ASIPI/ECTA SEMINAR INTERNATIONAL TREATIES HOW DO THEY IMPACT TRADEMARK PROTECTION IN THE AMERICAS THE DR CAFTA CASE AND THE ASSOCIATION TREATY WITH EUROPE- MARCO A. PALACIOS mapalacios@sercomi.com.gt Barcelona, June 15, 2010
TRADEMARKS AND TRADE: LINKED AND INTERDEPENDENT INTERNATIONAL TRADE RELATIONS INCREASED BUSINESS OPPORTUNITIES TRADEMARKS AN ESSENTIAL ELEMENT TO PARTICIPATE IN THE EXPANDED MARKETS
AN OVERVIEW OF THE CENTRAL AMERICAN INTEGRATION PROCESS AND TRADE AGREEMENTS OF THE REGION WITH THIRD PARTIES
CENTRAL AMERICA: FREE TRADE AGREEMENTS IN PLACE MEXICO (all C.A. countries) DOMINICAN REPUBLIC (all C.A. countries) PANAMA (all C.A. countries) CHILE (CR, SV, GT, HN; NI in the process of approval) CANADA (Costa Rica; CA4 negotiations in progress) UNITED STATES -DR- CAFTA- (USA + CA + DR) SV: El Salvador CR: Costa Rica GT: Guatemala HN: Honduras NI: Nicaragua DR: Dominican Republic
CENTRAL AMERICA: FREE TRADE AGREEMENTS IN PLACE COLOMBIA (GT, SV, HN) CARICOM (CR) (GT,SV,HN, NI have agreed to initiate negotiations) TAIWAN (SV, GT, HN, NI) CHINA (CR, pending approval) SINGAPUR (CR, pendingof approval) EUROPEAN UNION: ASSOCIATION TREATY (Negotiation in progress April 2010-)
CENTRAL AMERICA INTRA REGIONAL TRADE DEVELOPMENT 1960-2009 7000 6000 EXPORTS AMONG THE C.A. COUNTRIES US$ 6,461.2 millions US$ 5,234.7 millions 5000 S US $ MILLION 4000 3000 2000 1000 US$ 30.3 millions US$ 1,129.2129 2 millions 0 19 19 19 19 19 19 19 19 20 20 20 60 65 70 75 80 85 90 95 00 05 09 Source: SIECA
INTRARREGIONAL TRADE GROWTH 2000-2009 2009 US$ MIL LLIONS 6,000 5,000 4,000 3,000 2,000 1,000 VALUE OF INTRAREGIONAL TRADE US $ MILLIONS 2000 2009 2,317 5,235 + US $ 2,918 Annual Growth Rate 2000 2009 8.0 % Source: SIECA
CENTRAL AMERICA STRUCTURE OF EXPORTS BY DESTINATION -2009- Estimated values at December 2009. Source: SIECA
HOW DO TRADE AGREEMENTS HAVE IMPACTEDTRADEMARK TRADEMARK DEVELOPMENTS INC.A.? A? TREATIES BECAME: A TIMELY MEANS THAT POSITIVELY SUPPORTED THE DEVELOPMENT OF INTELLECTUAL PROPERTY IN THE REGION, INTRODUCING MODERN TENDENCIES AND UPGRADING EXISTING LEGISLATION A MEANS TO CALL THE ATTENTION OF THE C.A. GOVERNMENTS TO CONCERNS THAT GO BEYOND PRIVATE RIGHTS, SUCH AS HEALTH AND SAFETY (I.E. THE PROBLEMS OF COUNTERFEITED PRODUCTS)
HOW DO TRADE AGREEMENTS IMPACTED TRADEMARK DEVELOPMENTS INC C.A.? A? TREATIES BECAME: A MEANS TO CALL THE ATTENTION OF DIFFERENT SECTORS, IN PARTICULAR THE GOVERNMENTS, TO UNDERSTAND IP AS AN INSTRUMENT FOR DEVELOPMENT AND A VALUE GENERATOR THAT ADDS TO ECONOMIC GROWTH.
TRADE TREATIES A ROAD TOWARDS THE UNDERSTANDING OF IP BENEFITS HOW WAS/IS IP PERCEIVED? Treaties that linked IP have favored the de mystification of IP and opened doors for CA C.A. countries to see it as a useful tool to enhance a development agenda and a value generator BURDEN / IMPOSSED COMMITMENT At certain stages, there is still a view that IP is an interest of developed countries that becomes a heavy burden for developing ones OPPORTUNITY / TOOL
TRADE TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? Implementing Legislation and Self Execution Although the C.A. countries Constitutions acknowledge treaties as self executable regarding in particular those provisions that are clearly defining substantive rights and obligations, the IP provisions in trade treaties have been subject to Implementing Legislation. Both the TRIPs Agremeent and Chapter 15 of the DR CAFTA (USA) Trade Agremeent, were subject to Implementin Legislation, however, the agreements may be self executed in those areas not covered by such legislation when referring to specific rights or matter for which the Agreement didn t condition the need for implementing legislation (i.e. certain definitions, certainterms ofprotection)
TRADE TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? TRIPs AGREEMENT Introduced renovation and update of IP (trademarks included) in the C.A. countries. Its implementation, unfortunately, resulted in substitution of a common trademark legislation regime (the Central American Covenant for Industrial Property Protection) by country per country Trademark laws. Motivated the return of certain countries to the Paris Agreement and the interest of adhering to other WIPO treaties. Motivated a strengthening of the enforcement provisions and institutions regarding IP (i.e. introduction of public action against counterfeit and establishment of IP Prosecutor units) Introduced more concrete focus on GIs vis a vis TM and Appellation of Origin systems.
TRADE TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? DR CAFTA (USA) Type of TMs under protection: introduced an expansion of trademarks, at minimun to include sound, collectiveand certification marks. However, althoughthe agreement didn t introduce a definition; the description of what could be a TM resulted in the elimination of the visibly perceptive requirement, thus allowing for protection of other type of marks (ie. Sound, Olfactory and other non traditional marks). However, in some C.A. countries, Imp. Legis. calls for the trademark to be subject to graphic description, which may result in registrability limitation in the case of olfactory and other trademarks.
TRADE TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? DR CAFTA (USA) Well Known Marks: introduced the relevant segment analysis for the protection of well known marks and introduced the concept of levels of knowlege of trademarks by public. Domain Names: calls for mechanisms to settle trademark domain name disputes before the local NIC Administrator(UDRP) and calls for the establishment of a Whois Database to be accesible online. Trademark Licenses: Eliminated registration of license before the Offc as a validity requirement to enforce the license before any Third party.
TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? DR CAFTA (USA) List of Products and Services Publication: as a result of the implementation, certain legislations introduced the obligation to publish an edict with the detail of all products/services to be covered, which in one country resulted in a substantive increase of the publication cost. Border Measures: calls for ex officio border measures; however, not all implementing legislations covered it appropriately, calling for customs authorities to file petition to act before a judge prior to suspend an import based on presumed counterfeit reasons
TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? DR CAFTA (USA) Adhering to Trademark Treaties: the DR CAFTA obliges countries to become members to the Trademark Law Treaty and calls for countries to make their best efforts to adhere to the Madrid Protocol. Referring to the enforcement of provisions in certain Treaties: Binds Parties to observe Art. 6 bis of the Paris Agreement (re.15.2.5); introduces reference to the application of Art. 20 of the TRIPs Agreement (re. 15.2.2)
TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? DR CAFTA (USA) Improvement of Registration Procedures; Capacity Building and E filing: the Agreement calls for the implementation ti of more efficient registration systems and of an e filing system whether hth possible. Two different systems of protection converge regarding Gls Calls for the protection of pre existing trademarks (in use) registered trademarks or in process of registration before GIs that may seek protection when those GIs are confusingly similar to the trademark. Reputation and Quality are introduced as concepts to be met by a GI.
TREATIES AND TRADEMARKS IN C. A. WHAT CHANGES HAVE THESE AGREEMENTS BROUGHT IN? ASSOCIATION TREATY WITH EUROPE This agreement to be, at the time of the elaboration of this presentation is currently in negotiation; for the date of the ECTA ASIPI seminar, it is expected tdto have been concluded. d One major subject regarding the IP negotiation is Geographical Indications. Europe proposed a sort of sui generis, expedite procedure for the acknowledgement of a list of Gis of its interest. Central America has not agreed to the proposal, in particular because it will bind it under de MFN principle of the TRIPs agreement before other WTO members. No agreement has yet been reached on this matter.
THANK YOU Marco Antonio Palacios E-mail: mapalacios@sercomi.com.gt Web site: www.sercomi.com.gt GUATEMALA, GUATEMALA CENTRAL AMERICA