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Graciela Pérez de Inzaurraga HAUSHEER BELGRANO & FERNANDEZ Buenos Aires - Argentina Enforcement of IP rights at borders A Latin American perspective Hyderabad.

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Presentation on theme: "Graciela Pérez de Inzaurraga HAUSHEER BELGRANO & FERNANDEZ Buenos Aires - Argentina Enforcement of IP rights at borders A Latin American perspective Hyderabad."— Presentation transcript:

1 Graciela Pérez de Inzaurraga HAUSHEER BELGRANO & FERNANDEZ Buenos Aires - Argentina Enforcement of IP rights at borders A Latin American perspective Hyderabad – India October 2011

2 Legal framework Almost all LA countries * joined TRIPs Agreement (1995-1997) Obligation to provide procedures to enable right holders to suspend release into free circulation of imported counterfeit trademark or pirated copyright goods Optional extension of such procedures to: infringement of other intellectual property rights suspension of release of goods destined for exportation allow for ex-officio intervention Essential guidelines (52-60 Trips) : prima facie evidence of infringement security to protect defendant and prevent abuse compensation (indemnification) to importer or owner of goods in case of wrongful detention prompt notification of suspension to right holder and importer supension contingent to initiation of infringement action or to the grant of provisional measures (within 10 days from notice of suspension served upon right holder) right of inspection and information *Bermuda still an observer

3 l Regional agreements Protocol for Harmonization of IP Rules (Mercosur), 1995 commitment to adopt effective measures against production (commerce) of pirated and counterfeit goods (art. 22) Cartagena Agreement, Decision 486, 2000 border measures (art. 250) Free trade agreements/Trade promotion agreements, such as NAFTA (Canada, Mexico and USA), 1994, art. 1718 CAFTA (Central America, Dominican Republic and USA), 2006, Chapter XV, art. 15.11.20-25 G-3 (Colombia, Mexico and Venezuela), 1994, Chapter XVIII, Section E, arts. 32-33 Chile-USA, 2004, Chapter 17, Section 11, arts. 17-21 Peru-USA, 2006, Chapter 16, Section 11, arts. 20-25 Local laws/rules IP laws (e.g., Brazil, art. 198 IP law, Panama, arts. 176/177 IP law) Custom codes (most countries in the region) Criminal laws (import/export counterfeit-fake-pirated goods akin to smuggling) Customs rules Ex-officio intervention Recordal of trademarks with Customs (watch/alert systems) Interrelation with Trademark Offices Legal framework

4 Evolution Initial stage Application of provisional measures foreseen in IP or procedural laws to enforce IP rights at borders Straightforward application of TRIPs provisions? Argentina: S.C. Johnson vs. Clorox, Federal Court for Civil and Comm. Matters, Section II, 30/04/98 (art. 50 TRIPs) Current status Local laws/rules adapted to comply with TRIPs standards «Work in progress» Evolving administrative practices and criteria Few court decisions, not sufficient to establish criteria Debated issues:  Extension of border measures to IP rights other than trademarks or copyrights  Determination of infringement in case of goods destined for exportation  Goods in transit

5 Overview: availability All region: Border measures available against counterfeit trademarked goods  trademark should be registered  measures extend to confusingly similar trademarks pirated copyright goods Bolivia, Mexico and Venezuela: Border measures also available in respect of other IP rights significant difficulties to determine scope of rights and establish potential infringement  assistance from experts  training of Custom officers Argentina: Custom rules provide basis which extend the scope of measures: Unlabelled or unmarked goods (DGA NE 21/2007)  unmarked goods, to which a mark is to be affixed once the goods enter the local market: importer should provide address of premises where marking shall take place  unmarked goods, to which no mark is to be affixed: Customs provide information to authorities which monitor compliance with lawful commercial practices (Dirección de Lealtad Comercial) Designs (DGA NE 45/2009)  Owner of registered design may request to attend verification of suspected goods

6 Customs take action upon request filed by owner of IP rights  with Customs (Argentina, Brazil, Colombia, Panama, Paraguay, Peru, Venezuela)  with Courts (Argentina, Chile, Colombia, Panama)  with Trademark Office (Bolivia, Mexico) ex-officio, as a result of verification against registry of trademarks with Customs Argentina, Brazil, Paraguay, Peru, Uruguay ex-officio (irrespective of registration of trademarks with Customs ) Argentina, Brazil, Chile, Ecuador, Panama, Venezuela  Customs work in coordination with local Trademark Office to verify existence, extension and ownership of the rights suspected to be infringed Notification and response suspension informed both to owner of IP right and importer/exporter/holder/owner of goods information on suspected merchandise available to both parties deadline for owner of IP right to:  verify merchandise and provide information or evidence to support suspension  lodge civil or criminal proceedings  post security or bond (Colombia, Mexico, Panama, Peru ) Continuation of suspension or release of merchandise suspension pending until ruling on infringement from relevant authority: few countries allow release of merchandise upon security posted by importer/exporter destruction of merchandise liability in case of wrongful suspension: compensation to importer/exporter Overview: proceedings

7 The system today Specialized IP fraud departments at Customs:  increasing commitment to combat counterfeiting and piracy  most suspensions result from routine controls by Customs (ex–officio action) tax/regulatory issues control policies/strategies based on experience lack of thorough knowledge of IP law o scope of IP rights: specialty – territoriality o determination of infringement: obvious vs. non obvious infringement Release of goods suspended by Argentine Customs (main categories, in terms of estimated value)

8 Different scenarios… FAKES PIRATED FAKES PIRATED

9 Look-alikes Replicas Different scenarios… USES BEYOND REGISTRATION

10 IN transit Different scenarios… FOR EXPORT

11 IP owners still not frequent users of the system  limited number of trademarks registered with Customs Argentina: 350 marks  lack of relevant information provided to Customs to aid in sorting out fakes from genuine goods and in devising better control strategies (determination of the nature and features of goods, authorized importers/exporters, usual commercial routes)  lack of responsiveness  abuses and misuses Bureaucracy complicates proceedings after suspension  difficulties for owner of IP rights to obtain information on the whereabouts of the goods  difficulties for the owner of the goods to reverse suspension if wrongful Few Court decisions on the most conflicting issues: more questions than answers  Pampas del Sur case: goods destined for exportation (Argentina)  Oviedo case: goods in transit (Argentina) The system today

12 Goods destined for exportation Basic facts: goods (wines) manufactured in Argentina goods exported to foreign countries (never sold in Argentina) trademark on the goods owned by a third party in Argentina owner of trademark records its mark with Customs and requests suspension of release of the goods for exportation customs action appealed by manufacturer/exporter Courts allowed exportation (preliminary measure to maintain statu quo)  previous unchallenged exportation of the same goods for several years owner of trademark appealed preliminary measure (pending decision) Key question: Does use of a third party’s mark on goods destined for exportation (only) amount to infringement?  What constitutes «use» of a mark?  What constitutes use of a mark «in commerce»?  Any act of commercialization  Availability of the goods to local consumers  Do different standards apply when defining «use»?  as required to maintain trademark rights  as basis to determine infringement Case law: broad interpretation of «use» To be continued…

13 Basic facts: counterfeit goods (toys) in transit from Uruguay to Paraguay (not to be sold in Argentina) unlawful declaration on the value of the goods ex-officio suspension of release of goods by Argentine Customs owner of IP rights reported the goods as counterfeit release of goods banned Cassation Court decision quashed Appellate Court ruling which had revoked suspension in re Raul Oviedo S.R.L. on cassation appeal, Argentina, case 11915, Criminal Cassation Court, Section III, June 9, 2010 Rationale of the final decision: transit constitutes importation to the country according to Argentine Customs Code  entrance of any merchandise to the territory where Argentine tax and import/export rules apply  «transit» not equivalent to exception applicable to «free trade zone» or other statutory exceptions Importation (also exportation) of goods bearing counterfeit trademarks is banned (art. 46, law 25986, amended by law 26458)  absolute prohibition  no distinction as to the destination or nature of the importation  irrespective of whether transportation falls under the provisions of the Intl. Agreement on Transportation by Land (allows control of merchandise by border customs and application of sanctions in case of infringments to customs rules)  amounts to a crime (smuggling) under the Customs Code social and economic welfare cannot be achieved by tolerating counterfeiting  unlawful practices should not be tolerated to the purpose of improving development of the region  International free trade agreements are not meant to impair the ability of the countries to prevent and punish crime  commitment to foster efficient protection to IP rights by adopting measures to enforce such rights without interfering with legitimate trade (as foreseen in TRIPs)  protection to consumers against deception Goods in transit

14 The future of the system Clearer rules  sort out different situations  proceedings after suspension: transparency and traceability Customs key role  training of Customs officers  swift communication within the different offices in a country and with foreign offices  swift communication with Trademark Offices Proactive cooperation from owners of IP rights  prompt response to Customs enquiries  provision of relevant information and technical assistance Fair balance: IP rights vis-à-vis freedom of trade  Consider a real scenario: increasing flow of counterfeit/pirated goods: what kind of goods? promotion of welfare: does it depend on counterfeit/pirated goods?  Scope of IP rights excessive expansion may backfire and undermine efforts to adopt efficient protective measures  Border measures are provisional measures : exceptional sufficient degree of certainty: ownership of rights, scope of rights, existence of infringement or potential immediate infringement guidance from standards set out in earlier Court decision on provisional measures

15 Many thanks to great colleagues and contributors! Hugo Berkemeyer, Marta Berkemeyer and Carla Sosa Berkemeyer Attorneys, Paraguay Antonio Belaunzarán and Sergio Rangel Olivares & Cia., Mexico Alejandro M. Breuer-Moreno G.Breuer, Argentina Julián Carvajal Dirección Nacional de Aduanas, Director of Trademark Fraud Dept., Argentina Marina Fernández and Juan Matsubara Hausheer Belgrano & Fernández, Argentina Rubén Otero Dirección Nacional de Aduanas, Coordination of Customs-Trademarks Forum, Argentina Fernando Triana Triana Uribe & Michelsen, Colombia

16 Graciela Pérez de Inzaurraga HAUSHEER BELGRANO & FERNANDEZ Buenos Aires - Argentina Enforcement of IP rights at borders A Latin American perspective Hyderabad – India October 2011

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