PROTECTION OF INTELLECTUAL PROPERTY IN LATIN AMERICA

BY: JOSÉ ALEJANDRO ABUSAID GÓMEZ

J.D.

INDEX

1. International IP framework in Latin America

2. Regional IP framework in Latin America

3. International Arbitration in Latin America

4. Focus on Colombia

a) International IP framework

b) Regional IP framework

c) FTA’s and BIT’s

d) International arbitration in Colombia

e) GDPR in Colombia

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INTERNATIONAL IP FRAMEWORK IN LATIN AMERICA

• At the international level, Intellectual Propertyis protected by the WTO by the Trade RelatedAspects of Intellectual Property Rights(TRIPS), that is embodied in Annex 1C of theMarrakech Agreement.

• Therefore, the TRIPS Agreement is bindingfor all WTO Members, as the acceptance forMembership in WTO implies the singleundertaking of the whole system, except forsome plurilateral agreements of minorinterest.

• As it is shown in the map, it is clear that all ofthe Latin American countries are WTOMembers, therefore IP is internationallyprotected in Latin America, according to WTOstandards.

https://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm#membermap

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INTERNATIONAL IP FRAMEWORK IN LATIN AMERICA

• It is important tohighlight that mostof Latin Americancountries are WIPO(World IntellectualPropertyOrganization)members. Somenotable ones are:

• Argentina

• Bolivia

• Brazil

• Chile

• Colombia

• Dominican Republic

• Ecuador

• Guatemala

• Honduras

• Nicaragua

• Paraguay

• Peru

• Uruguay

• Venezuela

• Panama

WIPO is the global forum forintellectual property services,policy, information andcooperation. It is a self-funding agency of the UnitedNations, with 192 memberstates.WIPO Members are committedto follow the best practicesrecommended by theOrganization, aiming for aneffective protection of IP

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REGIONAL IP FRAMEWORK IN LATIN AMERICA: SUCCESS AND FAILURE

• At the regional level, Intellectual Property is protected via trade blocks.

The most notable success example is the Andean Community, as it has

achieved a uniform regulation for the protection of Intellectual Property

through the enactment of Decision 486 of the Andean Parliament. This

instrument embodies the protection of IP rights, such as: industrial

property, patents, integrated circuit schemes, industrial designs,

trademarks, amongst others.

• Although the Andean Community is a supra-national body, its

decisions have a direct applicability effect in the legal systems of its

members (Colombia, Ecuador, Bolivia and Peru). The latter means that

the provisions of the

decisions are incorporated immediately into the domestic legal

systems, preempting inconsistent laws, and being enforceable in

domestic courts.

• On the other hand, the Southern Common Market (Mercosur),

integrated by Venezuela, Brazil, Paraguay, Uruguay and Argentina, has

not been able to enact any regulations relating the protection of IP as

it functions a customs union, rather than an integration mechanism

with the power to exert direct applicability effects in its decisions.

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INTERNATIONAL ARBITRATION IN LATIN AMERICA

• The 1958 New York Convention on the Recognition and Enforcement of ForeignArbitral Awards has entered into force in 159 countries, including all LatinAmerican Countries.

• Under the provisions of this treaty, it is possible for arbitral awards decided inother jurisdictions to be recognized and enforced by a domestic court ortribunal. This fact gives the foreign investor the certainty that the ruling of thearbitral award will be enforced disregarding the forum in which it wasestablished.

• In conclusion, international arbitration may be the predilect way to solve thedisputes arising from IP issues

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FOCUS IN COLOMBIA: INTERNATIONAL IP FRAMEWORK

• Colombia, as a WTO Member, has accepted the binding nature of

TRIPS, meaning that all the domestic rules must be consistent with

the rights and obligations embodied in the Agreement.

• It is important to highlight that Colombia is not only a Member of

WIPO, but a State Party to the Madrid Protocol, which regulates an

international system for registering trademarks.

• Therefore, it is clear that Colombia is internationally committed

with the extensive protection of the rights derived from Intellectual

Property.

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FOCUS IN COLOMBIA: REGIONAL IP FRAMEWORK

• As a Member of the Andean Community, the rules applicable for

the protection of Intellectual Property are embodied in Decision

486 of the Andean Parliament. As mentioned before, this

instrument is directly applicable in the Colombian domestic

system.

• The Superintendence for Industry and Trade is the organism in

charge of monitoring and enforcing the compliance of the rules

regarding IP protection.

• It is important to note that Colombia is one of the lead countries in

the region recognizing an extensive protection on IP rights, at it

has enacted 54 domestic laws, 22 implementing regulations and

20 treaty approvals, accounting for a total of 96 rules regarding

the protection of intellectual property; whilst Ecuador has signed

52, Bolivia has signed 45 and Peru has signed 56.

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FOCUS IN COLOMBIA: FTA’S AND INVESTMENT TREATIES

• Another relevant way for protecting Intellectual Property

rights, are the provisions contained in Free Trade Agreements

(FTA) and Bilateral or Plurilateral Investment Treaties, which

may contain provisions regarding this matter.

• For instance, Colombia is Party to, amongst others, the

following treaties that contain IP protection rules within the

instrument:

• FTA between Colombia, Venezuela and Mexico(1994)

• BIT Colombia-Spain (2005)

• FTA between Colombia and the EFTA States (2008)

• United States - Colombia Trade Promotion Agreement (2006, entered

into force on 2012) www.abusaidgomez.com

FOCUS IN COLOMBIA: INTERNATIONAL ARBITRATION

• Arbitration in Colombia is regulated by Law 1563 of 2012, which

enshrines the principles and procedures applicable to national and

international arbitration, as an alternative mean for settling

disputes.

• Furthermore, in article 111 the Law embodies the procedure for

recognizing and enforcing foreign arbitral awards. Consequently,

Colombian judges are bound to a domestic law that translates the

obligations that arise from the New York Convention into the

Colombian system.

• The aforementioned is tantamount to the assurance for the

foreigner businessmen that are interested in investing in

Colombia, as it is evident that legal security and stability in the

protection of IP right is being achieved.

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FOCUS IN COLOMBIA: GDPR EFFECTS• The General Data Protection Regulation was issued by the European Parliament on 27

April 2016. As it is a European Union normative provision, one may think that it is not

applicable in other territories different of the EU.

• Nonetheless, by virtue of article 3(2) of the Regulation, it applies for enterprises not

established in the EU that process personal data of persons established in the Union,

when it relates to the offering of goods and services or the monitoring of the persons

behavior.

• For example, a Colombian online store that sells shoes and ships their product

worldwide (including EU territories) are bound to comply with the Regulation.

• In conjunction with article 3(2), art, 27 poses an obligation (and challenge) for the data

processors or holders who are not established in the EU, as they must have a

representative established on the territories where the data is being collected or

processed.

• Although data protection is not new in the Colombian law system, as it is regulated

through Law 1581 of 2012 and several judgement of the Constitutional Court, the scope

of GDPR imposes new obligations for Colombian-established service offers directed to

the EU, notwithstanding the economical burden of hiring representatives in the EU.www.abusaidgomez.com

THANK YOU!

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