Latin America
General Aspects
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Region Latin America
• Sub- regions:
o
o
o
o
North America
Central America
Caribbean
South America
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Latin America
Trademark Issues
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Particularities of Latin America
TM law and procedures
One trademark application per jurisdiction
(Exception: Madrid System: One application filing, through a local or regional
PTO. Members: Cuba, Colombia and Mexico).
First –to – file – system
Attribute system vs. Prior use
Principle of territoriality
Exceptions:
a)
b)
Well- know trademarks
Trade agreements (Subregional Integration Agreement, Cartagena
Agreement: Decision 486)
c)
Other international treaties (Pan American or Washington Convention:
CO, CU, GT, HT, HN, NI, PA, PE, US. )
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Principle of territoriality
Exception: Well-known TM
•
Paris Convention
 Rights of priority (art. 4, six
months
for
trademarks).
Exception: Puerto Rico.
 Art. 6 bis, well-known trademarks.
•
TRIPS Agreement
 Art.16:
Application
mutandis to:
a)
b)
mutatis
services,
Connectionbetween
goods/services.
 All the countries of the region are
members of both agreements.
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Principle of territoriality
Exception: Andean Community (AC)
• Trade agreements: Decision 486
•
Bolivia, Colombia, Ecuador and Peru
• Andean Opposition (art. 147):
owner of a TM in a single
country of the AC can oppose to
a TM application in any other
country of the AC.
• Andean Use (art. 165):
It is possible to claim the use of
a TM in one country of the AC
against a third party pursuing a
cancellation action in a different
country of the AC.
• Well-known trademarks:
art. 224 and 134 h.
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Trademark procedure
Filing an
application with the
local PTO
Administrative/ Judicial procedures
to adjudicate
oppositions
Formal examination
Publication for
opposition
purposes
(except MX)
Substantive examination
(ARG: mediation
procedure)
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Publication of the
registration
Use requirements
Resumption of TM use before the
filing of a cancellation claim will
keep the TM in force
Use made by
authorized third
parties benefit TM owner
Non‐use TMS are «in force» until
declared invalid
Extent of use :1) Effective
local use; 2) Manufacturing
for exportation; 3) Mere
transit
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The main requirement for canceling a mark is the lapse of a particular period of time
Public
domain
Trademark
Law
• Signs that are ineligible for, or excluded from,
trademark protection.
• Forms of using trademarked signs that remain
unaffected by the exclusive rights of the
trademark owner
• Signs excluded from registration and protection
as trademarks,
• Signs which lack of distinctiveness,
• Limits to the use of the protected sign.
• Direct relationship with the goods or services
Generic or
descriptive
terms
to which the sign is or will be applied to
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Latin America
Regulatory Issues
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Latin America
No Harmonization
Group 1
Group 2
Brand drugs
Innovative
or original
drugs
Generic
drugs
Similar
drugs
Generic
drugs
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Group 1
Branded drugs
• Identified by brand names
Generic drugs
• Using INN-DCI recommended by
WHO
or any
other
nonpropietary names defined by the
country
or
recognized
internationally
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Group 2
Innovative or original drugs
• Generally distinguished by brand
names.
Similar drugs/copies
• Pharmaceutically equivalent to
the proprietary product.
• Labelled by brand names or INN.
Generic drugs
• Products that have been proven
to be therapeutically equivalent
and interchangeable with the
proprietary drug.
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Drug Prescribing
Use of INN is compulsory ?
Private
sector
Public
sector
Principle:
YES
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AR, BO, PA,
PE, PY, UY
Substitution
1 ) BR: Not for similar drugs.
2 ) Not mandatory
AR, BO, CR, CO, EC, PE, UY;
(CH: At the discretion of the patient
and pharmacist) ,
Generics/
Prescribe medicine
similar drugs
3 ) Mandatory
4 ) MX, BR, PA.
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Descriptive signs vs. evocative or suggestive signs
AR/BR/MX :
Evocative/suggestive
signs: Considered “weak
TMs”,
but
registrable
(contains elements that
gives them a fanciful
nature, to some degree).
PY :
It
cannot
be
registered
as
trademarks
for
pharmaceutical
specialties, generic names of active
principles.
If
a
medicinal
specialty
is
distinguished by a TM or fancy
name, same cannot be confusingly
similar with a generic name or
induce to errors regarding the
therapeutic properties or the nature
of
the
proprietary
medicinal
product. Law 1119, Paraguay
ARG: “Lab. Bagó SA c/ Sanofi Synthelabo Cease of TM Opposition” (File N°
1817/2001). Federal Civil and Commercial Chamber, Tribunal II, August 23, 2005 FENDIPRAZOL
“Lab. Northia SACIFIA vs Synthelabo ref. Cease of TM Opposition” (File N° 1589/2000).
Federal Civil and Commercial Chamber, Tribunal II, April 28, 2005 – GASPRIDE
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MERCOSUR
Full Member
Associate Member
Accessing Member (2012)
Estela de Luca
Mercosur
The proposed
trademark is
evaluated by each
Health Authority
Resolution
GMC
N°
23/95.
Medicines must be distinguished
by the proposed commercial
designation and the name of the
active substance according the
International Common Designation
–DCI-“.
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Resolution
GMC
N°
55/96.
Trademark is understood as a
name that, in contraposition with
common
generic
name,
distinguishes
one
certain
medicine, under the property or
exclusive use of laboratory and is
by law for a specified period of
time”.
Mercosur
No general
Resolution GMC N° 54/96
(Validity, modification, renewal and cancellation of the
pharmaceutical products registry).
guideline /
Establishes different criteria for commercial designations:
principles
a) The name tend to be in accordance with the WHO recommendations
b) Use the name INN or the Portuguese version (DCB).
referring
to the
connection
between
TM and
INN.
c) The generic name must be added with the name of the laboratory.
d) Commercial designation should not suggest therapeutic application
e) If trademark issues arise, the marketing of a same product may be done
with a different commercial designation or trademark in each of the
countries.
f) The commercial designation must not induce to mistakes. Particularly: a)
The name must not be misleading, such as lead to assume the presence of
an active component not present in the formula, b) be similar to the name
of another product with different therapeutic indication, c) be similar to
another product with the same therapeutic indication, which has different
active ingredients.
Estela de Luca
Estela Mariel De Luca.
IP Consulting.
[email protected]