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September 11, 2018

Rights Granted by the Use / Registration of a Trademark & Non Patentable Materials

By Mónica A. Bonnett | Posse, Herrera, Ruiz

COUNTRY	Does the use of a trademark grant rights upon it?
ARGENTINA	Although the use of an unregistered trademark to distinguish products and/or services is legal, the Argentinean Legislation establishes registration as a mandatory step to grant rights to a trademark. In fact, the Trademark Act encourages the registration of marks by granting exclusive rights, among other benefits, upon registration. This is a "first to file" jurisdiction.
BOLIVIA	In Bolivia, it is mandatory to register a trademark in order to obtain rights upon it. Additionally, the use of pharmaceutical products without registration is illegal under the Bolivian Law. However, the allowance of pharmaceutical products not covered by a registered trademark is not uncommon, even though the Trademark Law provides for the mandatory registration of these products. This is a "first to file" jurisdiction.
BRAZIL	The Brazilian Legislation, as a "first to file" jurisdiction, provides registration as mandatory to obtain rights to a trademark. However, there are several exceptions, such as well-known marks, trade names and prior use, among other, which can overcome the "first to file" rule. Additionally, the use of an unregistered trademark to distinguish fgoods and/or services is legal, provided that the mark does not fall into the corresponding prohibitions set forth by the law, such as: conflict with prior-registered or well-known marks, signs that are contrary to morals and good customs, signs that are contrary to religious beliefs or signs that suggest a false indication as to nature, origin, source, etc.
CHILE	Registration in Chile is mandatory to establish rights to a trademark, since this is a "first to file" jurisdiction. Also, the use of an unregistered mark to distinguish goods and/or services is legal, provided that there are no prior registered trademarks that are confusingly similar to it.
COLOMBIA	Registration in Colombia is mandatory to establish rights to a trademark, since this is a "first to file" jurisdiction. Additionally, the use of an unregistered mark to distinguish goods and/or services is legal.
ECUADOR	Although the use of an unregistered trademark to distinguish products and/or services is legal, the Ecuatorian Legislation establishes registration as a mandatory step to grant rights to a trademark. This is a "first to file" jurisdiction. Altough the use of an unregistered trademark is not prohibited, it can nevertheless entail risks of infringement or registration by a third party.
MEXICO	The Mexican Law establishes registration as necessary in order to grant rights to a trademark, given its "first to file" jurisdiction. However, an infringement action could be possible to defend due to an earlier use in Mexico, as well as a cancellation action due to an earlier use in Mexico or abroad. Additionally, although the use of an unregistered trademark to distinguish goods and/or services is not illegal, its user may be exposed to infringement proceedings if a third party holds a previously registered trademark, or if a third party secures a registration after the use commenced. given these cases, the user could defens itself by claiming the prior use.
PARAGUAY	Registration in Paraguay is mandatory to establish rights to a trademark, since this is a "first to file" jurisdiction. However, the use of an unregistered mark to distinguish goods and/or services is legal and it may serve the purpose of proving that a trademark has acquired distinctiveness through its use.
PERU	The Peruvian Legislation provides registration as a mandatory step in order to obtain rights to a trademark. Nevertheless, the protection for notorious trademarks and trade names are exceptions in this "first to file" jurisdiction and the use of an unregistered trademark to distinguish products and/or services is legal.
URUGUAY	Prior use establishes rights to a trademark, since Uruguay is a "first to use" jurisdiction. Therefore, the registration of a trademark is not mandatory to establish rights upon it and the use of an unregistered trademark to distinguish products and/or services is legal.
VENEZUELA	Registration in Venezuela is mandatory in order to establish rights to a trademark, since this is a "first to file" jurisdiction. Additionally, the use of an unregistered mark to distinguish goods and/or services is legal.

COUNTRY	Non Patentable Subject Matter
URUGUAY	Applicable law: Law 17164. The following shall not be patentable: (a) Diagnostic, therapeutic or surgical methods for the treatment of persons or animals; (b) Inventions contrary to public order, morality, public health, the population’s food supply, safety or the environment.
VENEZUELA	There are no specific provisions regarding what could not be considered as an invention.
ARGENTINA	Applicable law: Decree 260 of 1996. The following shall not be patentable: (a) Inventions whose exploitation in the territory of the ARGENTINE REPUBLIC should be prevented in order to protect public order or morality, health or life of people or animals, or to preserve plants or avoid serious damage to the environment; (b) The totality of the biological and genetic material existing in nature or its replication, in the biological processes implicit in animal, plant and human reproduction, including the genetic processes related to the material capable of conducting its own duplication under normal and free conditions such as it happens in nature.
ECUADOR	Applicable law: Decision 486 of 2000. The following shall not be patentable: (a) Inventions the commercial exploitation of which on the territory of the member country concerned has necessarily to be prohibited in order to protect law and order or morality. To that end the commercial exploitation of an invention shall not be considered contrary to law and order or morality solely because of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (b) Inventions the commercial exploitation of which in the member country concerned has necessarily to be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment. To that end the commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals or liable to prejudice the conservation of plants or the environment solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (c) Plants, animals and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes. (d) Therapeutic or surgical methods for the treatment of human beings or animals, and also diagnostic methods applied to human beings or animals.
COLOMBIA	Applicable law: Decision 486 of 2000. The following shall not be patentable: (a) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect law and order or morality. To that end, the commercial exploitation of an invention shall not be considered contrary to law and order or morality, solely because of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (b) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment. To that end, the commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals, or liable to damage the conservation of plants or the environment, solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (c) Plants, animals, and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes; (d) Therapeutic or surgical methods for the treatment of human beings or animals, as well as diagnostic methods applied to human beings or animals.
BOLIVIA	Applicable law: Decision 486 of 2000. The following shall not be patentable: (a) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect law and order or morality. To that end, the commercial exploitation of an invention shall not be considered contrary to law and order or morality, solely because of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (b) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment. To that end, the commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals, or liable to damage the conservation of plants or the environment, solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (c) Plants, animals, and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes; (d) Therapeutic or surgical methods for the treatment of human beings or animals, as well as diagnostic methods applied to human beings or animals.
PERÚ	Applicable law: Decision 486 of 2000. The following shall not be patentable: (a) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect law and order or morality. To that end, the commercial exploitation of an invention shall not be considered contrary to law and order or morality, solely because of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (b) Inventions whose commercial exploitation in the country’s territory has to necessarily be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment. To that end, the commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals, or liable to damage the conservation of plants or the environment, solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation; (c) Plants, animals, and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes; (d) Therapeutic or surgical methods for the treatment of human beings or animals, as well as diagnostic methods applied to human beings or animals.
BRAZIL	Applicable law: Law 9.279, article 18. The following shall not be patentable: (a) That which is contrary to morals, good customs and public security, order and public health; (b) Substances, materials, mixtures, elements or products of any kind as well as the modification of their physicochemical properties and the respective processes for obtaining them; and (c) All or part of living beings, except transgenic micro-organisms meeting the three patentability requirements, and which are not mere discoveries. Single paragraph. For the purposes of this law, transgenic microorganisms are organisms, except the whole or part of plants or animals that express, through direct human intervention in their genetic composition, a characteristic normally not attainable by the species under natural conditions.
MÉXICO	Applicable law: Industrial Property Law. The following shall not be patentable: (a) Essentially biological processes for the production, reproduction and propagation of plants and animals; (b) The biological and genetic material as found in nature; (c) The animal breeds; (d) The human body and the living parts that compose it; and (e) Plant varieties.
PARAGUAY	Applicable law: Law 1.630. The following shall not be patentable: (a) Inventions whose commercial exploitation must be prevented for protect public order or morality, protect the health, life of people or animals, and to preserve plants, to avoid serious damage to the environment; and (b) Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. Neither they may be subject to new patent, products nor processes within the prior art, as provided in this law, by simply attributed to another use which is comprised in the original patent.
CHILE	Applicable law: Industrial Property Law 19.039. The following shall not be patentable: Inventions whose commercial exploitation has to necessarily be prohibited in order to protect law and order or morality. To that end, the commercial exploitation of an invention shall not be considered contrary to law and order or morality, solely because of the existence of a legal or administrative provision that prohibits or regulates such exploitation.