Section 3(h) of the Law on Trademarks prohibits the registration of a person's name, pseudonym or portrait as a trademark without either their consent or that of their heirs up to the fourth degree. The National Federal Court of Appeals in Civil and Commercial Matters recently held that the great-granddaughter of Cuban rum manufacturer José Arechabala could not prevent the registration of the trademark ARECHABALA in Argentina under Section 3(h).
In Argentina, confidential information and trade secrets are protected by Section 39.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, Section 156 of the Argentine Penal Code, Law 24,766 (the Confidentiality Law) and the recently passed Emergency Decree 274/2019, which regulates different unfair competition aspects. This article provides an overview of the Argentine trade secrets legal regime.
The rapid growth in internet use has given rise to conflicts between registered trademark owners and third parties using said marks. For example, search engine advertising systems make it possible to create ads that show products or services to users who are looking for them. Federal Court of Appeals in Civil and Commercial Matters case law provides useful guidance on the use of third-party trademarks as keywords in internet advertising.
Until the approval of Emergency Decree 274/2019 in April 2019, the regulation of unfair competition in Argentina was characterised by a lack of organisation, narrow scope and lack of a general rule for standardising acts of unfair competition. The new decree sets out numerous provisions that are relevant to the IP field, including provisions addressing the regulation of comparative advertising, designations of origin, secrecy, data exclusivity and trademarks.
The protection provided under industrial property law to commercial signs registered with the National Institute of Industrial Property is more effective than that offered by unfair competition law. It is therefore worth questioning whether unfair competition law exercises any function with regard to the protection of registered signs. There may be sectors in which the protection of a rights holder's interest requires the combined use of IP and competition law.
The Supreme Court recently held that selling refill products for a dispenser that is manufactured by another party without indicating that the refill product is not produced by the dispenser's manufacturer constitutes trademark infringement. The decision clarifies that parties must label refill products to prevent the relevant public (ie, the users of the refill product) thinking that the manufacturer of the refill product is also the manufacturer of the dispenser.
The Supreme Court recently had to decide whether the infringer of a registered Community design had to hand over the entire net profit or just a share of profit earned due to its use of an infringed design. The decision has great practical importance, as it gives IP rights holders clear guidelines regarding what to expect when claiming compensation for an unlawful use of their rights.
The Supreme Court recently set out clear principles regarding the protection of a work of visual art under the Copyright Act where technical functions played a role. In its decision, the court explained that the assessment as to whether a (visual) piece of work is actually protected by copyright must be assessed by the court as a legal issue only. There is no room to consider the opinion of experts or any other third parties.
The Supreme Court recently clarified the circumstances in which the burden of proof regarding the exhaustion of trademark rights shifts from the defendant to the trademark owner. It made clear that unless the defendant can prove a concrete risk of partitioning markets, it is up to the defendant to prove that the trademark rights relied on by the plaintiff are exhausted. This should be borne in mind when raising this defence.
The Supreme Court recently affirmed once more that the exemptions to the principle of exhaustion of trademark rights must be construed narrowly. In its decision, the court made clear that once trademark rights are exhausted, resellers may use not only word marks, but also figurative marks without any limitations when advertising or reselling original products.
This article has been removed at the request of the contributing firm.
Over the past year the Brazilian courts and the Brazilian Patent and Trademark Office have been adapting to the new reality brought about by the COVID-19 pandemic. In light of these judicial and administrative changes, the Brazilian IP landscape is becoming increasingly favourable for entrepreneurs and companies. While Brazil still has a long way to go, the government's pursuit of greater effectiveness in its judicial and IP systems is commendable.
A patent dispute about a spray used to mark the distance between the defenders and the ball when a free kick is taken in football is ongoing in Brazil. The spray's inventor filed an infringement action against the International Federation of Association Football (FIFA), which was rejected on the grounds that the inventor had not proved that the products used by FIFA corresponded to infringed copies of his products or that any damage had been caused. The inventor has appealed this decision.
In recent years, the Brazilian Patent and Trademark Office has taken actions to improve IP protection policies. As such, it recently published the Guidelines for Examining Patent Applications Involving Computer-Implemented Inventions. The new guidelines were long overdue, considering that technology and intelligent systems (eg, the Internet of Things and AI) are becoming increasingly integrated into everyday life.
Although Diego Maradona assigned all of his trademark rights to Sattvica before his death, the Brazilian Patents and Trademarks Office rejected the company's application to register the trademark MARADONA in Brazil based on the Trademark Law. This article discusses the registration of proper names as trademarks and explores the measures that parties can take to ensure that the legacy and goodwill associated with their intellectual property is preserved after their death.
The National Health Surveillance Agency recently published four guidelines on its prior consent procedure, which all pharmaceutical patent applications in Brazil must undergo before the Brazilian Patent and Trademark Office (BRPTO) conducts the technical examination. However, applicants should remember that the final decision on the patentability of pharmaceutical patent applications is made exclusively by the BRPTO.
The Department of Intellectual Property Rights has continued its aim of expanding on Cambodia's IP capabilities with the signing of a memorandum of understanding (MoU) with the United States Patent and Trademark Office. Although full details of the MoU have yet to be released, it is possible that the agreement may utilise a combination of legal principles – namely, validation, re-registration and accelerated patent decisions.
In July 2020 Cambodia brought its ever-developing IP protection regime further into line with international standards, with the ratification of the Berne Convention for the Protection of Literary and Artistic Works. With consistent annual gross domestic product growth of more than 8% for the past two decades, Cambodia is one of the fastest-growing economies in the world. This timely ratification of the convention can only increase confidence between Cambodia and the international trading community.