Enforcement Committee Update: INTA and Local Chamber Hold Academic Event in Guatemala

Published: March 1, 2019

Alejandro Cárdenas E. MCOY Abogados Mexico City, Mexico

INTA’s presence was felt in Guatemala City, Guatemala, on February 21-at a sold-out academic event with 56 attendees and a subsequent dinner party with local fare for event speakers.

INTA’s voice was heard in this Central American country thanks to the efforts of the Enforcement Committee led by Milan Milojevic MSA IP-Milojevic, Sekulic & Associates (Serbia), and the Oppositions and Cancellation Standards & Procedures Subcommittee led by Nicoletta Colombo of Crea Avvocati Associati (Italy), and in cooperation with the Guatemalan Chamber on Intellectual Property (CAMPI), presided by CAMPI’s President, Karina Calderón of Comte & Font (Guatemala).

At the academic event, Pamela López Ovando of BLP Legal (Guatemala), acted as the master of ceremonies, introducing each of the panels and topics and coordinating the general development of the event.

After the welcome ceremony and opening words by Ms. Calderón on behalf of CAMPI and Alejandro CÁrdenas of MCOY Abogados (Mexico), on behalf of INTA, the first panel focused on opposition proceedings and was coordinated by Cristina Umaña of Umaña & Asociados (Guatemala). Mr. CÁrdenas presented on INTA’s policy on opposition proceedings and the desirable characteristics that have been identified as best practices worldwide. He also discussed the recently created opposition system in Mexico and compared it to INTA policy and positions. Juanita Acosta of Dentons (Colombia), and María Cecilia Romoleroux of Corral Rosales (Ecuador), spoke about the Andean opposition system, its general proceedings and inconsistencies, and contrasted it with INTA’s policy.

The next panel, coordinated by Gabriela GÁndara of Dentons (Guatemala), and involving the same speakers as the first panel, focused on cancellations on the grounds of failure to use a trademark. Mr. CÁrdenas introduced the topic by setting out INTA’s policy on standing requirements, and the necessity to keep a clean registry by removing “deadwood” for a better reflection of the commercial reality of the country’s marketplace. Ms. Acosta and Ms. Romoleroux gave an overview of the Andean System and particular details in each member country. In addition, Mr. CÁrdenas talked about the comparable proceedings in Mexico.

The third panel, coordinated by Alejandro del Valle of QIL + 4 Abogados (Guatemala), examined bad faith registrations and the difficulties in complying with the burden of proof in Guatemala. Gustavo Noyola of Central Law (Guatemala), and Enrique Möller of EY Law (Guatemala), thoroughly explained general guidelines within the domestic legislation and the practical difficulties in litigation cases, particularly regarding the burden and standard of proof.

After breaking for a sit-down lunch featuring delicious Guatemalan dishes, attendees reconvened for the final panel. Coordinated by Ivón HernÁndez of Arias (Guatemala), the panel focused on patentability requirements in Latin America. Edwin Melani of MC Legal (Guatemala), provided a general comparative analysis and the consequences for infringement cases, while Cristian Bittel of Marval, O’Farrell & Mairal (Argentina), placed particular emphasis on pharmaceutical patents and incremental inventions.

In the evening, CAMPI members graciously hosted a dinner party for the invited INTA speakers, with ancient Mayan and traditional Guatemalan fusion cuisine, and rum tastings to complement the insightful conversation and laughter.

The event proved to be an excellent opportunity for INTA to make its mark and be heard in Central America and to communicate its policies on both opposition procedures and standing requirements for non-use cancellations. Congratulations to all parties involved that made this possible, particularly Ms. Calderon; Mr. CÁrdenas as the Oppositions Task Force leader within the Subcommittee; and Mr. Noyola, member of the Task Force and member of CAMPI, who was the perfect liaison between the two host organizations. Special thanks to the invited speakers for their generosity in sharing their time and knowledge.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.