FREE TRADE AGREEMENT BETWEEN MERCOSUR AND THE EUROPEAN UNION:
Chapter of Intellectual and Industrial Property.
The present article deals with the most important matters relating to the new European Union proposal for the conception of a statutory text regarding Intellectual and Industrial Property Rights, as part of the European Union – Mercosur Free Trade Agreement which is presently being negotiated.
The Mercosur or South American Common Market, is a regional block originally formed by Argentina, Brazil, Paraguay and Uruguay, lately expanded with the adherence of Bolivia and Venezuela.
In the framework of such negotiations, the chapter about the treatment given to intellectual and industrial property becomes of great significance considering commercial interests between both blocks.
The object of this chapter is to:
- a) Facilitate the production and commercialization of innovative and creative products between the Parties; and
- b) Attain a sufficient and effective level of protection and enforcement of intellectual property rights.
Regarding matters related to Copyright, Art. 4.1 states that;
The Parties shall comply with the rights and obligations as set forth in the following treaties:
- a) The Berne Convention for the Protection of Literary and Artistic Works (‘the Berne Convention);
- b) The International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (“Rome Convention”);
- c) The WIPO (World Intellectual Property Organization) Treaty on Copyright (“WCT”);
- d) The WIPO (World Intellectual Property Organization) Treaty on Performances and Phonograms ( “WPPT”);
The Parties shall comply with the provisions of Beijing Treaty on audiovisual performances and the provisions of Marrakesh Treaty to enable blind, visually impaired or otherwise disabled persons, to access the conventional printed text.
Art 4.2 states that the Parties shall confer on authors the exclusive right to authorize or prohibit:
- a) Direct or indirect, temporary or permanent reproduction of their work by any means and in any form, whether in whole or in part;
- b) Any form of distribution to the public by sales or otherwise of their original work or copies thereof;
- c) Any kind of communication to the public of their work;
- d) the commercial rental to the public of originals or copies;
In turn, Art. 4.3 states that the Parties shall confer on performers the exclusive right to authorize or prohibit:
- 1) The reproduction of their performances by any means;
- 2) The direct or indirect, temporary or permanent reproduction of their performances by any means and in any form, in whole or in part;
- 3) the distribution to the public, by sales or otherwise, of their performances via any means of reproduction;
- 4) Making available to the public, either via wired or wireless means, in such a manner that the public may access their performances at any time or place;
- 5) Broadcasting via wireless means and the communication to the public of their performances, except where the performances are already being broadcasted or reproduced, or made for such purpose;
- 6) Commercial rental to the public of a reproduction of their performances;
Further, Art. 4.7 states: The term of protection of a literary, artistic, musical, cinematographic or audiovisual work is for 70 years after the death of the author/s.
In turn, broadcasting rights belonging to broadcasting organizations shall expire 50 years after the first transmission of a broadcast.
The rights of performers to the reproduction of their performances other than in a phonogram shall expire not less than fifty years after the date of the performance. However, if the reproduction of a performance is lawfully published or lawfully communicated to the public within this period, the rights shall expire not less than 50 years after the date of such first publication or such first communication to the public (whichever takes place first). Moreover, the rights of performers to their reproduceable performances shall expire 70 years after the first lawful publication or communication to the public, as of the date of the first event.
Lastly, the rights of producers of the first reproduction of a film shall expire 50 years after such reproduction is made.
Regarding the assumption of authorship or ownership, Art. 22 establishes that the Parties shall recognize that, for the purposes of applying the measures, procedures and remedies as set forth in the Agreement, in order for the author of a literary or artistic work to be considered as such, in the absence of proof to the contrary, it will suffice for his/her name to appear on the work in the usual manner.
With regard to Trademarks, Art. 5.1. states that the Parties:
- Shall comply with the Trademark Law Treaty (TLT) and with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Trademark Registration,
- Shall adhere to Madrid Agreement concerning the International Registration of Trademarks; and
- Shall comply with and make all reasonable efforts to adhere to Singapore Treaty on Trademark Law.
With reference to registration procedures, Art. 5.2 states that the Parties shall establish a system for trademark registration wherein each final negative decision, including a partial refusal of registration issued by the relevant trademark authority shall be notified in writing and duly justified, such decision being susceptible to challenge.
The Parties shall be granted the possibility to oppose trademark registration applications or, where appropriate, the actual trademark registration. Such opposition proceedings shall be adversarial.
Moreover, the Parties shall provide a publicly available electronic database of trademark applications and registrations.
Article 5.3 refers to rights attained by a trademark holder upon its registration.
Such registered trademark shall confer on the holder exclusive rights thereon. In turn, the holder shall be entitled to prevent any third parties from using in trade without his/her consent:
- a) Any sign which is identical to the trademark relating to goods or services that are identical to those for which the trademark is registered;
- b) Any sign which, because of its being identical or similar to the trademark, or related to products or services being similar to those protected by the trademark and sign, can bring about confusion among consumers.
Regarding the grounds for revocation of a trademark, Art. 5.5 states that the Parties shall ensure that a trademark may revoked if, within a period of five consecutive years, the trademark has not been put to genuine use in connection with the goods or services it has been registered for, without any reason therefor.
With regard to exceptions to the rights conferred by a registered trademark, Art. 5.7 states that the Parties shall provide for exceptions by limiting the rights conferred by a trademark such as fair use of descriptive terms, including geographical indications, and they may also provide for other limited exceptions, as long as such exceptions take the legitimate interests of the trademark holder and of third parties into account.
The trademark shall not entitle the holder to prohibit a third party from using in trade:
- His/her own name or address;
- Indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time it takes to manufacture the goods or render the service, or other characteristics of goods or services;
- The trademark, whenever it is necessary to indicate the intended purpose of a product or service, such us, in particular, accessories or spare parts; provided it is used in accordance with honest industrial or commercial practices.
Furthermore, a trademark shall not entitle its holder to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular area, provided such right is recognized by the laws governing the Party in question, and within the limits of the territory in which it is recognized.
Presently if an applicant wishes to obtain trademark protection within the Mercosur countries, it is necessary to file an individual trademark application in each country that is to say there is no unique or sole trademark application or registration valid for all the region, as in the case of the EUIPO in Europe.
In connection with trademarks, the Mercosur countries have signed the “Protocol of Harmonization in Mercosur regarding trademarks, indications of source and denominations of origin”. Howeer, the latter is not yet in force and as mentioned before, in order to obtain trademark protection in the region it is necessary to file a trademark application on a country by country basis.
Regarding Industrial Designs, the Parties shall implement the Hague Agreement Concerning the International Registration of Industrial Designs and Models (Art 6.1.)
El art 6.2 refers that the Parties shall protect independently created designs, provided they are novel and original. Such protection shall be provided by registration and shall confer an exclusive right upon their holders.
The holder of a registered design shall have the right of use and shall prevent third parties from using and, particularly, offering for sale, selling, putting on the market, importing, exporting, storing such a product, or using articles bearing or embodying the protected design without his/her consent, when such acts are undertaken for commercial purposes, unduly harm the normal commercial use of the design, or are not compatible with fair trade practices.
In addition, this Article states that if a design is applied to or incorporated into a product which constitutes a component part of a complex product shall only be considered to be new and original when:
- a) the component part, when incorporated into the complex product, remains visible during normal use, and
- b) to the extent that such visible features of the component part meet in themselves the novelty and originality requirements.
As per Art. 6.3, the duration of protection of an industrial design shall be 25 years from the filing date of the application.
In turn, Art. 6.4, provides that the term of protection for unregistered designs shall be at least three years as from the date the design was first made available to the public.
(It should be noted that Art. 6.6 states that a design can also be protected by copyright law as from the date it was created or made available in any manner of reproduction).
Regarding Geographical Indications, Art. 7.4 states that they shall be protected against:
- a) any direct or indirect commercial use of a protected name with respect to similar products not meeting the specifications for a product of the Geographical Indication or, to the extent that such use has the benefit of being recognized in a Geographical Indication:
- b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavor”, “like” or the like;
- c) any other untruthful or misleading indication as to the source, origin, nature or essential qualities of the product, both in the inner and the outer packaging, the advertising material, or in documents relating to the product concerned, as well as its use for the packaging of a container that may convey a false impression as to its origin;
- d) any other practice which may mislead the consumer as to the true origin of the product.
In addition, that very Article states that: Protected Geographical Indications shall not become generic in the territories of the Contracting Parties.
Moreover, it makes it clear that: When Geographical Indications are entirely or partially homonymous, protection shall be granted to each indication provided there is sufficient distinction between conditions of use and the manner in which names are displayed, so as not to mislead the consumer.
In turn, Art. 7.5 establishes that, under this Agreement, Geographical Indications may be used by farmers and by those who sell foodstuffs, wine, aromatized wine or spirits.
It should be noted that Article 7.10 states that: The Contracting Parties shall set up a Joint Committee consisting of representatives of the European Union and the Mercosur countries, for the purpose of monitoring the progress of this Agreement and intensifying their cooperation and dialogue on Geographical Indications, this being one of the most conflicting matters.
With regard to Patents, Article 8.1 provides that he Parties shall comply with the Patent Law Treaty (PLT) and Patent Cooperation Treaty PCT). My country, Argentina, is not a member of the PCT, while Brazil and Chile have ratified said treaty.
There is an urgent need for my country, Argentina, to ratify or promptly enter the PCT, thereby effectively achieving a greater International recognition, and as a means to attract investors.
Article 9 states that the Parties shall protect Plant Variety Rights, in accordance with the International Convention for the Protection of New Varieties of Plants (“UPOV Convention”), its latest revision having taken place in Geneva on March 19, 1991, (the so-called «1991 UPOV ACT») including the exceptions to the breeder’s right as referred to in Article 15 of such Convention, and shall also co-operate to promote and enforce such rights.