FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / N 41 APRIL - JUNE 2011
KICK OFFFEATURE ARTICLE
IP WITH
A SPORTING
SPIRIT
2011 INTA-ASIPI CONFERENCE
TRADE MARKS
IN LATIN AMERICA
STATISTICS
THIS EDITION IS SUPPORTED BY:
4 www.marcasur.com
Contents
18
22
51
35
6 Editorial 8 Statistics. Trade Mark evolution in the region
12 Have you heard?
14 Marcasur reports
17 Opinion. By Vera Abogados Asociados, Colombia
18 With honors. Interview with Jorge Otamendi
22 Kick off. Feature article
Something more than trade marks. Feature article
28 Ambush marketing. Column: Law and sports. 30 Events. IT with sporting spirit . 2011 INTA-ASIPI
Conference
35 Events. The new giants talk about IP.
BRIC IP FORUM (BIPF)
39 Opinion. By Becerril, Coca & Becerril, Mexico
41 Opinion. By E-Proint, Costa Rica
43 You have the floor.
44 Lawyers in their spare time. Music & Sea
Argentinean Miguel OFarrell and Salvadoran Roberto Romero Pineda.
46 Marcasur Travelling
50 Kidding but seriously
51 The history of a brand.
The secret of success: Coca-Cola.
46
6 www.marcasur.com
staff
Editorial
Marcasur Mail
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M
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Year 15 n 41 april-june 2011
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MARCASUR
Edicin amparada al decreto 218/96
ISSN 1688-2121
In this digital edition of MARCASUR
magazine, we have the pleasure to introduce
for the first time our magazine, MARCASUR,
in English. MARCASUR has been publishing
since 1996 MARCASUR printed magazine,
distributed mainly to Latin American readers,
as it is published in Spanish. Now our goal is
that readers outside Latin America can also
enjoy reading it through this digital
magazine.
MARCASUR magazine has a broad experience and recognition in the
Latin American market, keeping our readers updated with the latest IP
news. You will find statistics, interviews, cover stories, events, news,
articles and more, with a very attractive design. We invite you to learn
more about us through our sites www.marcasur.com, and
www.marcasurmi.com.
MARCASUR is published quarterly, and we are offering to you free of
charge this English version. We will soon publish it also as an iPad
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Hope you enjoy it!
ABRIL / JUNIO 2 0 1 1 57www.marcasur.com
8 www.marcasur.com
2009-2010 (%)
Country 2006 2007 2008 2009 2010 Growth
Argentina 74.711 71.559 89.900 83.683 88.428 5,6
Bolivia 5.364 8.446 9.564 9.023 9.871 9,4
Brazil 85.588 139.329 141.079 111.724 148.123 32,6
Chile 41.437 44.320 48.836 39.934 45.105 12,9
Colombia 22.281 24.049a 23.461a 20.298 26.713a s/d
Costa Rica 12.015 16.510b 15.266a 10.529a 15.467 s/d
Cuba 2.088a 2.948a 2.390a 3.615 2.476 31,5
Ecuador 12.000 18.332 15.524 14.349 15.551 8,3
El Salvador 14.901 12.379 11.855 9.789 11.253 14,9
Guatemala 10.892 15.118 14.177 14.303 15.318 7
Honduras 9.259 10.294 9.523 s/d 8.854 s/d
Mexico 68.975 77.066a 77.467a 90.591 108.552 19,8
Nicaragua 5.806 5.977a 7.511a 7.911 6.768 14,4
Panama 10.049 9.609 10.719 8.541a 14.350 s/d
Paraguay 14.860 16.719 20.032 18.435 28.367 53,8
Peru 18.862 22.519a 25.590a 31.282 33.116 6
Dominican R. 6.205 7.993 7.386 6.826 9.309 36,3
Uruguay 9.039 10.077 11.053 9.603 15.615 62,6
Venezuela 30.142 30.083 25.045 21.700a 21.345a 1,6c
Totals 453.135 543.305 565.252 512.136 624.581 22
1.- Total number of Trade Mark Applications in Latin America (2006-2010)
TRADE MARK EVOLUTION
IN THE REGION
Statistics // Trade Marks in Latin America
Notes:
a Does not include renewals. No official source available.
b Estimated figure. No official source available.
n/d no statistical data.
IN ORDER TO GIVE YOU A NUMERICAL PERSPECTIVE ON IP PRACTICES,
MARCASUR CONSULTED THE REGIONAL SPECIALISTS WITH REGARDS
TO THE AMOUNT OF TRADE MARKS FILED AND RENEWED DURING THE
PAST FIVE YEARS IN THEIR COUNTRIES. HERE ARE THE RESULTS FOR
2010
The offices received a total of 624,581 trademark applications during 2010. In
2009 they received 512,136. There was a 22% increase in 2010. Uruguay reported
the largest growth (62.6%), followed by Paraguay (53.8%), Dominican Republic
(36.3%) and Brazil (32.6%).
The top five. The countries with the most trade mark applications are Brazil (148,123), followed by Mexico (108,552), then
Argentina (88,428), Chile (45,105) and lastly, Paraguay (28,367).
APRIL / JUNE 2 0 1 1 9www.marcasur.com
Worldwide. These statistics are based on
information provided to Marcasur by
Intellectual Property law firms and
offices as part of its annual surveys.
They shared their statistical data
concerning the number of filed and
renewed trade marks between 2006 and
2010 for this report. The figures
corresponding to 2010 were obtained
between the months of January and
March of 2011. The results include
primary trade mark applications and
renewals. It is likely that there is missing
data relating to some offices or certain
periods; these cases will be highlighted
as will the cases where renewals are not
included.
The surveyed areas includes all of Latin
America, USA, Spain, the EU and the
WIPO International Trade Mark
Registry in Geneva
The data. The available statistics show
that in 2010, 614,585 trade mark
applications and renewals were filed,
compared to 380,095 filed in 2009 (see
table 1). The global volume of trade mark
registration and renewal activity during
2010 increased 61.6% in
comparison to 2009. The
countries which allow multi-
class applications include
Costa Rica, Cuba, Dominican
Republic, Nicaragua, Peru,
U r u g u a y a n d C h i l e .
Nevertheless, goods and
services cannot be covered
under the same application in
Chile.
The top five. The countries
experiencing the largest
growth were Uruguay (62.6%,
1 5 , 6 1 5 ) , f o l l o w e d b y
Paraguay (53.8%), Dominican
Republic (36.3%), Brazil
(34.6%) and Mexico (19.8%).
A -31.5% drop compared to
the previous year was
recorded in Cuba (2,476
applications during 2010,
decreas ing f rom 3 ,615
app l i ca t ions in 2009) ,
followed by Nicaragua who
reported -14.4% (6,768 in
relation to 7,911 in 2009) and
Venezuela with -1.6% (21,345
in relation to 21,700 in 2009).
10 www.marcasur.com
2006 2007 2008 2009 2010 Growth 2009-2010
CTM 78.029 88.475 88.038 88.209 98.217 10,2 %
Table 6. Registration of Applications for the International Trade Mark Registry
WIPO 2006 2007 2008 2009 2010 Growth 2 009-2010
Madrid System 36.471 39.945 42.075 55.159 59.482 7,8 %
Country 2006 2007 2008 2009 2010 Growth 2009-2010
Spain 62.601 59.076 72.231 56.197 48.099 14,4%
Table 3. National Trade Mark and Trade Name Applications in Spain
Table 4. Trade Mark Applications and Renewals in the United States
Country 2006 2007 2008 2009 2010 Growth 2009-2010
USA 391.714 435.154 443.780 396.004 417.153 5 %
Table 5. Community Trade Mark Registration and Renewal
Argentina 69,565 55.373 79,6
Brazil 129,620 104.992 81
Bolivia 5,991 1.667 27,8
Chile 31,690 22.626 71,4
Colombia 26,713 16.353 61,2
Costa Rica 11,264 5.797 51
Cuba 1,856 200 10,7
Ecuador 15,551 8.934 57,4
Honduras 6,088 1.938 31,8
Mexico 87,477 61.947 71
Nicaragua 4,019 705 17,5
Panama 9,632 3.695 38
Paraguay 22,102 13.133 59,5
Per 23,120 15.164 65,6
Dominican R. 7,964 4.151 52
Venezuela 21,345 13.874a 65
Totals 473,997 330.549 69,7
Table 2. National Primary Trade Mark Applications (2010)
Country Total primary trade marks (2010) Total national trade marks (2010) % national trade marks
a Estimated figure. No official source available.
The top five national trade mark filing countries. The country with the greatest percentage of national trade mark applications was Brazil with 81%.
It is followed by Argentina with 79.6%, Chile with 71.4%, Mexico with 71% and Venezuela with 65%.
The data corresponding to each country is
provided by the following contributors:
Argentina: Matas F. Noetinger (Noetinger &
Armando) and Hernn Goana (INPI)
Bolivia: Marcos Mercado (Guevara & Gutirrez
S.C.)
Brazil: Deyse Gomes Macedo (INPI)
Chile: Marcos Morales (Alessandri & Compaa)
Colombia: Martn Torres (Brigard & Castro)
Costa Rica: Marianella Arias (Divimark) and Atty.
Viviana Mora Artavia (Intellectual Property
Registry)
Cuba: Yordanka Ramrez (Bufete CLAIM S.A.) and
Carmen Ross Fonseca (Cuban Intellectual Property
Office)
Dominican Republic: Mary Fernandez Rodriguez,
Miguelina Figueroa, Melba Alcntara Cornelio and
Emperatriz Lpez (Headrick, Rizik, lvarez &
Fernndez)
Ecuador: Rodrigo Bermeo R. (Bermeo & Bermeo
Abogados)
El Salvador: Diana Hasbn and Patricia Iraheta
Larios (IP Registry)
Europe: Emmanuelle Guern (OHIM)
Guatemala: Ernesto E. Viteri (Viteri & Viteri)
Honduras: Camilo Bendeck and Karl Hollmann
(General Intellectual Property Office of Honduras)
Mexico: Fernando Becerril (Becerril, Coca &
Becerril)
Nicaragua: Marvin Caldera S. (Caldera & Solano
Compaa Limitada)
Panama: Susana Saldaa R. (Bufete Candanedo)
Paraguay: Lorena Mersan (Mersan Abogados)
Peru: Virginia Delion (Estudio Delion)
Spain: Dmaris Ansn (Oficina Ponti)
United States: United States Patent and
Trademark Office (USPTO)
Uruguay: Edgardo Larminy (Pittaluga &
associates) and Dr. Luis Alberto Gestal (National
Intellectual Property Office)
Venezuela: Adolfo Lpez Moreno (Ayala &
Lpez Abogados)
WIPO: Carlos A. Naranjo
12 www.marcasur.com
News
Comings
&goings
HAVE YOUHEARD?
In Colombia, Muoz Abogados
has hired Giancarlo Marcenaro
Jimnez as their new senior
counsel. Giancarlo Marcenaro
has been the Superintendent of
Industry and Commerce (E) and
was the Regional Intellectual
Property Superintendent for close
to a decade. As the Director of the
National Patent and Trademark
office, he was responsible for the
management and administration
of the National Intellectual
Property System.
In Peru, Scavia & Scavia
Abogados has hired Carlos
Ramrez Lau for the Intellectual
Property and Competition Law
Division in the firm. Carlos is a
graduate of the Universidad de
Lima Law and Political Science
School and has worked for
fourteen years in the Distinctive
Signs Office at INDECOPI.
In Venzuela, Estudio Antequera
Parrillo & Rodrguez has hired
attorney Mariana Montiel Salas for
the firm.
In Nicaragua, Garca & Bodn
have re-hired two distinguished
professionals for their legal team.
Amlcar Navarro Amador began
his professional career in the
offices of Garca & Bodn
Nicaragua in 2003. In 2009 he
a scholarship to study a Master's
Degree in International Law at
the Instituto Superior de Derecho
y Economa (ISDE) in Barcelona,
Spain. Having successfully
completed his studies, he has
now returned to Garca & Bodn.
Diana Patricia Zelaya Salas also
began her professional career in
the offices of Garca & Bodn
Nicaragua in 2005. In 2010, she
too won a scholarship to study a
Master's Degree in International
Law at the Instituto Superior de
Derecho y Economa (ISDE) in
M a d r i d , S p a i n . H a v i n g
successfully completed her
studies, she has now also
returned to the main office in
Managua.
In Venezuela, attorney Ana
Carolina Martins has been hired
at Carrascosa Tecnologa
Marcaria to work in the
department that files actions
with the Superintendency for the
Promotion and Protection of
Free Competition.
In Venezuela, Rosa Mejuto
Gordon has been named partner
at TEHAR S.C.
In Peru, Estudio Olaechea has
hired Mnica Germany as
Intel lectual Proper ty Area
Director. Mnica is an attorney
who has a Master's Degree in
Corporate Law and 20 years of
experience in the areas of patents,
trademarks, and competition law,
among others.
In Mexico, Link International has
recently hired Ral Raygadas
Vela. Mr. Raygadas worked for
several years as the Trademark
Examinat ion Depar tmenta l
Coordinator at the Mexican
Intellectual Property Institute and
handled several issues in two
Intellectual Property Offices in
Mexico.
In Mexico, attorneys Miguel
ngel Carpio and Enrique Ochoa
de Langlet of Carpio & Asociados
were approved by the National
Copyright Institute to act as
arbitrators in the arbitration
proceeding regulated by the
Federal Copyright Law.
APRIL / JUNE 2 0 1 1 13www.marcasur.com
New informationIn Brazil, the boutique-style law
firm Lopes De Oliveira Lambert,
Advogados, was established,
born from the joint venture
between two known firms: Alves,
Vieira, Lopes and Gomes Canedo
Barbosa & Suzuki. The new office
has its own Intellectual Property
Depar tment with renowned
colleagues Mauricio Lopes de
Oliveira, Antenor Barbosa, Jr.,
I v i n a S u z u k i a n d D i o g o
Alburquerque, among others.
Their new address in Ro de
Janeiro is Av. Das Americas no.
7935, Sunplaza bl. I, 604/606.
www. lopesdeoliveira.com.
In the Dominican Republic,
attorney Janet Adames de
Lantigua founded J Adames &
Asociados, a specialized IP
boutique firm. Ms. Adames was
the Director of the IP Department
at Headrick Rizik lvarez &
Fernndez for 16 years. Her new
e-mail is [email protected]
and her new address is Calle
Pasteur esq Calle Santiago, Plaza
Jardines de Gazcue, Suite 315.
In Colombia, OlarteRaisback has
announced that the partners have
decided to go their separate ways.
Carlos R. Olarte and Juan G. Moure
are now the partners at Olarte-
Moure. Their contact e-mails are
carlos.olar te@olar temoure.com
a n d
juan.moure@olar temoure.com.
www.olartemoure.com.
J. Ian Raisbeck and Natalia
Castro founded Raisbeck Osman
& Castro. Their contact e-mails are
Natal [email protected].
www.roclaw.co.
In Peru, attorneys Jorge Allende
and Magali Garca have formed a
now IP firm called Allende &
Garcia. For more information go to
www.allendegarcia.com.pe.
In Peru , Scavia & Ziga
Abogados has been dissolved.
Two independent firms where then
fo r med , Scav ia & Scav ia
Abogados and Ziga & Cia
Abogados. Scavia & Scavia
Abogados will continue to provide
integral legal counseling services,
particularly focusing on Intellectual
Property and Competition Law.
In Venezuela, TEHAR S.C. has
moved its offices to the
following address: Avenida
Andrs Bello, Edificio Atlantic,
piso 6, Los Palos Grandes,
Caracas. Its telephone and fax
numbers are still 58212 918 33
44 and 58212 918 33 43,
respectively.
In Uruguay, Cikato has new
offices at the following address:
Araucana 1277
11400 Montevido, Uruguay
Its telephone, fax and e-mail
have not changed and they are:
Tel.: 598 2606 0606
Fax: 598 2606 1439
E-mail:
In Honduras, the office of Arias
& Muoz in Tegucigalpa has
moved to:
Centro Comercial El Dorado 61
Piso, Boulevard Morazn
Tegucigalpa M.D.C.
Its new telephone numbers are:
Tel.: 504 2221 4505
Fax: 504 2221 4522
Nassar Abogados and Unimark
are expanding their presence in
Central America with the opening
of their second office in
Honduras. It is located in the city
of Tegucigalpa, Colona Lomas
del Guijarro, Boulevard Juan
Pablo II, Torre Alianza, no. 102,
and it is joining the network made
up of offices in San Pedro Sula
(Honduras) Guatemala City
(Guatemala), San Salvador (El
Salvador), Managua (Nicaragua)
and San Jos (Costa Rica).
www.nassarabogados.com
14 www.marcasur.com
Venezuela: Anniversary.
Fifteen years of E.C.V.
& Asociados
Mxico: Two
new hires in
Dumont Bergman
MARCASUR REPORTS
Bider & Co., S.C.
MARCASUR REPORTS
www.ecv.com.ve
www.dumont.com.mx
Enrique Cheang
Marianella
Montilla
Roberto Castaeda, B.A. and Luis Guillermo Corona, B.A.
On the 1st April, E.C.V. &
Asociados celebrated its first
fifteen years of existence.
To celebrate, it held a
gathering with fr iends,
colleagues and national and
international associates which
was full of color and music.
The partners took advantage
of the occasion to thank the
i m m e a s u r a b l e s u p p o r t
received that has made these
15 successful years possible.
Dumont Bergman Bider &
Co., S.C. announced two new
additions to its staff. Both
professionals have ample
experience. They are Luis
Guillermo Corona, B.A.
who is in charge of the
Trademark Portfolio and
Litigation Division, and
Roberto Castaeda, B.A.
x), who has taken charge of the
Anti-piracy Division.
Dumont is a Mexican firm
that was founded 70 years ago
and has since dedicated itself
to the processing, securing
and managing the protection
of inventions (patents, utility
models, and industr ial
designs) and distinctive signs
(trade marks, trade names,
slogans and denominations of
origin).
The firm specializes in
l i t i ga t ion , copyr igh t s ,
information technologies and
anti-piracy, and the team
comprises expert lawyers,
consultants and litigators in
each discipline who combine
experience and energy and
prepare themselves day after
day to provide high added-
value services.
APRIL / JUNE 2 0 1 1 15www.marcasur.com
MARCASUR REPORTS
www.mhov.com.ve
Venezuela:
MHOV, a
young and
growing firm
Leopoldo Mrquez Lefeld
Luis Alejandro Henrquez De Sola
Rafael Ernesto Ortin Perozo
Carlos Valedn Hurtado
New address:
Av. Francisco de Miranda, Edif.
Cavendes, piso 1, ofic. 101, Los
Palos Grandes, Caracas 1060,
Venezuela. Telephone: (58 212)
2864024, 4912, 9636, 7337. Fax:
(58 212) 2855817.
www.mhov.com.ve
Venezuela is perhaps the country
that has experienced the largest
p o l i t i c a l a n d s o c i a l
transformations of the region in
recent years. The firm Mrquez,
Henrquez, Ortn & Valedn,
which was created five years ago
from the partnership of the firm
Mrquez Lefeld (founded 20
years ago by Leopoldo Mrquez
Lefeld) with Luis Alejandro
Henrquez de Sola, Rafael
Ernesto Ortn Perozo and Carlos
Valedn Hurtado, who had been
developing their professional
careers in nationally recognised
law firms and companies, came
i n t o e x i s t e n c e i n t h i s
environment. With the growth of
the firm, it has recently moved
into new offices and is facing the
future with optimism.
How did you decide to become
partners?
LAH: Each one of us had to
make decisions in coinciding
moments; the country was
changing and so was intellectual
property, so we decided to take
advantage of the chance to set up
a new firm.
L M L : S o m e t h i n g v e r y
interesting was happening with
us. We always ended up talking
about business, intellectual
property, life and goals at every
ASIPI or INTA meeting. We had
so many things in common!
REO: It was a tough decision for
me to make. I had come from
being an in-house lawyer at a
m u l t i n a t i o n a l
t e l e c o m m u n i c a t i o n s a n d
entertainment company, so I was
more uncertain about the
challenge I had undertaken than
m y c o l l e a g u e s w e r e .
Nevertheless, it was the right
choice!
CVH: After having worked in
very strict organizations in the
past, it was great to be able to
start a new stage in my life in a
more flexible company, where
each one of us has had the
opportunity to explore his
creativity, intellect and excellent
relationships to lead MHOV to
where it stands today.
And where do you stand today?
LML: We are a young, dynamic
and currently one of the top
intellectual property firms in
Venezuela; that's how the market,
our clients and specialist
magazines such as Chambers
and Partners see us.
Are MHOV's activities mainly
focused on IP?
LML: Although our core
business revolves around
intellectual property, which is
the department headed up by
LAH and REO, we have
d e v e l o p e d a c o r p o r a t e
department that specializes in
foreign investment, regulatory
affairs and fiscal planning, run
by CVH and myself at the helm.
We also deal with aeronautical
issues. Nevertheless , the
interdependency of each area
means we work together as a
team most of the time.
In a country in such a
complicated situation such as
Venezuela, where do you see
yourselves in 10 years time?
REO: In this wonderful country,
working for and on behalf of it,
harvesting success, maintaining
those wonderful professional
and personal relationships with
all our colleagues of the region.
We are very optimistic!
But does the future situation in
Venezuela seem complicated?
LAH: Yes, but we have invested
heavily, have new offices, have
taken on new staff, are investing
in technology and continue
attending the most important
meetings and events in the area.
CVH: It's simple. Venezuela has
given us everything and MHOW
will give Venezuela everything.
APRIL / JUNE 2 0 1 1 17www.marcasur.com
New designation of origin
for a lovely
Colombian town
opinion -
Carolina Vera Matiz
Vera Abogados Asociados S.A. Colombia
Colombia is a naturally beautiful country
that combines beaches, snow-capped
mountains, valleys, mountain ranges,
islands and deserts throughout its entire
geography. Apart from its geographical
beauty, Colombia is the owner of a
cultural boom, a mixture of African,
Spanish roots and indigenous traditions
which come from, the arawak, Caribbean
and chibcha cultures, among others.
It was precisely the chibcha culture that
gave rise to the traditional craftsmanship
in its various forms: basket weaving,
pottery and ceramics.
The inhabitants of a small town
belonging to the region of Boyac, named
Rquira, which means village of
potters in the chibcha language, have
p a s s e d o n t h i s k n o w l e d g e o f
craftsmanship from generation to
generation.
Rquira, located next to the Candelaria
desert, in the middle of beautiful natural
surroundings, is today a vividly
picturesque town, with houses painted in
various bright and happy colors, whose
economy base is almost exclusively the
crafts market. In Rquira it is possible to
find goods ranging from the traditional
clay pig (marranito) which serves as a
piggy bank, to furniture for decorating a
home.
In December of last year the Colombian
National Competent Authority declared
the protection of the designation of origin
handcrafted Rquira ceramics. The
resolution of this declaration states: The
designation of Handcrafted Rquira
Colombia Ceramics is used to designate
handcrafted pottery and ceramic goods
characterized by being made in the
municipality of Rquira by means of
traditional techniques, using red, purple
and white clays extracted from the same
municipality as raw materials, and by
being both decorative and for everyday
use, having characteristic finishes and
traditional styles. Handcrafted Rquira
Ceramics joins the other designations
already granted by SIC such as
Colombian Coffee in 2005, Huila
Passion Fruit in 2007 and Guacamayas
baskets in 2009.
A doubt has emerged from the
declaration by the Competent Authority:
in this case, is it the clay that determines
the characteristics of the product or is it
the traditional knowledge and skills in the
making of the handcrafted ceramics that
could transform any given clay into a
wonderful handcrafted creation?
If it is the clay, clearly the combination of
it plus the traditional skills of the
inhabitants of Rquira is what makes the
Handcrafted Rquira Ceramics a
designation of origin, but if the Rquira
handcrafts are due solely and exclusively
to the traditional knowledge of the
inhabitants, passed down through the
generations, we would be facing an
indication of origin, thus meaning, in any
case, that the protection covers the
traditional knowledge as well as the clay
working skills.
Further from the debate, interesting in
any case, this declaration of handcrafted
Rquira ceramics as a designation of
origin is an opportunity to invite
nationals and foreigners to learn about a
tradit ionally magical people, a
Colombian treasure, and while doing so,
s ee the amaz ing scene ry tha t
characterizes the whole region of
Boyac.
Carolina Vera Matiz is an attorney and also a
partner in the firm Vera Abogados Asociados
S.A, a graduate of Universidad de los Andes
(Bogot, Colombia), with a Masters degree in
Trade Marks, Patents and Copyrights from the
Universidad de Alicante (Alicante, Spain). Her
areas of practice include: industrial property,
patents, copyrights, unfair competition,
community law, administrative law, commercial
law, new technologies and litigations. She is
currently the CEO of Vera Abogados Asociados
S.A.
18 www.marcasur.com
HONORSWITH
INTERVIEW WITH JORGE OTAMENDI
IN 2010, WITH AN ESTABLISHED REPUTATION AND OVERWHELMING
PROFESSIONAL ACTIVITY, JORGE OTAMENDI WAS APPOINTED
HONORARY MEMBER OF THE INTERNATIONAL ASSOCIATION FOR THE
PROTECTION OF INTELLECTUAL PROPERTY IN THE 42ND WORLD
CONGRESS HELD IN PARIS. THE DISTINGUISHED ATTORNEY GIVES US
HIS IMPRESSION OF THE HONOR WITH AN ARGENTINEAN ACCENT.
APRIL / JUNE 2 0 1 1 19www.marcasur.com
> 2010
Jorge Otamendi (Argentina)
> 2000
Gert E. Dannemann (Brazil)
> 1998
Luiz Leonardos (Brazil)
> 1985
Peter D. Siemsen (Brasil)
> 1982
Federico J. L. Zorraquin (Argentina)
IT WAS A SURPRISE AND A GREAT HONOR INDEED. TO RECEIVE A DISTINCTION OF
OF THIS NATURE FROM YOUR PEERS MAKES IT EVEN MORE SPECIAL
Attorney by trade and intellectual
property agent, Otamendi has had an
ample 30 year career, which includes
published books and articles both in
Argentina and other countries, an
important academic role as director of the
IP department in the Institute for Legal
Studies of the Argentinean Federation of
Bar Associations, professor and speaker
of post-graduate courses, and former
adviser of the Deputy Secretary of State
for Economic Affairs and of the Secretary
of State for Industrial Development. He
is also an active member of the
international IP, president of AIPPI-
Argentina since 2004 and Secretary of
the Intellectual Property Institute of the
Bar Association since 1988.
Otamendi was born and raised in Buenos
Aires. He is 63 years old and knew he
would be a lawyer since he was a child.
Perhaps because my father-whom I
never got to know since he died when I
was five years old- and my grandfather,
Pedro C. Breuer Moreno-who I admired-,
were also lawyers he says. At home he
was repeatedly told that he must study,
learn languages and study a university
degree. He did everything and still went
for more. He learnt three languages:
Spanish, English and French. He
graduated as a lawyer at the Universidad
Catlica Argentina de Buenos Aires, as a
Doctor in Law and Social Studies from
the Universidad Nacional de Buenos
Aires and later gained a Master's Degree
in Comparative Law from the University
of Illinois, in Urbana-Champaign. I
suppose I was a good student, even
though I was never in the high marks
group he said humbly.
When he turned 15 and having finished
the school year, his uncle Rafael Piccardo
asked if he would like to help translate
patents at the G. Breuer law firm
throughout the month of December. He
accepted and after a few years, on the 1st
of August 1969, while studying his
fourth year of Law he was again invited
by his uncle, but this time as an
employee. I happily accepted, he says
with enthusiasm and not surprisingly: he
is still part of the firm today and belongs
to the fifth generation -out of six- with
the same family that runs it. It was
founded by Gustavo Breuer, a German
who arrived to Buenos Aires and started
professional activity in 1869.
Currently as a member of the firm, his
areas of practice are IP, technology
transfers, defense of fair competition,
licensing and foreign investments. He
assures that his style as a lawyer is more
of an arbitrator rather than combative. I
like to get to the point and I don't like
beating about the bush, he revealed.
On the other hand, he went on to be part
of the select list of honorary members of
the AIPPI. Marcasur interviewed him
and asked him about this and more.
If there is something that makes you
stand out today it's your honorary
membership in the AIPPI. What are
your comments on this?
It was a surprise and a great honor
indeed. To receive a distinction of this
nature from your peers makes it even
more special.
When does your membership with the
AIPPI start?
I've been a member of the AIPPI for over
30 years. I have actively worked on
various commissions and attended
nearly all of its annual meetings. The
members of G. Breuer have always been
a part of the AIPPI, with whom they have
There have been 47 honorary members
chosen by the AIPPI since 1982 and two
honorary presidents named in 2000:
Geoffroy Gaultier, of France, and Martin
J. Lutz, of Switzerland. Of the 47
members of the select list, five are South
American. They are:
20 www.marcasur.com
M
WHEN LESS IS MORE
THE AIPPI HAS AN EXTRAORDINAR Y
ACADEMIC LEVEL AND THE GOO D
THING IS THAT ANYONE WILLING TO
PARTICIPATE CAN DO SO
THE TRUTH IS THAT I ALWAYS LEARN SOMETHING NEW AND I'M EASILY SURPRISED WHEN I SEE THAT T HERE ARE
CASES THAT SEEM INCREDIBLE
always worked.
And who would you highlight as your
biggest influence in the association?
I'm not sure if influence, but I have met
many worthy people, whose opinions
and criteria I've always thought of as
being top level and sensible. I'll name
one so as not to look bad: Geoffroy
Gaultier.
How would you define the AIPPI?
The AIPPI is the most important
organization of its type that exists in
relation to intellectual property. It has an
extraordinary academic level and the
good thing is that anyone willing to
participate can do so. The AIPPI is an
extraordinary environment to study and
learn, and at the same time keep up to
date with what's going on in the world
with regards to this subject.
What can the Latin American
professional expect from an association
such as the AIPPI? And vice versa?
My advice to Lat in American
professionals is to participate in the
different AIPPI commissions and issues.
It requires effort, but the intellectual
return is of great value. The participation
of Latin Americans is essential for the
AIPPI. Points of view will expand.
Generally, they are mainly from
developed countries, and a different
situation not known outside of our
countries will be seen.
Let's talk about the firm that you have
been a part of for 30 years and the path
of your professional career. G. Breuer
was founded in 1869. From that instant
up until now, what aspect would you
point out?
The most noteworthy of this office is that
in all these years, nearly 142, it has
offered a great quality service and is very
well renowned. There can't be many
enterprises where six generations of the
same family have worked (me being the
fifth), maintaining a good level of quality
because a high level of professionalism
has always been demanded of anyone
who has worked here, providing a great
environment in which to do so.
Could you tell us about the firm's future
objectives?
The objectives are to always maintain
that level of quality, permanently work
on modernizing technology and, in this
sense, we want to eliminate the use of
paper and computerize everything
possible. And consolidate the general
law department, which we opened only a
few years ago.
And how are you as a lawyer?
You'd have to ask my colleagues and
clients about that. What I can say is that I
try to avoid trials. My strategy as a
lawyer is more of an arbitrator rather than
combative, although you can't always
avoid confrontation. On another matter, I
like to get to the point and I don't like
beating about the bush.
Within your professional career, what
was the best lesson you learnt?
I don't think that one has been better than
another one that deserves mentioning. The
truth is that I always learn something new
and I'm easily surprised when I see that
there are cases that seem incredible.
Otamendi works 7-8 hours a day at the firm and seldom takes work home with him. I
don't have much faith in people who work 12 hours a day. Either they waste a lot of time
or they have such a heavy workload that they eventually burn-out, he explained.
Since he teaches classes in the university, he commonly writes academic papers and
is in permanent contact with younger law students. He always insists the same thing
with young attorneys who come to work in his firm. First, they have to read, study old
and new authors and national and international rulings. I also tell them that they have
to have a method for presenting a case. An organized presentation is essential for
capturing the reader's interest. Something short and succinct is much better than a
long and generally repetitive presentation. He also adds in most cases, when one
writes a lot, it is because he's not right. He does not think that younger generations
have virtues that prior generations did not. They are obviously better prepared to deal
with technological changes than people my age are, but I don't think that's a virtue. It's
just a necessary adaptation to something new.
In his free time he plays squash and golf and reads as much as he can. His best hit
depends on the day, maybe I'm more consistent with the putter he admits. Right now
he is reading Les Miserables by Victor Hugo. If you are properly organized, there is
time for everything.
32 www.marcasur.com
KICK OFF
Feature Article
IN 1892, IN THE GREEK CITY OF
OLYMPIA, THE OLYMPIC GAMES AS WE
NOW KNOW THEM TOOK PLACE FOR
THE VERY FIRST TIME. NO ONE COULD
HAVE IMAGINED BACK THEN THAT THE
FIRST STEPS TOWARDS
PROFESSIONAL SPORTS WERE BEING
TAKEN WITH THAT EVENT, AND LEAST
OF ALL THAT THE SAME EVENT WOULD
BE PART OF A BUSINESS THAT
GENERATES BILLIONS OF DOLLARS A
YEAR AND WHERE THE LAW IS
INCREASINGLY PLAYING A MORE
PREDOMINANT ROLE.
other, with the same principles, strategies
and interests. And the same conflicts arise
in it, too. The only exception and
difference in relation to other businesses
is that it involves not only money but
passion in most cases.
Sports Law. Like any other activity,
sports are regulated under the law.
According to information published by
the Latin American Sports Law
Association (ALADDE) on its website,
there has been a considerable number of
legal experts who have found themselves
in recent years in the dilemma of having
to determine whether sports law is an
independent type of law or whether it
stems from other independent branches
within the commercial, labor or fiscal
disciplines that adapt to the peculiarities
of sports law.
APRIL / JUNE 2 0 1 1 23www.marcasur.com
That's right, we're talking about
sports, synonym of exercise and a
healthy life style for some, passion and
emotion for so many others, and
dollars and business for a privileged
few.
Sports as a Business
As a professional activity, sports have
evolved into a global business over the
last few decades.
What fans watch on television or in the
sports-related scenario, are the athletes
and the game or competition. But
behind what you see on the field, there
is an enormous amount of players and
side businesses, the majority of which
are unknown to the common fan.
League and conference directors, team
owners and directors, agents, business
men, owners of different multinational
businesses and companies, global
broadcasting networks, fans and even
the young man that sells the burgers
at the stadium are some of the
players in this business.
Merchandising, sponsorship, trade
mark licensing, buying and selling
image rights, static and digital
advertising, ticket sales, passes and
boxes, broadcasting, etc. are just
some of the many businesses that
sports generate.
It's an interdisciplinary business in
which the main disciplines of the
bus iness wor ld t ake pa r t :
management, marketing, finance,
i n f o r m a t i o n t e c h n o l o g i e s ,
administration, economics, legal
affairs and more.
This business is run, operated and
administered like any
24 www.marcasur.com
Others, however, sustain that
the peculiarities of the
re la t ionship be tween a
professional athlete and the
club or the existence of
specific laws for sports
activity determines that we are
facing a specific sports legal
system, which is independent
and includes in
a d d i t i o n t o
state laws, all
the provisions
contained in
b i l l s a n d
regulations of
national and
international
institutions.
More than just
indoctrinated
considerations,
the reality and
the facts show
that there are
a n e v e r
growing
n u m b e r o f
lawyers and law
f i r m s
specializing in
t h i s m a t t e r .
There are many
confederations
and clubs who
have lawyers
a m o n g t h e i r
ranks that are
specialized in
sports law, or at
least specialized
in some area of
l a w t h a t i s
closely linked to professional sports. But
there are also many law firms that began
to specialize in sports law. These firms
offer, among other things, advisory
services relating to sponsor and
merchandising agreements, sports
contract drafting, advertising agreements
and image rights protection, assignment
of economic and registration rights of
athletes, sports corporation, litigations
and disputes where athletes and sports
institutions, third parties, sports
refereeing, doping, among others, are
involved.
Intellectual Property in sports.
In this context, intellectual
property has become a legal
discipline of singular and
fundamental importance in
the sports business. Athletes,
clubs, teams or franchises,
and organizations such as
FIFA, PGA or NBA, acquire a
great share of their revenue
through the exploitation of
their intellectual property
r i g h t s b y m e a n s o f
m e r c h a n d i s i n g , b r a n d
licencing, buying and selling
ABRIL / JUNIO 2 0 1 1 35www.marcasur.com
image rights, advertising, sponsorship and
broadcasting.
As an example, and to show the
importance of exploiting IP rights in sports
in figures, let's see the Real Madrid Club
de Ftbol case. The renowned club earns
42% of its income from merchandising
and sponsorship, and 24% from television
rights sales. Another interesting case is
that of the Swiss tennis player Roger
Federer who has an annual income
reaching 35 million dollars through
advertising agreements with brands such
as Nike, Credit Suisse, Gillette and
Mercedes Benz, among others.
The legal advice that intellectual property
lawyers can provide is ever more
important so that these rights are not infr-
-inged and the income does not
drop. This is why i t is
increasingly more common for
players in the sports industry to
have intellectual property
specialists on their side. For
Alberto Guerra, a Brazilian IP
attorney and ex-vice president of
Gremio Foo t -Ba l l Po r to
Alegrense, the role of an IP
a t t o r n e y i n s p o r t s i s
fundamental. IP assets are great
revenue generators for the clubs
and knowing how to manage all
the IP rights involved with a
large club (trade mark, image,
anthem, television rights, etc.)
can make a huge difference in
such a competitive market,
where a slight improvement can
make a big difference, he told
Marcasur.
He added that IP firms are
focusing more and more on
sports because of the club's
interest or the lawyer's passion
for his favorite team.
In turn, Lorenzo Litta, an Italian
lawyer specializing in this area,
states that By not applying
intellectual property in sports,
there is no evolution in the sports
business. Thinking about what
Nike did with Michael Jordan
goes to show how intellectual
property helps transform the
athlete-client into an asset and
allows adding excitement to the
brand.
Litta highlights: The main
players in all sports also need to
be advised in IP matters for each
contract and, on occasions, IP
lawyers can be as important as
the very agents . I t ' s no
coincidence that in the American
Sports Lawyers Association,
where the biggest agents of the
NBA, NFL, MLB and NHL are, there are
also IP lawyers from all over the world.
No one wants to be left out.
Lawyers and law firms don't want to be
left out of the world of sports, neither do
universities and associations. Knowing
that there is an increasing number of
lawyers that want to specialize in sports
law, many universities offer post
graduate and master's degrees on the
subject.
Take for instance the case of the FIFA
Master, which has a four month module
dedicated to sports law. ISDE (Higher
Institute for Law and Economics) in
Madrid offers an LLM in International
Sports Law. The International Centre for
Sports Studies-Centre International
d'Etude du Sport (CIES) in Switzerland
has the LLM Master (MAS) in
management, Law and Humanities of
Sport. UCLA, Stanford, Columbia and
Loyola also offer master's degrees with a
considerable focus on intellectual
property in sports and entertainment.
Meanwhile, the associations are also
aware of this phenomenon and they see it
as a discipline that can attract new
associates and give incentives to the
already existing ones.
In February 2011, in Rio de Janeiro, the
IBA held the Olympic-Size Investments:
Business Opportunities and Legal
Framework Conference, while the INTA
and ASIPI jointly held the conference
Trademarks in the Sports and
Entertainment Worlds: The Business of
Making Money in San Juan, Puerto
Rico.
We are witnessing a growing trend
combining two passionate activities. We
still don't know where one merges with
the other. The field is there, so are the
players. It's time for kick off!
FORBES PUBLISHES THE 2010 FORBES FAB 40, LISTING THE 40 MOST
POWERFUL BRANDS IN THE WORLD OF SPORTS. IN THIS REPORT,
MARCASUR PRESENTS THE RANKING DIVIDED INTO FOUR CATEGORIES:
BUSINESSES, EVENTS, TEAMS AND ATHLETES.
It is very easy to see the international relevance acquired by
sports as entertainment and especially the relevance acquired by
its most noteworthy feature, i.e., the billions of dollars that this
powerful industry moves. On and off the field and in equal
measure, everyone is competing for brand recognition and to
seize at least a small part of this billionaire industry. A brief
glimpse at the second ranking made by Forbes, which can
change the future of a brand, reveals the value of sports brands.
To make the list, the magazine analyzes the different categories
in terms of capital accumulated by each brand over many years.
The 40 most valuable brands are listed below.
26 www.marcasur.com
Feature Article
THAN TRADEMARKS
1. Nike, US$ 10.7 billion
2. ESPN, US$ 10.5 billion
3. Adidas, US$ 7.3 billion
4..Gatorade, US$ 6.4 billion
5. Reebok, US$ 2 billion
6. Sky Sports, US$ 1.3 billion
7. EA Sports, US$ 770 million
8. Under Armour, US$ 530 million
9. Yes, Network US$ 525 million
10. IMG, US$ 400 million
Table I. Top 10 sports companies
27www.marcasur.com
Table II. Top 10 sporting events
1.Super Bowl, US$ 420 million
2. Summer Olympic Games,
US$ 230 million
3. World Cup, US$ 120 million
4. European Championships, US$ 110 million
5. MLB World Series, US$ 105 million
6. Daytona 500, US$ 100 million
7. Winter Olympic Games, US$ 93 million
8. NCAA Men's Final Four, US$ 90 million
9. MLB All-Star Week, US$ 75 million
10. Kentucky Derby, US$ 67 million
1. Manchester Utd, US$ 270 million
2. New York Yankees, US$ 266 million
3. Real Madrid, US$ 245 million
4. Dallas Cowboys, US$ 208 million
5. Bayern Munich, US$ 200 million
6. Arsenal, US$ 195 million
7. Milan, US$ 175 million
8. Barcelona, US$ 170 million
9. New York Mets, US$ 159 million
10. Boston Red Sox, US$ 157 million
Source: Forbes.
Table IV. Top 10 athlete brand
1. Tiger Woods, US$ 82 million
2. David Beckham, US$ 20 million
3. Roger Federer, US$ 16 million
4. Dale Earnhardt, Jr., US$ 14 million
5. LeBron James, US$ 13 million
6. Kobe Bryant, US$ 12 million
7. Phil Mickelson, US$ 10 million
8. Maria Sharapova, US$ 10 million
9. Tony Hawk, US$ 9 million
10. Jeff Gordon, US$ 8 million
Table III. Top 10 sports teams
APRIL / JUNE 2 0 1 1
The most valued. Nike is the most valued sports brand, with the
chilling figure of 10.7 billion dollars. When it comes to
sporting events, there is no greater valued show than the Super
Bowl. The American Football event is one of the most watched
sporting events worldwide (about 150 million spectators) and
has a brand value of 420 million dollars. Television
broadcasting, sponsorship, licensing income and tickets sales.
The cheapest seat is 500 Dollars and is almost impossible to
get (less than 1% of the tickets are sold to the public through a
potluck draw). In spite of the power of Spanish football, with
teams such as Real Madrid, the most valuable team is
Manchester United, with a brand value of 270 million dollars.
Tiger Woods sits in first place among the athletes: his brand
value reaches 82 million dollars. Last year he earned 105
million dollars from his sponsors, which include Nike,
Electronic Arts and Gillette. In any case, he still earns enough
to remain the highest paid athlete of 2010.
28 www.marcasur.com
Column: Law and sports
AMBUSH MARKETINGBIG SPORTING EVENTS, SUCH AS THE OLYMPIC GAMES AND THE WORLD
CUP, ARE HUGE GLOBAL BUSINESSES GENERATING ASTRONOMICAL INCOME
FOR THEIR ORGANIZERS. A LARGE PERCENTAGE OF THIS INCOME COMES
FROM SPONSORSHIP AND ADVERTISING AGREEMENTS.
The most famous multinationals
compete for the official sponsorship
of these events. Those that succeed
invest large sums of money. Generally
speaking, each category of products or
services has an official sponsor. For
example, in the last World Cup in South
Africa, the official airline was Emirates,
the official soft drink was Coca-Cola,
and the sportswear was Adidas.
Nevertheless, this isn't a reason for the
competitors of these brands who aren't
official sponsors to be persuaded to be
left out of the enormous exposure that a
sporting event of such magnitude can
mean for their brands.
They take part, of course, before, during
and after the event, and in many cases
through even more innovative marketing
strategies which in many cases have an
even greater dramatic effect on the
public than the official sponsors'
campaigns.
This is where ambush marketing makes
its appearance. It is a concept and activity
that is incessantly mentioned during
these mega-sporting (and entertainment)
events and claims a starring role.
Ambush Marketing can be defined as
any marketing campaign that looks to
capitalize on the fame of an event (to obt-
tain a profit) by means of an
unauthorized association with it
(without having an official or direct
connection to the event). It is also any
marketing campaign that looks to
capitalize on the fame and the attention
of being illegally associated to an event
(sporting events, musical events, etc.).
These marketing campaigns have
certain effects, negative for some, while
positive for others. Those opposed to
ambush marketing point out that these
campaigns reduce the value of the
official sponsorship of major events
because they help other companies
associate themselves with it and take
APRIL / JUNE 2 0 1 1 29www.marcasur.com
Methods used by ambushers
M
advantage of the organizational efforts of
third party competitors. They reduce the
effect of the sponsor's advertising
message. Some go even further and point
out that ambushing jeopardizes the
celebration of the event.
For others, those in favor of these
practices, the effects of ambushing are
beneficial from a social point of view.
They quantify the real value of being a
sponsor, are the result of the competition
and improve sponsorship agreements.
They also point out that there are no
empirical studies that prove that ambush
marketing causes any real harm to the
official sponsors.
A never-ending number of methods,
actions or campaigns are used by
ambushers, but that doesn't mean that
new methods won't appear, as pointed
out by sports law and IP specialists at the
San Juan conference: There is always a
new and more innovative action than the
previous one. It's a constant challenge
for lawyers to foresee and identify them.
A study by the Universidad Pompeu
Fabra law school, conducted by Jos
Pieiro Salguero and Antoni Rub Puig,
classifies these types of activities:
- Unauthorized use of tickets in a
promotional campaign.
- Acquisition of advertising rights on the
same television channel which is
broadcasting the sporting event right
before, right after or during the event.
- Coming up with advertisements on
dates close to a sporting event in which
well known athletes associated with the
event appear.
- Sponsorship of a national team or of
individual athletes.
- Sponsorship of the television channel
broadcasting the event.
- Publishing unofficial web pages of the
events or registering domain names
related to an event or athlete.
F i g h t i n g a g a i n s t
ambush marketing
For some, ambush
marketing is an illegal,
parasitic or unethical
activity; for others, it's
aggressive but legal
marketing since it involves paying the
royalties associated with advertising
agreements.
Despite this debate and possible future
legal rulings, there are a series of
mechanisms or actions that tend to fight
against ambush marketing from a legal
point of view.
The study conducted by the Universidad
Pompeu Fabra presents a series of
available remedies to fight against
ambush marketing. Those remedies
that stand out are provided for under the
unfair competition and advertising laws,
intellectual property law and, in common
law, under the law of passing off,
preventing a third party from benefitting
from the fame of a trade mark without any
type of contractual link or authorization.
One of the most common remedies for
fighting against ambush marketing is to
o p t i m i z e o f f i c i a l s p o n s o r s h i p
agreements. In this practice, the space that
can be used by competitors is reduced,
and clauses are included in agreements
whereby organizers of the sporting event
undertake to prevent ambush marketing.
In addi t ion , the organizers o f
international events consider that the
most effective method is self-regulation
and the implementation of a global
p rog ram o f t he
intellectual property
rights which they
hold and can only be
used by the official
s p o n s o r s . F o r
e x a m p l e , F I FA
established a Right
P r o t e c t i o n
Programme in 2006.
The first and last famous ambush
marketing acts
1984 Los Angeles Olympic Games.
On this occasion, Kodak launched a
series of advertising campaigns on the
market which suggested that Kodak was
the official sponsor of the Olympic
Games when they were not. Kodak
sponsored the television broadcast of the
games as well as the U.S. Track and Field
team, despite Fuji being the official
sponsor of the Olympic Games. Fuji
returned the favor or strategy a few years
later at the 1988 Seoul Games when
Kodak was the official sponsor.
2010 World Cup, South Africa.
At the Holland v Denmark match, during
the first half of the game photographers
and cameramen primarily focused their
attention on a group of 36 very attractive
blond female Dutch fans that constantly
cheered on their team. At half-time, 40
security guards, ordered by the FIFA,
forced the women to leave the stadium.
They were accused of unauthorized
advertising because by wearing the
orange outfit they were theoretically
sponsored by Bavaria beer. The official
World Cup beer, however, was
Budweiser.
How did these women differ from other
apparently similar groups, all dressed in
orange, when you could hardly read the
brand name on their outfit? The FIFA
authorities explained that If you knew
the advertising campaign that this brand
of beer has made in Holland, you would
have instantly recognized it. It was very
obvious. Take a look on YouTube and you
will quickly realize it. In the end, FIFA
dropped the charges
after reaching an
agreement with the
Bavaria Company.
46 www.marcasur.com
Events
IP WITH A SPORTING SPIRIT
2011 INTA-ASIPI CONFERENCE
A THREE DAY IMMERSION WAS ENOUGH TO BRING TOGETHER MORE
THAN 250 PARTICIPANTS, MAINLY LATIN AMERICANS BUT WITH AN
IMPORTANT AMERICAN AND EUROPEAN PRESENCE, TO THE
TRADEMARKS IN THE WORLD OF SPORTS AND ENTERTAINMENT
CONFERENCE. THE BUSINESS OF MAKING MONEY, ORGANIZED BY INTA
AND ASIPI, AND HELD IN THE BEAUTIFUL CITY OF SAN JUAN, PUERTO
RICO.
APRIL / JUNE 2 0 1 1 31www.marcasur.com
Friends, Manuel Pittaluga (Marcasur,
Uruguay), Martin Pittaluga (Pittaluga
Abogados, Uruguay), Francisco Espinosa
Bellido (Estudio Francisco Espinosa Belido,
Peru) and Jeff Snell (Charles River
Associates, USA)
Cocktail party. Sabrina Nakano and Eduardo Fonseca (Moffat & Co/ Macera & Jarzyna, Canada),
Todd A. Denys (Porzio, Bromberg & Newman, USA) and Robert Shepher (Porzio, Bromberg &
Newman, USA)
This conference was held on March
19th-21st at the Conrad Condado
Plaza Hotel. As its name suggests, it was
focused on the increasing impact and
involvement of intellectual property in
the world of sports and entertainment.
32 www.marcasur.com
Paradise. Joana Siqueira (Montaury Pimenta, Machado & Vieira de
Mello, Brazil), Magali Garca (Allende & Garca, Peru) and Virginia
Cervieri (Cervieri Monsuarez & Associates, Uruguay)Elegant stroll. Beatriz Ayala (Ayala & Lpez Abogados, Venezuela),
Maricruz Villanea (Ideas patents & trademarks, Costa Rica) and
Ana Isabel Messina (Biaggi & Messina, Dominican Republic)
From Central America, Mara Eugenia Garca (Jarquin-Garca,
Nicaragua) and Edy Portal (Portal & Asociados, El Salvador)
IP Veterans. Horacio Rangel-Ortiz (Rangel & Rangel, Mexico), Peter Siemsen
(Dannemann, Siemsen, Bigler & Ipanema Moreira, Brazil), Ramiro Moreno
Baldivieso (Moreno Baldivieso Attorneys at Law, Bolivia) and Santiago O'Connor
(Marjal, O'Farrell & Maizal, Argentina)
IP Rookies. Roberto Ledesma (EverythingTrademark.com, USA) and
Julian F. Wachinger (Rwzh Rechtsanwalte, Germany)
The academic sessions took place during
two full days, from nine in the morning
until six in the afternoon. They included
breaks for lunch and for having a coffee
with colleagues. The lecturers spoke on:
the increasing value of trademarks by
means of licensing, franchises and
sponsorships; the protection of peoples'
image rights as trademarks; copyrights
and advertising; and ambush marketing.
It's important to highlight the excellent
level of the Latin American, European
and American speakers. The presence of
Mark A. Roesler, Anthony V. Lupo, Axel
Nordemann, Alberto Guerra, Lorenzo
Litta, Ronald A. Crawford, Anna
Ostanina, Ricardo Antequera Parilli,
stood out among other renowned experts
on the topic.
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The Hoglund & Pamias firm of Puerto Rico put on an enjoyable cocktail party on Sunday afternoon at the San Juan Yacht Club. The firm's staff:
Jaime A. Lpez, Roberto J. Ros, Jean A. Hernandez, Nahomy C. Vlez, Aixa Y. Lpez, Aileen E. Vzquez and Samuel F. Pamias.
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The firm Guerrero-Noble, Prez-Orama & Guerrero-Caldern, put on an elegant reception at the La Concha A
Rennaissance Resort Hotel. The hosts, young Ricardo Prez Ortz, Vivian Ortz Ponce, Arturo Prez, Jorge Luis Guerrero,
Beln and Arturo Prez Orama.
The social events weren't missing from
the meeting. The welcoming reception
was held at the Conrad, as was the great
final event, which closed the conference
with dinner, music and dancing included.
The local firms Guerrero-Noble, Prez-
Orama & Guerrero-Caldern, Hoglund
& Pamias, P.S.C., and Ferraiuoli LLC,
held very entertaining receptions.
There wasn't much time to visit the city,
but a few hours were enough for those
present to delight in the beauty old San
Juan.
Caribbean spirit. Renzo Scavia (Scavia & Scavia, Peru), Sergio Ellman (Marval, O'Farrel &
Mairal, Argentina) and Paola Scavia (Scavia & Scavia, Peru).
Happy faces. Jacqueline Moreau (Torres, Plaz & Araujo
Abogados, Venezuela), Sylvia Ruiz (Ruiz-Skinner-Klee & Ruiz,
Guatemala) and Ileana Martinelli (Arias, Fabrega & Fabrega,
Panama)
Executive committee. Mara Pilar Troncoso (Troncoso & Cceres,
Dominican Republic) and Juan Vanrell (Bacot & Bacot, Uruguay).
35 www.marcasur.com
THE NEW GIANTS
talk aboutIP
BRIC IP FORUM (BIPF) RO DE JANEIRO
By Juan Pittaluga
Pleased to meet you. James W. Edmonson (Finnegan, Henderson, Farabow, Garrett & Dumner, USA) greets Zhonggi Zhou (CCPIT Patent and Trademark Law Office, China). Rana Gosain, of Daniel Advogados, introduces them.
C r i s t i a n e Vi a n n a (Daniel Advogados, Brazil), Sangeeta Savan and Neha Srivastava (Remfry & Sagar, India)
THE BRIC IP FORUM (BIPF) MET IN RIO DE JANEIRO FROM DECEMBER 2-4 OF LAST YEAR AT AN EVENT ORGANISED BY THE FIRM DANIEL ADVOGADOS.
BRIC is the abbreviation that identifies four giants, Brazil,
Russia, India and China. It was thought up in 2004 by Jim O'Neill, of Goldman Sachs. This economist understood they would surely be the four dominating powers in 2050, with 40% of the world's population and a GDP of around US$10 trillion.The group has nothing formal signed so it doesn't introduce itself as an o rg a n i z a t i o n . N e v e r t h e l e s s , conferences and forums of diverse activities are held with the BRIC acronym.
In 2008, the Indian office Remfry & Sagar, through its principal Dr. Vidya Sagar, thought it convenient that these four countries should talk about common IP-related topics. In order to do this he invited offices from the other three countries. Gorodissky & Partners, from Russia, Daniel Advogados, from Brazil and CCPIT Patent and Trademark Law Office, from China.The first meeting was held in India in 2008, with around 50 people present; the following year in Beijing with around 70 people present and from December 2-4, 2010 the meeting was in Rio de
APRIL / JUNE 2 0 1 1 36www.marcasur.com
Janeiro with more than 100 attendees.The event in Rio de Janeiro was organized by Daniel Advogados. The organisation stood out because of its efficiency and the kindness with which the attendees were welcomed. Dur ing the two days , intellectual property topics of
Wilfrido Fernndez (Zacaras & Fernndez, Paraguay), the hosts Denis Daniel, Alicia D. Shores and Vladia Daniel and Vidya Sagar (Remfry & Sagar, India).
Aleksey Zalesov (Sojuzpatent Ltd, Russia) and Richard Yi Li (CCPIT Patent & Trademark Office, China)
Richardo Richelet (Richelet & Richelet, Argentina), Crystal A. Gothard (Caterpillar Inc., USA), Alicia D. Shores (Daniel Advogados, Brazil), Humberto Pereira (Hasbro Latam)
Alexey Kratiuk (Gorodissky & Partners, Russia), Phil Wadsworth (Qualcomm Inc., USA)
37 www.marcasur.com
General view of the conference.
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The president of the National Institute of Intellectual Property (INPI, Brazil), Jorge vila, speaking at his conference on the role of an IP office in emerging countries.
Rodrigo Bonan de Aguiar and Ricardo Pinho of Daniel Advogados, together with some of the panellists of the Latin American IP Forum, Virginia Cervieri (Cervieri & Monsuarez, Uruguay), Rodrigo Marr (Makenna, Irarrzaval, Cuchacovich & Paz, Chile) and Ian Raisbeck (Raisbeck, Osman & Castro, Colombia)
Inaugural panel. Denis Daniel (Daniel Advogados, Brazil), Vladimir Biriulim (Gorodissky & Partners, Russia), Vidya Sagar (Remfry & Sagar, India) Zhonggi Zhou (CCPIT Patent and Trademark Law Office , China, Rana Gossain (Daniel Advogados, Brazil).
interest for the four countries and a lot of valuable information were exchanged. Brazilian IP professionals and IP authorities were there, which allowed for dialogue as fluid as it was interesting.Without a doubt, it was a novel initiative that will serve first to learn about the advantages and disadvantages of the different practices of each one of these four countries that are gaining increasing importance in the global economy, to later try and coordinate an IP legislation between them.This forum isn't solely limited to nationals or professionals from these four countries. In fact, it is open to the rest of the countries that would like to learn more about IP practices in the BRIC. For the event in Rio de Janeiro, Daniel Advogados invited different professionals from Latin America and the United States to participate. In short, we attended an interesting experience that we hope will continue to assert itself in the international IP world and we suggest to readers that they go to Moscow next year.For our part, we would like to thank the friendliness with which we were treated at all times by the Daniel Advogados team, starting with the main partner Denis Allan Daniel and his wife Vladia Daniel.
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The Halting of Free Circulation of Counterfeit Brand Good s in Mexico
opinion
Carlos HenndezBecerril, Coca & Becerril, S.C.
The Intellectual Property Law (IPL) and the Customs Law in Mexico have established an administration procedure to avoid the introduction of counterfeit goods detected by customs into Mexican territory.With this procedure the owner of a registered trademark can request that the Mexican Institute of Intellectual Property (MIIP) order the halt of the free circulation of these foreign goods covered under a counterfeit trademark.The owner of the trademark must file a brief which meets the established requirements of the mentioned laws. The MIIP will then order the Customs authorities to halt the free circulation of this foreign counterfeit merchandise by means of an official communication which establishes the presumption that said merchandise is in violation of Intellectual Property (IP) rights.Since Customs has halted the circulation, the owner of the trademark in Mexico must file a legal infringement action before the MIIP against the importer of the counterfeit goods. In not doing so, the seized foreign merchandise would be released and the owner of the trademark would be liable for any damages sustained by the importer by having halted the circulation of the imported goods.When the owner of the trademark files this infringement action against the importer in due time and form, and the MIIP allows it, the Institute will notify the importer of its existence in order for him to reply. The MIIP will then grant both parties a period to file their final a rg u m e n t s b e f o r e i s s u i n g t h e corresponding decision, whether it be finding that the importer infringed the trademark owner's IP rights, levying against him the penalizations provided for under the IPL, which may range
from a fine or administrative detention to shutting down the infringer's business, or ruling that there is no infringement.This procedure was in disuse because of the ill-timed issuing of the admission of the request for halting the free circulation of foreign counterfeit goods by the MIIP due to a considerable delay in proceedings. Consequently, the affected owners opted to file a legal action before the Office of the Federal Attorney General (PGR).However, it is only possible to file these actions before the PGR against goods which reproducing an identical trademark. Using the administrative proceeding mentioned above it is possible, on the other hand, for the owner of the trademark to halt the free circulation of goods reproducing either an identical trademark or a similar trademark which leads to confusion. This is a great advantage in comparison with the penal action submitted before the PGR. As of three years ago until today, the MIIP has substantially improved its systems and is swift in allowing a request for halting the free circulation of foreign counterfeit goods. Thus, the owners of trademarks who are the victims of infringement have since then frequently used this administrative procedure. These facts have made it one of the most effective legal solutions in Mexico to fight against the importation of counterfeit goods.
Carlos [email protected] Hernndez is a lawyer. He has a specialization and Master's Degree in International Law and a specialization in Intellectual Property Rights. He is a member of the AMPPI. He joined the firm in 2005 and has published articles in different mediums. As Head of the Department of Contentious Affairs of Becerril, Coca & Becerril, S.C, Carlos centers his practice on trademark, patent, copyright and piracy litigation, and on annulment and appeal trials.
68 www.marcasur.com
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Pirates, plantations, ron and reggaeand what about intellectual property?
opinion
Gabriela BoddenE-proint
The modern Caribbean has an identity molded by European traditions. In terms of intellectual property we have slowly seen changes. Certain countries have adopted updated intellectual property laws, while others still have an extremely outdated legislation. All of them have amazing beaches, rum and reggae, in common, but where does intellectual property and its protection lie? The world's border customs offices face the same dilemma: the enormous volume of imported and exported goods through international trade. Commercial agents trust that the border customs authorities actually process their requests swiftly and at the same time apply the law rigorously in terms of protecting their interests and safeguarding the citizens' health. The holders of these rights in turn wish that border customs officers have sufficient IP knowledge.Customs is the first authority to come into contact with the goods, so knowledge in intellectual property is vital in customs officers to prevent the violation of intellectual property rights before putting the goods into circulation on the national market. The implementation of measures at the border and the seizure of pirated and counterfeit goods are possible in countries such as Barbados, Jamaica, Trinidad, Dominican Republic and Cuba, where the progress in intellectual property and its relationship with customs have developed enormously. However, the rest of the Caribbean countries are far from seeing the light, since proof of infringement is required in many cases before customs can take any action and, by the time this happens, the goods have already been nationally distributed.Customs officers in most countries generally lack understanding in IP issues and in most Caribbean countries, the international classification of goods established by the World Customs Organization is not applied. In Aruba, Curacao, Dutch Caribbean, Saint Maarten and Jamaica there is no customs trademark register (as there is in the vast majority of Caribbean islands); nevertheless, customs authorities are ready to take action if they
have been previously notified of the arrival of counterfeit goods.The lack of a customs register of trademark owners, which would allow customs officers to be more vigilant when inspecting imports and correctly discerning if the goods are originals or counterfeit, is detrimental to protection in the Caribbean.The option of an intellectual property customs register should be an option for those holders of rights wishing to obtain extra protection and for which they should pay a respective fee to customs authorities. Said IP register should be implemented in the Caribbean, since it would be very useful in order to identify the owners or distributors of certain goods. The latter would be a basic tool for adopting border measures favoring the intellectual property rights holder, such as for halting of the act infringing intellectual property rights: the importation of counterfeit goods, understood as being any type of merchandise consisting of a mere reproduction of the sign, eliminating a part or one of its elements or modifying any of the graphic or word elements; or for the importation of pirated merchandise which are detrimental to owners' rights, i.e., copies made without the consent of the owner or person authorized by them, in the country of production.
Gabriela Bodden works in E-proint's International Intellectual Property Department, primarily focusing on trademark, copyright and patent issues, and on IP-related legal disputes. She has extensive experience in managing complex intellectual property portfolios in Latin America and the Caribbean covering topics such as trademark background searches, trademark applications, the maintenance of trademark registrations, legal advice in IP-related contracts; advising in piracy issues and related strategies. Her e-mail address is [email protected]
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The Community Patent and the discrimination of Spanish
You have the floor
Pepe Isern Jara
Pepe Isern JaraDate and place of birth:Barcelona May 14, 1973Nationality: SpanishProfession:Intellectual Property LawyerAcademic background:Bachelor of Laws and Attorney.
With France and Germany at the forefront, a group of European Union
countries has started proceedings to create a community patent where the only recognized languages are English, German and French by way of the reinforced cooperation system (a system used so that a group of countries can move forward with an issue without counting on the rest), discriminating against Spain and the Spanish language.The European Commission wants a competitive and economical community patent system to compete with the United States and Japan, so Spain suggested only the use of English, something which neither France nor Germany have accepted, obliging everyone to translate patents into French and German.Agreeing with the industry, I'm in favor of having a Community Patent that allows companies to unify the application and registration system under one title reducing translation and maintenance costs. However, having ruled out an English only system, Spain should not enter into the Community Patent if Spanish (and Spanish companies) is not given the same rights as German and French.Both the PSOE and PP (the two major political parties in Spain) agree on this subject and refuse to accept the entry into the Community Patent System imposed by the French-German axis. This will not, however, hinder Spanish companies from filing patents within this system and being guaranteed equal conditions and protection.Is it not logical that a valid patent in Spain should not be translated because it involves a larger increase in costs regard-
ing time, R&D, and translations than the current ones to the Spanish companies in order to access the more relevant technological information that affect them and which is intended to take legal effect in Spain. These costs will increase y e a r l y a s t h e t e c h n o l o g i c a l documentation also increases. We must not forget that there is a clear relationship between competitiveness and the level of technology of a country and the capacity of its productive structures to access and quickly and efficiently analyze the technological information. Another important point is that the only legally valid texts will be those of these three languages and Spanish companies will have to rely on lawyers located in said countries, with the additional legal and opportunity costs that it entails.If there are already foreign companies threatening Spanish companies with infringing a valid patent concealing the fact that there are pending appeals in the EPO and amended versions, in the event that Spanish is not accepted as a language for the Community Patent the whole scenario will become even darker and it will be even easier to make fun of the mil-
lions of small and medium sized Spanish enterprises under the threat of high legal costs that this system will mean for them.Summing up, accepting a Community Patent System where Spanish is not recognized as a technological and legal language of disclosure would mean further distancing our country from the leaders of Europe in terms of competitiveness, erode the interests of Spanish speaking countries, as well as lose influence and international political presence, since Spanish is spoken by more than 450 million people. We cannot afford to be disrespected like that.
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SEAMUSIC &
MARCASUR PRESENTS TWO LAWYERS WITH INFECTIOUS ENTHUSIASM AND AN AMBITIOUS PLAN IN THEIR SPARE TIME.
Lawyers in their spare time
Roberto Romero Pineda, from El Salvador, was born on a "5 april.com", according to what he tells Marcasur. Lawyer and notary. Partner at Romero Pineda Abogados from El Salvador. This picture takes place during the concert of the release of his third CD, La ltima piedra, on the occasion of celebrating 30 years of the firm's founding at the Marte Museum.
Miguel Bernardo O'Farrell, Argentine, 71. Lawyer and industrial property agent.
Partner at Marval, O'Farrell & Mairal of Argentina. In this picture he is doing a warm-up before competing in the Club
Nautico de San Isidro.
Swimming and nothing else. Miguel O'Farrell is part of a select team of swimmers at the Jockey Club of Buenos Aires, called Los Inefables. The first time he was conscious of his potential as a swimmer, although he did not state this out of modesty, was in 2009 when Alex Freeland, captain of Los Inefables, offered him going to Velez Sarsfield to compete in the category of promotional at 50 meters in freestyle and breast. "My debut could not have been more disastrous, because in the first one I lost my balance and plunged ahead of time, whereupon I was disqualified! However, to the surprise of all and me in particular, I won the second, which involved much younger swimmers.
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They are the champions. Miguel (the first standing left) and the Los Inefables team of the Jockey Club of Buenos Aires.
In this light, Los Inefables told me to go federate, to which I agreed meekly", he recalls. A sporting competition is always interesting. After that background, the swimming competition continued with a vengeance. The first was as federated in the Buenos Aires Metropol i tan Championship at the Club Atletico Independiente, where he won the 100 freestyle in the 70-year-olds' category with a time of 1'33. "I was all but catapulted by Los Inefables to participate in many other competitions and have not stopped", he admits.He remembers having competed in the river Areco in San Antonio de Areco: "At the start I had to swim with my heart and soul to get away from the kicks and slaps of the two hundred or more swimmers, until at one point I was without air and I thought I would drown there in the dark waters of the river, but fortunately I started swimming on my back till the end". Perhaps the most audacious one was the race in Mar del Plata, in February 2010: he swam from Playa Varese to Playa Grande, 2.5 km! Summing up, he remembers that since childhood he liked to swim in the sea and swimming pools, and even competed in an intercollegiate event when he was in high school in St. George's College in Quilmes, Buenos Aires. "Over time and after leaving other sports like rugby and soccer, I began to swim in the pool of the Buenos Aires Jockey Club, simply as an exercise and as they say, "to feel good".He tries doing it every day, at least half an hour, under the direction of Professor Diego Tricarico in the indoor pool at the Jockey Club, on Avenida Alvear and Cerrito. The styles that he likes are freestyle, chest and back, "and now I'm
practicing butterfly, because I want to compete in combined races", he adds. "As training is often hard and I find pools monotonous, I bring someone special to each swim (spouse, children, friends or whatever), so that it becomes more bearable and I have the feeling of making better time". He adds: "because swimming makes you feel good, it has a positive influence on all our activities, including our profession". Which is a lot.In the last Argentinean Masters Swimming Championship, he won three of six races came second in the other three.
The music inside. Some friends tell him: "I wonder if you will be remembered as a good lawyer or as a singer". The fact is that Roberto Romero Pineda has divided his life between the practice of the law and singing. "I am an amateur, someone who enjoys singing, a hobby", he tells Marcasur.His interest in music began in high school when he easily remembered the lyrics and music of the songs. Later, at Law School, "a schoolmate kept his guitar in the trunk of the car and we used to serenade our girlfriends", he recalls wistfully.Since then, "I carry the music inside, my mind flies and I feel very well", he says. He is second tenor and through vocal exercises, which include musical scales, emission of vowels, consonants and breathing exercises, he works his voice. "This requires hard work and dedication", he adds. Before each concert he warms up his voice. "It is very important to be relaxed, not eating a heavy meal an hour before each concert, or drinking lots of water", he says.The romantic ballads and Mexican music
are his favorites, especially the boleros rancheros accompanied by mariachi. He likes the songs of Vicente and Alejandro Fernandez, Luis Miguel, Pepe Aguilar, Julio Iglesias and others. For twenty years he has been in a guitar group led by Professor Eduardo Ponce. Every four months they give a show, and in December a farewell one. Dressed in their best, they interpret many dif
