Intellectual Rights 15

The author analyzes the incorporation of copyrights in the different constitutions –such as article 17 of the Argentine Constitution– and their impact in the content and observance of the rights. The Constitution imposes limits to discretional authority.

The author classifies the constitutions in three types: a) those considering copyrights as property rights; b) those linking copyrights with freedom of creativity and freedom of expression, and c) those which consider these rights as autonomous, neither linked to property of freedom, for example including these rights in the economic sphere of the respective Constitution.

Contrary to general beliefs, many of the most important international treaties on fundamental human rights contain explicit clauses on the obligation to protect copyrights. Among the international treaties analyzed, the author refers to the International Pact on Economic, Social and Cultural Rights, as well as to the American Convention on Human Rights approved on 22 November 1969 (San José de Costa Rica Pact).

The originality of the article is precisely the analysis of intellectual property from a constitutional methodology that determines that Governments must protect authors instead of adopting positions that weaken these rights.

Industrial property agents may have a positive role as advisors for fair competition practices and to promote economic and social development. Their activity should not be limited to obtain industrial property titles. The author states that taking into account the interface between industrial property and antitrust legislation, it is the responsibility of industrial property agents to advise right holders on the regular use of the rights in horizontal or vertical transactions. Entrepreneurs should be aware of their legal obligations avoiding infringements that may result in severe penalties. In Brazil, industrial property has explicit norms on fair and unfair competition. In the public arena, there are norms on: a) antitrust; b) consumers’ rights, and c) public services, as well as agencies in charge of their application. After analyzing these norms and the increase in investigations for their violation, the author concludes that it is necessary that professionals offer an integral and updated service to their clients.

The application of competition principles to intellectual property is at the present time an issue of great interest. Competition must be fair. Unfair competition is disapproved in international treaties. Legislations in Latin America are not in general sufficiently explicit, and therefore judges have a great challenge in applying ethical fundamental principles to condemn practices that prevent, restrict, falsify or distort competition. The authors study in detail the doctrine and the positive norms, such as: Paris Convention, TRIPs, Decision 486 and Resolution 817 of the Andean Pact, and article 284 of the Intellectual Property Law in Ecuador. They state that while the basis of competition infringements are the violation of a positive norm, in the case of unfair competition it is the violation of ethical conducts. Trade secrets violations fall under the unfair competition principles when they are revealed, use or work without authorization of the legitimate right holder. Some examples of violation of trade secrets are the use of agrochemical or pharmaceutical test data, or the use of ancestral know-how, or ancestral medical practices, without authorizations. They conclude that there are specific positive norms to protect test data forbidding manufacturers to obtain sanitary registry of copies during the protection term. This type of protection coexists with the one derived from the application of rules and principles condemning unfair competition.

The author analyzes if judicial decisions may be considered as works protected by author’s rights. After a detailed study of the necessary requisites that must be fulfilled in order to obtain author’s rights, according to the norms, doctrine and jurisprudence, the author analyzes the judicial decisions. As any other official document, the principle of publicity of the decision limits copyrights. It is impossible to grant patrimonial rights to the authors of the judicial decisions. However, moral rights which include paternity, integrity and access may be applicable.

The author analyzes the structure of Community trademark law, the registered Community trademark as an object of commerce, and the function of trademark rights and specially the essential function of the Community trademark, commenting on the abundant case-law applying and interpreting the principles, Directives and Community Trademark Regulations. The Community trademark must fulfill the obligation to allow the free circulation of goods and services in the European Union and therefore it must have the same effects in all the country members. This Community trademark is obtained through registration and must be capable of complying with the requisites of being a sign that may be represented graphically, and be appropriate to distinguish products or services. Its core function is guaranteeing the precedence of the product or service, avoiding confusion. This trademark also has other functions, such as, for example, expanding clientele. It is an essential tool in promoting fair competition. If there is an opposition by the holder of a previous national trademark, the application will be rejected if there is a risk of confusion y the public in the territory where the previous trademark had been granted, the risk of confusion includes the risk of association with the previous trademark. The opposition procedure takes place at the Office in charge of granting the Community trademark (Office for Harmonization in the Internal Market, OHIM). The exclusive right granted by this trademark has limits in order to protect both the interest of its holder as well as the need to secure the free circulation of goods and access to the market. These limitations are included in article 12 of the Community Trademark Regulation and the author studies the corresponding case-law.

The author analyzes the reasons that justify the protection of famous trademarks, studying the historical precedents, the growth of international trade, the intensive Internet use, and the work of the international organizations. Central arguments in the protection are: the risk of association or confusion, misappropriation, slander of reputation, and dilution of the trademarks value. In 2005, effective as from 2007, Mexico amends the Industrial Property Law in regards to renowned trademarks, with the objective of providing certainty to their holders, but affecting the scope and content of the protection. The author considers inadequate the approved amendments. Among other reasons, because it imposes undue burdens to prove notoriety or fame, there is a contradiction as it demands the trademark registration in order to obtain the declaration to be issued by the Mexican Institute of Industrial Property, and the term of validity of such a declaration. The new system affects the protection that Mexico had gradually developed for notorious trademarks and must be made consistent with the international treaties in force by legislative intervention and judicial interpretations.

TRIPs regulations on measures to be taken by governments at their respective borders to avoid trade of products in violation of intellectual pro perty rights are systematically analyzed in this paper. The subject matter is of great interest in view of the expansion of trade with counterfeit goods. The author states that the basic foundation in the intervention of customs is the need to take provisional preventive action to avoid the free circulation of goods violating intellectual property rights. These measures are not to be confused with judicial provisional measures. Customs intervention must take place when the goods infringe trademarks or trade-names, or pirated copyrights goods. According to the author, for other types of infringements, such as exports, or goods in transit, Customs intervention may also take place in accordance with the national regulations. Measures at borders may be taken ex-officio or at the request of the holder of the intellectual property right or an authorized licensee complying with the requisites that are explained. The author makes suggestions in order that the national regulations and practices do not frustrate the application of borders measures.

The convergence of global markets and the spread of technology create unique challenges for inventors and companies seeking to enforce their patent rights in foreign jurisdictions. While global markets continue to converge, the same cannot be said for the rules governing the calculation of compensation when enforcing patent rights, as local jurisdictions criteria prevail. Europe presently maintains national patent registries in each jurisdiction, but with a central application system via the European Patent Office (EPO). On April 24, 2004 the European Parliament and Council adopted Directive 2004/48/EC on the enforcement of intellectual property rights (“EU IP Enforcement Directive”). However, its implementation has not been entirely clear-cut. Further, absent the establishment of a centralized system of litigation (e.g., a true Community Patent or a European Patent Litigation Agreement) the damages rules set out in the Directive are subject to interpretation by national courts, which may defer. The authors analyze the enforcement of this Directive in the different national jurisdictions, and conclude that damage calculations are -in spite of homogenized set of rules– a matter that depends on each jurisdiction.

There are more than 1.2 million domain names registered in Brazil, and registration continues expanding. The author discusses the legal issues arising from the proliferation of domain name and infringement cases. She stresses the preference for the International Generic Top Level (TLD) Domain <.com> for commercial purposes. However, due to the larger number of domain names already registered under the <.com>, it is not always possible to find the desired name available. For this reason, over the past years, an increase in Brazil’s local registrations has taken place. The article details the requirements to apply for a domain name in Brazil.

The process of domain name registration –created in 1998– still needs enhancement, when compared to other countries. The only trademarkrelated search that is carried out is in connection with famous or wellknown marks. There is no administrative measure available to challenge the Registry’s decision. The only possibility of pursuing its cancellation is to litigate before a State Court. Brazil has not yet adhered to any form of ADR policy (Uniform Domain Dispute Resolution Policy) and deals with the <.br> domain name matters solely with the Brazilian courts, which may be a time-consuming and expensive process. The author discusses very interesting judicial disputes and concludes that the jurisprudence takes into account trademark rights, a demonstration that intellectual property principles and rules are prevailing in the judicial decisions.