Association Weighs In on WIPO Treaties and Brand Restrictions in Chile

Published: August 15, 2018

Roundtable on Adherence to WIPO Treaties
On June 26, INTA’s Chief Representative Officer for Latin America and the Caribbean, José Luis Londoño, and Associate for Latin America and the Caribbean, Agustina Davis, attended a meeting at the Ministry of Economy of Chile hosted by the Chilean National Institute of Industrial Property (INAPI). INAPI presented a proposal to the government to adhere to eight World Intellectual Property Organization (WIPO) international treaties: the Nice Agreement, the Strasbourg Agreement, the Locarno Agreement, the Vienna Agreement, the Patent Law Treaty, the Singapore Treaty on the Law of Trademarks, the Madrid Protocol, and the Hague Agreement.

During the roundtable, Carolina Belmar, Subdirector of Trademarks at INAPI, presented the main content of the treaties and the benefits and challenges of their implementation if Chile were to adhere to each of them. After the presentation, the attendees were able to ask questions and make comments. Mr. Londoño shared INTA´s position on the Madrid Protocol and referred to Colombia’s and Mexico’s experiences with the implementation of the Protocol.

INTA Position on Bill to Restrict Pharmaceutical Trademarks in Chile
On July 10, Mr. Londoño, Ms. Davis, and INTA member Antonio Varas (Porzio Rios García, Chile) attended a session of the Health Commission of the Chamber of Deputies of the Chilean Congress. The goal was to present INTA’s position on the implications of Article 128bis of Bill 9914-11, which initially limited dramatically the size of trademarks on pharmaceutical product packaging. However, it was recently established that a regulation administered by the Ministry of Health will instead be responsible for determining the shape, size, colors, proportion, characteristics, and content of medicine labels.

INTA presented its view regarding the dangers of trademark restrictions and established that this modification is an improvement on the prior wording of the article, as it no longer explicitly limits the use of trademarks or any other intellectual property on packaging, instead leaving it to the Ministry to craft a new regulation. However, the Association stressed that the Ministry of Health must be cautious when using its regulatory powers and avoid reverting to the initial wording of Article 128bis, which would unjustifiably limit the acquired rights of trademark owners to use their trademarks.

Finally, INTA offered to participate and contribute to the construction of an adequate and balanced regulatory framework that considers elements of competitiveness and health as complementary.

International Seminar on Counterfeit Products Detection and Challenges for Customs
On July 31, INTA’s Anticounterfeiting Committee, together with the National Customs Service of Iquique, Chile, organized the International Seminar on Detection Methods for Counterfeit Products and Border Challenges. INTA was represented by Ms. Davis, as well as the following members: Álvaro Agurto (Carey, Chile), Juan Avendaño (Mackenna, Irarrazaval, Cuchacovich & Paz, Chile), Pablo Cariola (Sargent & Krahn, Chile), Juan Cichero (Philip Morris International Management SA, Switzerland), Antonio Hernandez (Marinovic y Asociados, Chile), Andrés Grunewaldt (Silva, Chile), Alexandra Howard (Villaseca Abogados, Chile), María Paz Lira (Mackenna, Irarrazaval, Cuchacovich & Paz, Chile) and Ignacio Martinez (Aguayo, Ecclefield & Martínez, Spain).

The event opened with presentations by INTA members regarding the prevention of illegal trade and criminal prosecution. It also included two panels: the first was titled “Current Customs Practices Against Counterfeiting in Chile” and the second was “Private-Public Collaboration in Counterfeiting.” The panelists included INTA representatives, as well as members of the National Customs Service of Iquique, the Tax Office, the Prosecution Office, the National Chamber of Commerce, and the duty-free zone of Iquique.

Enforcement Forum in Colombia
On July 31 and August 1, Mr. Londoño and INTA’s Manager, External Relations, Enforcement, Iris Gunther, attended the Regional Seminar on Intellectual Property Enforcement for Judges and Officials with Jurisdictional Functions, hosted by WIPO, the Colombian Ministry of External Relations, the Dirección de Derechos de Autor de Colombia (Colombian Copyright Office), and the Colombian Superintendence of Industry and Commerce, in collaboration with IP Key América Latina.

The seminar was mainly directed at judges and prosecutors. It addressed issues related to enforcement of criminal actions in Colombia, the policies of Colombia’s General Prosecutor Office, an explanation of the procedures surrounding border measures by the customs authority, as well as critical debates such as compensation for damages due to infringements of intellectual property. Mr. Londoño presented on the role of brand owners in the IP enforcement system.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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