IPR in MERCOSUR & CHILE

for EU SMEs

Mercosur IPR SME Helpdesk

CONTENTS OF THE MODULE

MERCOSUR & Chile: a market for EU SMEs

IPR Landscape (IP laws, international treaties, statistics)

IPRs SPECIFITIES IN MERCOSUR & CHILE Copyright Patents Industrial Design Trademarks Geographical Indications and Appellations of Origin

IPR Enforcement

Further Information

THE TRAINERS: PROFILES

• to be filled in in each case

INTRODUCTION

BASIC FACTS AND FIGURES IN MERCOSUR & CHILE FOR EU SMEs

MERCOSUR & CHILE: GETTING STARTED

MERCOSUR is composed by Argentina, Brazil, Paraguay, Uruguay and Venezuela as Member States

Together with Chile represent a target market that amounts to near 300 millions population.

European Union is one of the most important investors in the region

Year-by-year EU companies, including SMEs, choose MERCOSUR to internationalize their business.

MERCOSUR & CHILE: GETTING STARTED

To avoid jeopardizing, counterfeiting and other unfair practices are among the most relevant concerns of EU companies in the region.

SMEs need to get familiar with local business and Intellectual Property (IP) law and practice.

Unlike European Union, MERCOSUR does not have yet an harmonized IP legal framework.

Thus, a case-by-case, country-by-country IP legal advice is the key to success

ARGENTINA`S FIGURES

ARGENTINA EUR Source

EU export in goods to Argentina (€ billion, 2012)Primarily: machinery, transport equipment and chemicals

8.6

DG Trade

EU import in goods from Argentina (€ billion, 2012)Primarily: agricultural products and raw materials

10.0 DG Trade

Gross Domestic Product($ billion, 2013)

611.8 World Bank

Annual growth rate (%, 2013)

3.0 World Bank

Basic FactsMain economic sectors• Manufacturing• Trade and repair services• Agribusiness [Source: MRECIC].

IP intensive Sectors• Pharmaceuticals• Biotechnology• Software and related services [Source: MRECIC].

 Patent and trademark applications from non-residents reached 79.5% and 24.8% respectively of the total applications received by INPI Argentina in 2012.

The most innovative sectors, in terms of patent applications (1998-2012), were medical technology (10.17%), pharmaceuticals (9.05%) and handling (7.71%), respectively. [Source: WIPO]

BRAZIL`S FIGURES

BRAZIL EUR Source

EU export in goods to Brazil (€ billion, 2012)Primarily: machinery, transport equipment and chemicals

39.6 DG Trade

EU import in goods from Brazil (€ billion, 2012)Primarily: agricultural products, fuels and mining products, machinery, transport equipment and manufacturing products

37.3 DG Trade

Gross Domestic Product($ trillion, 2013)

2.246 World Bank

Annual growth rate (%, 2012)

2.3 World Bank

Basic FactsIP intensive sectors • Oil and gas• Pharmaceutical • Information technology [Source: INPI Brazil].

Most innovative sectors• Electronic equipment• Chemicals• Electrical machinery [Sources: PINTEC/IBGE].

In 2012, 84,24% of patent applications and 20,53% of trademark applications were filed by non residents. Germany, France, the Netherlands, Italy and the United Kingdom were responsible for 24.5% of the patent applications received in Brazil between 2007 and 2011. [Source: INPI]

Leading sectors (1998-2012) in patent applications were civil Engineering, transport and machinery. [Source: WIPO]

CHILE`S FIGURES

CHILE EUR Source

EU export in goods to Chile (€ billion, 2012)Primarily: machinery and electric equipment, transport equipment, chemical products, and fuel .

8.5

DG Trade

EU import in goods from Chile (€ billion, 2012)Primarily: mining products, fish, agricultural products and raw materials

9.7 DG Trade

Gross Domestic Product($ billion, 2013)

277.2 World Bank

Annual growth rate (%, 201)

42 World Bank

Basic Facts

IP intensive sectors • Mechanical• Pharmacy • Chemistry

The patent system is mainly used by non- residents (about 90%) whereas only 32% of the trademark applications were made by non-residents. [Source: WIPO]

Innovation leading fields during the period 1998-2012 were pharmaceuticals (7.73% of total patent applications), civil engineering (7.69%) and biotechnology (7.65%). [Source: WIPO]

Chile is considered one of the best places of the world to create a start up (among the top 20, according to Startup Genome Report)

PARAGUAY`S FIGURES

PARAGUAY EUR Source

EU export in goods to Paraguay (€ billion, 2012)Primarily: machinery, transport equipment and chemicals

0.5 DG Trade

EU import in goods from Paraguay (€ billion, 2012)Primarily: agricultural products and raw materials

1.0 DG Trade

Gross Domestic Product($ billion, 2012)

29.95 World Bank

Annual growth rate (%, 2012)

13.9 World Bank

Basic Facts

Main economic sectors

The Paraguayan economy is mainly based on the primary sector and natural resources. It is the fourth soybean exporter and eighth largest exporter of beef in the world [Sources: REDIEX/United Nations Commodity Trade Statistics Database].

The country is currently working towards a more solid system for the protection and enforcement of IP, including the protection of traditional knowledge [Cfr: www.mic.gov.py]

URUGUAY`S FIGURES

URUGUAY EUR Source

EU export in goods to Uruguay (€ billion, 2012)Primarily: machinery, transport equipment and chemicals

1.7

DG Trade

EU import in goods from Argentina (€ billion, 2012)Primarily: agricultural products and raw materials

1.2 DG Trade

Gross Domestic Product($ billion, 2013)

55.71 World Bank

Annual growth rate (%, 2012)

4.2 World Bank

Basic Facts

IP intensive sectors• Pharmaceuticals• Biotechnology• Chemicals

Most innovative fields during the period 1998-2012 were medical technology (12.22%), pharmaceuticals (9.16% of total patent applications) and biotechnology (6.51%). [Source: WIPO]

In 2012, 38% of patent and trademark applications received by the National Directorate of Industrial Property (DNPI) had their origin in European countries. 60% of these applications came from the pharmaceutical sector, 20% from chemicals and 6% from the biotechnology area. [Source: DNPI].

VENEZUELA’S FIGURES

VENEZUELA Billion EUR

Source

EU exports mainly manufactured goods to Venezuela, including machinery and transport equipment (44% of total exports in 2012), and chemicals (23% of total exports in 2012)

8.6

DG Trade

Venezuela's biggest exports to the EU are made of fuels and mining products (84% of total exports in 2013)

10.0 DG Trade

Gross Domestic Product($ billion, 2012)

475.5 World Bank

Annual growth rate (%, 2012)

1.9 World Bank

Basic Facts

IP intensive sectors- Basic materials chemical- Chemical engineering- Civil engineering

Venezuela is currently considered a developing country with an emerging economy primarily based on oil industry and its derivatives, manufacturing and trade, as well as repairing, real estate, business and renting services [Source: BCV, 2013].

As regards patent applications, most of them come from the oil industry, specially focused on extraction and transformation processes, followed by transnational companies and finally universities and public R&D centres. [Source: RICYT].

EU- MERCOSUR TRADE

…between EU and Argentina

• The EU is the second export market for Argentina, after Brazil. Argentina exports mainly agricultural products and raw materials to the EU.

• Argentina imports mainly machinery, transport equipment and chemicals from the EU.

• The EU is the largest investor in Argentina. Half of the foreign investments in this country are made by the EU.

… between EU and Brazil

• EU is Brazil’s number one trading partner, accounting for a 20.8% of its total trade.

• Brazil is the EU’s eighth trading partner, accounting for a 2.1% of total EU trade (2013).

• EU exports mainly manufactured goods to Brazil, including machinery and transport equipment, commercial services and chemicals.

• Brazil exports raw materials to the EU such as food, drinks, mining products and cellulose.

EU- MERCOSUR TRADE

… between EU and Chile

• The EU is Chile’s third major trade partner and second largest export destination (after China) within the framework of the Association Agreement (2002).

• In 2013, Chile was the 62nd largest exporter to the EU (0.2% of total imports).

• Chile exports mainly mining products (52%) to the EU, as well as fruits, food, wine and cellulose.

• Chile imports industrial products from the EU (machinery, transport equipment and other manufactured products).

EU- MERCOSUR TRADE

EU- MERCOSUR TRADE

… between EU and Paraguay

• The EU is Paraguay´s largest export destination (21% of exported products) mainly agricultural products.

• Main UE exportations to Paraguay are vehicles, machinery, chemicals and pharmaceutical goods.

EU- MERCOSUR TRADE

…between EU and Uruguay

• The EU is the third trading partner of Uruguay, after the US and China.

• Uruguay exports mainly beef to the European Union (more than 35% of the total exports).

• The main export destination countries are the Netherlands, Germany, and Italy. Beef is followed by soya bean, carded wool, and woodchips. These four products represent 57% of the total exports to the European Union.

EU- MERCOSUR TRADE

…between EU and Venezuela

• Venezuela exports mainly fuel and mineral products to the EU.

• EU exports mainly manufactured goods to Venezuela, including machinery and transport equipment, commercial services and chemicals.

INTRODUCTION

IPR LANDSCAPE IN MERCOSUR & CHILE

COMMON INTERNATIONAL TREATIES RATIFIED

Berne Convention (Copyright) Paris Convention (Industrial Property) TRIPS Agreement (IP – WTO) UPOV (Plant Variety Rights) 1978: Except Venezuela• The Hague Convention (Designs)• PCT (Patents): Except Brazil and Chile• UPOV (Plant Variety Rights) 1991• Nice Agreement Madrid System (Trade Marks): Except Argentina and

Uruguay

COMMON INTERNATIONAL TREATIES RATIFIEDArgentina Brazil Chile Paraguay Uruguay Venezuela

TRIPS Paris Convention Berne Convention WIPO Convention WCT WPPT Nice Agreement Locarno Agreement Strasbourg Agreement UPOV/78

TRIPS Paris Convention Berne Convention WIPO Convention Strasbourg Agreement  PCT UPOV/78

TRIPS Paris Convention Berne Convention WIPO Convention WCT WPPT PCT UPOV/78

TRIPS 

Paris Convention Berne Convention WIPO Convention WCT WPPT UPOV/78

TRIPS Paris Convention Berne Convention WIPO Convention  WCT WPPT Nice Agreement Locarno Agreement Strasbourg Agreement UPOV/78 

TRIPS Paris Convention Berne Convention WIPO Convention WCT WPPT   

COMMON INTERNATIONAL TREATIES RATIFIED

• Only Brazil and Chile could be designated by virtue of the PCT System. If you are interested in protecting your Patent in Argentina, Uruguay, Paraguay or Venezuela you must apply for a national Patent in each country.

• None of the Mercosur members, neither Chile, are included within the International Trademarks Madrid System, therefore national Trademarks should be applied for.

• Almost all members have signed UPOV/78 (except Venezuela) but not UPOV/91. Therefore, the Plant Varieties related rights scope of protection differs from the European protection in aspects such as duration or plants breeders´ rights.

• Even though most of the countries are not members of the Nice Agreement, all of them internally use the Nice Classification.

STRENGTHS OF THE IP SYSTEM

• Political changes within the last 20 years, from protectionism to trade liberalization.

TRIPS Adoption Strengthening of national IP legal system

• Efforts to Harmonize IP in Mercosur. (Protocol 8/1995 related to TM and Aos and Protocol 16/98 related to Industrial Designs)

• High level of governmental IP and Piracy awareness

• Adoption of concrete measures to fight counterfeiting (e.g creation of the CNCP in Brazil)

WEAKNESSES OF THE IP SYSTEM

• Legal IP framework not yet harmonized.

• Higher legal uncertainty than in Europe

• Lack of IP and Piracy awareness among companies, employees and users.

• Backlogs within registration proceedings Trademarks: Relative Grounds for Refusal opposed ex officio Patent: slow examination proceedings

• Lengthy enforcement proceedings

MAIN IPRs DIFFERENCES BETWEEN MERCOSUR AND UE

IPR SPECIFITIES IN MERCOSUR & CHILE

IPR RECOGNIZED BY NATIONAL LAW – AND RESPONSIBLE INSTITUTIONS

ARGENTINA BRAZIL CHILE PARAGUAY URUGUAY VENEZUELA

PATENTS INPI INPI INAPI DINAPI DNPI SAPIUTILITY MODELS or

EQUIVALENT INPI INPI INAPI DINAPI DNPI SAPI

COPYRIGHT DNDA, CAL, SADAIC FBN DDI DINAPI BNU SAPI

PLANT VARIETIES INASE SNPC SAG SENAVE INASE MINAMBTRADEMARKS INPI INPI INAPI DINAPI DNPI SAPI

APPELLATIONS OF ORIGIN/GEOGRAPHICAL

INDICATIONS INPI INPI INAPI DINAPI DNPI --

INDUSTRIAL DESIGN INPI INPI INAPI DINAPI DNPI SAPI

TRADE SECRETS -- -- -- -- -- --

SOFTWARE CESSI INPI DDI DINAPI BNU SAPIINTEGRATED CIRCUIT

LAYOUT DESIGN -- INPI INAPI -- -- --

Source:

COPYRIGHT IN MERCOSUR & CHILE (I)

Argentina Brazil Chile Paraguay Uruguay Venezuela

Object Artistic, literary or scientific works

Duration Author´s life + 70 years

Author´s life + 70 years (except software)

Author´s life + 70 years (except software)

Author´s life + 70 years

Author´s life + 50 years

Author´s life + 60 years

Cost (in €) €7 to €18 + additional fees

€6 to €80 (from €76 to €361 in case of software)

€6 to €24 €15 €18 to €24

Around 105€ (application + registration)

COPYRIGHT IN MERCOSUR & CHILE (II)

• Argentina: Copyright registration depends on the nature of your work. General: National Directorate for Copyright (DNDA) Books: Argentina Book Chamber (CAL) Software: Chamber of Software and IT Service Companies (CESSI) Musical works: Argentine Society of Music Authors and Composers (

SADAIC)

• Brazil: The duration of the protection of a software program as a Copyrighted-work is 50 years.

• Chile: When a software is developed by an employee, the company will be the software´s right holder, except otherwise provided for by contract.

COPYRIGHT IN MERCOSUR & CHILE (III)

• Paraguay: Folklore manifestations are expressly protected by Copyright Law.

• Uruguay: Copyright lasts for the lifetime of the author and 50 years after his/her decease.

• Venezuela: Copyright lasts for the lifetime of the author and 60 years after his/her decease.

PATENTS & U. MODELS IN MERCOSUR & CHILE (I)Argentina Brazil Chile Paraguay Uruguay Venezuela

Object Inventions: solutions for technical problems

Requirements

NoveltyInventive step

Industrial applicability

Patents/ UM Duration 20 years/10

years from filing date

At least 20 years/ 15

years from filing date

20 years/10 years from filing date

20 years/10 years from filing date

20 years/10 years from filing date 5 to 10 years

Cost (in €)€165

(Application) €21 to €31*€287 UM

€287 Patent **

€90 (Application)

€339 Patent (less than 10 claims)/ €148 U.Models***

€187(Application)

*It does not include Publication, Examination nor Maintenance Fees** Including 10 years of Maintenance Fee and Publication Fee. Excluded Examination Fees*** Including Publication Fees. Excluded Examination and Maintenance Fees

• Argentina: Argentinian Patent Law provides for a one-year grace period after the invention has been published.

Argentina: Utility model does not require inventive step

• Brasil: Patent protection lasts for 20 years from the application date and no less than 10 years from the granting date (with exceptions).

• Chile: Inventions derived from Genetic Resources (related or not to Traditional Knowledge) could be patentable provided that the material has been acquired in accordance with the legal framework.

PATENTS & U. MODELS IN MERCOSUR & CHILE (II)

• Paraguay: According to the Patent Law, it is not possible to Patent the “second use” of a product or procedure that is within the state of the art.

• Uruguay: since 2001 Pharmaceutical products can be patented in Uruguay

• Venezuela: At the moment, patents in Venezuela are granted for 5 or 10 years from the date of granting, contrary to what is established in TRIPS and Paris Convention (no less than 20 years from the date of filing).

PATENTS & U. MODELS IN MERCOSUR & CHILE (III)

INDUSTRIAL DESIGN IN MERCOSUR & CHILE (I)

Argentina Brazil Chile Paraguay Uruguay Venezuela

Object External appearance of a product (bi/three-dimensional)Requirements Novelty

OriginalityNovelty

Originality Novelty NoveltyOriginality Originality Novelty

Originality

Duration5+5+5 10+5+5+5 10 5+5+5 10+5

5 to 10 years

Application Cost (in €)

€55€95 for

individuals, €235 for

companies

€234 + €53 publication

€65 (Application

)€106+ €42 publication

€187(Application)

INDUSTRIAL DESIGN IN MERCOSUR & CHILE (II)

• Argentina: Industrial Design protection could be extended to a maximum of fifteen years.

• Brazil: The maximum term of protection is the same as it is in Europe, twenty five years.

• Chile: Contrary to the EU, clothing cannot be protected under Industrial Design protection in Chile.

INDUSTRIAL DESIGN IN MERCOSUR & CHILE (III)

• Paraguay: the only requirement for a design to be protected in Paraguay is that such design must be new.

• Uruguay: the DNPI performs an in-depth examination before granting the protection.

• Venezuela: artistic works and clothing cannot be protected as Industrial Design

TRADEMARKS IN MERCOSUR & CHILE (I)

Argentina Brazil Chile Paraguay Uruguay Venezuela

Object Distinctive signs

Duration Indefinite (10 years renewal)

Indefinite (10 years renewal)

Indefinite (10 years renewal)

Indefinite (10 years renewal)

Indefinite (10 years renewal)

Indefinite (15 years renewal)

Application cost (in €) €50 (1

class)€43-€63 for SMEs

€176 per class +

€53 publ. fee

€25 (1 class)

€106 to €149 (1 class)

€25 (1 class) +

€31 (mandator

y search report)

TRADEMARKS IN MERCOSUR & CHILE (II)

• Argentina: Argentinian INPI accepts the registration of non- conventional trademarks, such as smell or sound trademarks.

• Brazil: INPI is entitled to raise objections based on both relative and absolute grounds for refusal.

• Chile: three-dimensional trademarks cannot be registered in Chile.

TRADEMARKS IN MERCOSUR & CHILE (III)

• Paraguay: Multiclass trademarks are not allowed in Paraguay, applicants should apply for a trademark for each product/service class.

• Uruguay: As in the EU, Uruguayan trademarks can be cancelled due to lack of use over five years.

• Venezuela: Even when it is not expressly provided for by Law, you can also register a Trademark to protect services in Venezuela.

Gis and AOs in MERCOSUR & Chile (I)Argentina Brazil Chile Paraguay Uruguay Venezuela

Object Product whose characteristics are due to its geographical origin X

DurationIndefinite as far as GI/AO

creation requirements subsist

Indefinite as far as GI/AO

creation requirements subsist

Indefinite as far as GI/AO

creation requirements subsist

Indefinite (10 years renewal)as far as GI/AO

creation requirements subsist

Indefinite as far as GI/AO

creation requirements subsist

X

Cost (in €)€18 €182 to

€661

€176 per class +

€53 publ. Fee

€66 Not available X

Gis and AOs in MERCOSUR & Chile (II)

• Argentina: Some of the most reputed European AO/GI cannot be protected in Argentina since they are considered “generic” and are included within the National Food Codex.

• Brazil: denominations non referred to geographical locations cannot be protected under Brazilian Law, regardless of which, “Cachaça” is protected as GI.

• Chile: European wines and spirits’ AO/GI are automatically protected in Chile by virtue of Association Agreement between Chile and the European Union.

GIs and AOs in MERCOSUR & Chile (III)

• Paraguay: GI/AOs should be renewed each ten years.

• Uruguay: whereas AO legal regime is very similar to the European one, Uruguayan Law does not provide for GIs but for “Provenance Indications” (Indicaciones de procedencia) whose only requirement is that the producer or the service provider is based in a certain location and that the name is not subject to any previous registration (e.g. Trademarks)

• Venezuela: Even though some GI/AOs were protected in Venezuela during its membership to the Andean Community, nowadays GI/AOs cannot be registered in VZ.

IPR IN MERCOSUR & CHILE: ALTERNATIVES TO DEFEND MY IP RIGHTS

ENFORCEMENT

IPRs ENFORCEMENT

• Customs proceedings: to block counterfeited products.

Argentinian Custom Authorities Brazilian Secretariat of Federal Revenue (Secretaria da Receita Federal

do Brasil, SRF) Chilean National Customs Service (SNA) Paraguayan National Customs Directorate (DNA) Uruguayan Customs General Directorate (DGA) Venezuela Integrated National Service of the Customs and Tax

Administration (SENIAT)

IPRs ENFORCEMENT

• Civil actions: mainly used to prevent the continuation of the infringement and to get a damages compensation.

Preliminary injunctions

• Criminal actions: used to fight counterfeiting and piracy.

IPR IN MERCOSUR & CHILE: FURTHER INFORMATION AND LINKS

FURTHER INFORMATION

MAIN IP ORGANISATIONS AND SOURCES OF INFORMATIONNAME WEB ADDRESS

WIPO – World Intellectual Property Organization

http://www.wipo.int/portal/en/index.html

INAPI - Instituto Nacional de Propiedad Industrial (Chile)

 http://www.inapi.cl

SAPI – Servicio Autónomo de Propiedad Intelectual (Venezuela)

http://www.sapi.gob.ve/#

INPI- Instituto Nacional de la Propiedad Industrial (Argentina)

 http://www.inpi.gov.ar/

INPI- Instituto Nacional de la Propriedade Industrial (Brasil)

http://www.inpi.gov.br/portal/

DNPI – Dirección Nacional de la Propiedad Industrial (Uruguay)

http://www.dnpi.gub.uy/

DINAPI – Dirección Nacional de la Propiedad Intellectual (Paraguay)

http://www.dinapi.gov.py/

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