INTA Weighs in on Data Protection and Brand Restrictions Developments in Latin America

Published: July 1, 2018

On May 8, INTA’s Latin America and the Caribbean Representative Office, in collaboration with the Brazilian Intellectual Property Association (ABPI) and the International Chamber of Commerce (ICC), participated in the Second Intellectual Property Seminar-Public Policies and International Perspectives, organized by the National Confederation of Industry (CNI) in partnership with the World Intellectual Property Organization (WIPO) and the Brazilian National Institute of Industrial Property (INPI).

The event covered topics including recent developments in the Brazilian intellectual property system, Brazil’s adherence to international treaties, international cooperation and negotiations in which Brazil is involved, and the role of the private sector in these initiatives.

INTA members Alonso Camargo (Olivares, Mexico) and Marina Dostal (General Electric Company, USA) presented the Association’s position on the Madrid Protocol. Mr. Camargo shared Mexico’s recent experience with implementation of the Protocol from the practitioner perspective, while Ms. Dostal provided a brand owner perspective on filing trademarks via the Madrid System.

Impact of EU General Data Protection Regulation and Changes in the WHOIS System on Trademark Holders
While in São Paulo, the Latin America and the Caribbean Representative Office also participated in a workshop about data protection on the Internet that was organized by CNI. Fabiano Barreto, Analyst of Politics and Industry for CNI, moderated a panel comprising INTA’s Chief Representative Officer, Latin America and the Caribbean, José Luis Londoño; Daniel Fink, Stakeholder Engagement Senior Manager at the Internet Corporation for Assigned Names and Numbers (ICANN); and Pedro Paulo Vilhena (Kasznar Leonardos, Brazil).

Mr. Londoño spoke first, providing an overview of INTA and introducing the Association’s concerns surrounding data protection on the Internet. He explained the potential risks for the EU General Data Protection Regulation (GDPR) to facilitate illegal trade and increase counterfeiting, which severely harms companies as well as consumers and governments.

Mr. Fink gave a comprehensive overview of ICANN’s operations and the expected consequences of the GDPR on ICANN’s and contracted parties’ activities. He highlighted the role of ICANN in assisting companies that have their trademarks infringed on the Internet.

Finally, INTA member Mr. Vilhena (Kasznar Leonardos), who is also a member of INTA’s Data Protection Committee, examined the importance of the WHOIS system for brand owners, as well as the challenges for WHOIS related to the implementation of the GDPR. He said that Brazil does not have a set of privacy standards on par with the European Union, due to the lack of a culture of privacy protection, and concluded, “GDPR creates a unified data system for Europe, but at the same time it imposes far more stringent rules than existing ones.”

Privacy Obligations vs. Public Data Roundtable in Chile
On May 14, Mr. Londoño and INTA’s Associate for Latin America and the Caribbean, Agustina Davis, attended a roundtable hosted by the International Association of Privacy Professionals (IAPP).

The main points of discussion were the GDPR and its consequences, especially in Chile, in relation to privacy obligations. Mr. Londoño specifically addressed the consequences of the GDPR for the WHOIS system. The Head Attorney of the Network Information Center Chile (NIC-Chile), Luis Arancibia, was also invited to speak. Although he did not represent NIC-Chile’s opinion, but his own, he raised some interesting issues specific to the limitations that may be placed on Chile’s domain name registry as a result of the GDPR.

INTA Addresses Brand Restrictions in Chile
On May 3, Mr. Londoño and the Chair of INTA’s Emerging Issues Committee, Ariela Agosin (Albagli Zaliasnik, Chile), met with the Chilean Ministry of Economy, Development and Tourism, José Ramón Valente Vias. The primary objective of the meeting was to explain INTA’s position regarding brand restrictions and the potential consequences for commerce.

The discussion centered on Bill 9914-11, which intends to modify Chile’s Sanitary Code. The bill includes a rule related to trademarks, possibly limiting the size of trademarks on pharmaceutical product packaging. Secondly, in 2016, a regulation entered into force in Chile regarding labeling and packaging of food being advertised to children. Based on this new legislation, administrative authorities started proceedings against several companies for the use of figurative marks on the packaging of products classified as high in sugar, calories, sodium, and carbohydrates. Such marks were deemed to constitute advertising and the regulation went so far as to order their removal from the packaging.

Mr. Valente seemed very receptive to INTA´s position regarding the fact that limiting the use of trademarks in these two markets may have negative consequences, as it could increase the likelihood of confusion among consumers. In the pharmaceutical market, it may even have negative effects on consumers’ health and safety. INTA also emphasized that, from an economic perspective, excessive regulation in the use of the trademarks on the packaging of both pharmaceuticals and food products can create barriers to entry of foreign products into the country, discouraging foreign investment and competition.

On May 18, Mr. Londoño, Ms. Agosin, and Ms. Davis attended a meeting with Juan Luis Castro Gonzalez, the Head of the Health Commission of the Chamber of Deputies of the Chilean Congress.

The purpose of the meeting was to discuss the implications of Article 128 bis of Bill 9914-11, which initially dramatically limited the size of trademarks on pharmaceutical products packaging. The article was modified during the legislative process, and no longer limits the size of the trademark, but establishes that it will be a regulation handled by the Ministry of Health, which will determine the shape, size, colors, proportion, characteristics, and content of the labels of medicines.

INTA believes that this modification is an improvement, since it does not limit the use of trademarks or any other intellectual property. However, the Association stressed that the Ministry of Health must be cautious when using its regulatory powers and avoid following the modified 128 bis provision measures that unjustifiably limit the acquired rights of trademark owners to use their trademarks. 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.

INTA anticipates being called by the Health Commission of the Chambers of Deputies to be heard and to provide its expert opinion regarding this matter.

INTA Welcomes Improvements to Mexico’s Trademark Legislation
On May 18, amendments to Mexico’s industrial property legislation were published in the country’s Official Gazette and will enter into force on August 10, 2018.

The modification includes significant improvements, including the addition of protection for:

  • Nontraditional marks (sound, olfactory, and holographic trademarks);
  • Trade dress; and
  • Generic or descriptive trademarks that have acquired distinctiveness by use in the market.

The amended legislation also includes:

  • Improvements to opposition procedures;
  • The addition of bad faith as an impediment to the registration of a trademark and a cause to request the cancellation of a registered trademark; and
  • Introduction of the obligation to file a Declaration of Use within three months after three years of registration. If this declaration is not filed, the trademark will lapse.

Following publication in the Official Gazette, there is a 60-day period for the authority to issue a new regulation, and INTA was invited to be part of that discussion.

Miguel Ángel Margain, Director General of the Mexican Institute of Industrial Property (IMPI) and Eliseo Montiel Cuevas, Divisional Director of Trademarks, attended INTA´s Annual Meeting in Seattle, Washington. They attended various committee and subcommittee meetings to inform members about the legislative amendments, thanking INTA for participation in that process and requesting INTA’s assistance in making the regulation. As a result, there has been considerable cross-committee collaboration to support Mexican authorities in the creation of a new regulation.

Brand Restrictions Examined in BogotÁ
On May 8, INTA member Danilo Romero Raad (Holland & Knight, Colombia) was invited to participate in two panels at the University Externado of Colombia (Universidad Externado de Colombia). The first one examined information and advertisement as a consumer right and focused chiefly on the differences and similarities between the obligations that involve information and advertising.

The second panel highlighted the responsibility of trademark owners regarding information and advertisement. The discussion was focused on the balance of consumers’ rights versus trademarks. Mr. Romero emphasized that consumers’ rights are not contrary to trademark holders’ rights and reiterated INTA’s position on brand restrictions.

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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