registrant to corroborate its claimed date of first use encourages the filing of baseless invalidation actions under Article 151.III. Since there is virtually no discovery under Mexican law, the initial burden of proof often determines the outcome of the litigation. Thus, the likely effect of the court’s decision will be to greatly reduce the number of successful invalidation claims under Article 151.III of the LPI. Contributor: Aldo de Landa Arochi & Lindner S.C., Mexico City, Mexico Verifier: Juan M. Alvarez Bufete Ocampo, Mexico City, Mexico INTA Bulletins Law & Practice—Latin America Subcommittee MEXICO: Mexico Adopts Opposition System Mexico has harmonized its industrial property laws to international standards by incorporating the opposition system into its legal framework. As of August 31, 2016, trademark owners became entitled to oppose not only the registration of any trademark filed by third parties that may be considered to be infringing such owners’ rights but also any applications lacking distinctiveness, as well as any applications contrary to public order, moral, and good customs, or contravening any other legal provision. As in other jurisdictions, one of the opposition proceeding’s main objectives and advantages is to avoid the granting of trademark registrations that could invade previously conferred rights. Oppositions provide trademark owners with a solution to potentially extensive and expensive litigation proceedings while preventing the dilution of registered trademarks and trademark hijacking, as well as warning trademark owners about potential non-use cancellation actions. Even though it is not mandatory to file or contest an opposition, trademark owners should not overlook the possibility of influencing the animus of the examiner analyzing a trademark’s registrability. It is therefore worth evaluating this legal resource to strengthen and secure trademark rights. The implementation of a trademark watch service in Mexico is intended to become a common practice in order to monitor conflicting applications and either oppose their registration or contest any opposition filed by third parties, within the non-extendible 30-day term from the date of publication in the Industrial Property Gazette. Contributor: Veronique Durand Baker & McKenzie Mexico, Mexico City, Mexico Additional Resources on INTA.org Country Guides Enforcement: An International Litigation Guide Global Portal International Oppositions Guide Madrid Agreement and Protocol Trademark Cancellations Geographical Indications, Certification Marks and Collective Marks: An International Guide Regional Resources ABPI Andean Community ASIPI 27
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