miércoles, 6 de diciembre de 2017

THE URUGUAYAN JUDICIARY AND THE TRIPS AGREEMENT

THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) IN THE JURISPRUDENCE OF THE ORIENTAL REPUBLIC OF URUGUAY


Edgardo Ettlin
Court of Appeal Minister - Judiciary Power of Uruguay (*)


ABSTRACT: Although the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is positive law in the Oriental Republic of Uruguay since 1994, it is seldom considered by Uruguayan jurisprudence in the ground of its decisions on Intellectual Property matters. This study presents how the TRIPS Agreement has been applied in different judicial cases in Uruguay, through the most representative sentences currently available.

KEYWORDS: Intellectual Property, Trade-Related Aspects of Intellectual Property Rights (TRIPS), TRIPS and Uruguayan Courts.

SUMMARY: I. Introduction - II. Topics in which the TRIPS Agreement has influenced the Uruguayan jurisprudence on Intellectual Property - III. By way of conclusions



I. Introduction

The Oriental Republic of Uruguay has an adequate and updated internal legislation on Intellectual Property rights, in accordance with the most important international instruments on this subject that it has ratified ([1]). The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), approved at the conclusion of the Uruguay Round of Multilateral Trade Negotiations as contained in the Final Act signed at Marrakesh on 15 April 1994 (Annex C), is in that country a positive and current law.

The TRIPS Agreement has been incorporated into the Uruguayan legal system through three channels:

a) through the ratification of the Multilateral Agreement establishing the World Trade Organization with Final Act, Annexes and Protocol concluded at Marrakesh  on 15 April 1994, by Law No. 16.671 of 13 December 1994;

b) in the subject of trademarks, geographical indications and origin denominations, through the ratification by Law No. 17.052 of 14 December 1998, approving the Protocol on Harmonization of Intellectual Property Norms in MER.CO.SUR ([2]) in the Field of Trademarks, Indications of Source and Appellations of Origin;

c) Through the Interregional Framework Cooperation Agreement between the European Community and its Member States, of the one part, and the Southern Common Market and its Party States, of the other part (ratified by Law No. 17.053 of 14 December 1998).

In spite of having been incorporated into the legislation of Uruguay for more than twenty years, the TRIPS Agreement is scarcely known to the national judges of that country, and is rarely mentioned or cited in their judgments on Intellectual Property matters. They use instead, when necessary, the national Intellectual Property Law. This situation can be explained by three main reasons: a) due to the limited diffusion that the TRIPS has had in the Uruguayan Judiciary; b) due to the lack of knowledge that, in general, the Uruguayan judges have about Intellectual Property laws; c) because being unfrequent the cases that come to their judgement on Intellectual Property, neither the judges nor the Judicial School of Uruguay (Center for Judicial Studies of Uruguay) have been concerned about training in this area.

It is also said that Uruguay has a very protective and self-sufficient regulation on Intellectual Property, which although according to the TRIPS guidelines, it endes up far exceeding its protection standards on various aspects, becoming true "TRIPS-Plus" rules. That could explain too, why Uruguayan judges do not need to resort to the dispositions of this Agreement.

This report attempts to review how the TRIPS Agreement has been applied in Uruguayan jurisprudence in the field of Intellectual Property, on a sample of 38 judicial decisions. Even though this number could not be significant, it represents virtually the jurisprudence available in the national Uruguayan databases and allows us knowing the most current trends.


II. Topics in which the TRIPS Agreement has influenced the Uruguayan jurisprudence on Intellectual Property


1) The TRIPS as a standard guide for the protection of trademarks

In many cases Uruguayan judges directly apply the international Intellectual Property regulations, when they are more favorable to the protection of the owner of the mark.

The jurisprudence of the Contentious Administrative Court usually invokes in some of its judgments Article 16.1 of the TRIPS, that provides: “The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for godos or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed”, to declare that “there is a clear purpose ... to prevent the distortion that the risk of confusion entails, in that the central element, in relation to this class of products, is taken into consideration of the figure of the consumer, as a subject liable to incur in error or confusion in the distinction of products through their trademarks” ([3]).

In the application of Article 16 of the TRIPS for a specific case, it has been understood that a product with registered trademark similar to that of another product already registered, even if both belong to the same international class, does not generate confusion if these products are very different from each other. It was said that "In the judgement of this Court, although the similarity between the trademark signs could make a little seasoned consumer believe that the products of the international class No. 5 placed in the market of pharmaceutical products by S. I. LTD. and distinguished with the mark Anx, belong to the plaintiff, the argument is not of receipt since Anx is applied to a range of products very different from Arx that cannot be obtained without a controlled prescription, nor can acquire the necessary notoriety to cause that the consumer of that medicine is inclined to acquire the pharmaceutical products offered by the other laboratory" ([4]).

Regarding the determination of when a trademark should be considered as notorious, it is also usually invoked in the cases found Article 16.2 of the TRIPS Agreement, which indicates in its end: “In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark”, requiring proof or objectivity of notoriety “only in the country it tries to be protected” ([5]). Concerning the protection of the notorious trademark based on Articles 1 and 16 of the TRIPS plus 6bis of the Paris Convention, it was understood in one concrete case that such protection could be even broader if the notoriety in the country of origin of the mark or its recognition in several countries were examined ([6]). Uruguayan jurisprudence used Articles 16.1, 16.2 or 16.3 of TRIPS (sometimes cited in isolation, jointly in other cases, or sometimes making generic reference to article 16) to protect well-known marks against practices of indirect confusion or dilution, proclaiming that this constituted exceptions to the principle of specialty ([7]).

The jurisdictional Uruguayan protection of the well-known mark pays attention to Articles 16.2 and 16.3 of the TRIPS Agreement, to deny the registration of trademarks whose sign or name may cause confusion, regardless of the international class they are wanted to be registered. The notorious or well-known brand is characterized by the evidence of its international fame, or by its diffusion. Notoriety allows us to circumvent the principle of specialty, and to postulate that the registration of a trademark that seeks any reproduction of a well-known trademark violates the rights of those who have proven the previous notoriety of its sign ([8]).

In the protection of trade names, Articles 16.2 and 16.3 of the TRIPS had been used in addition with Article 6bis of the Paris Convention, to empower the protection provided by national standards when these business names were well known ([9]).


2) Through the TRIPS Agreement, the Uruguayan courts determined that Article 6bis(3) of the Paris Convention is self-executable, and that the use of a trademark has no time limit to be prosecuted when it is used in bad faith

The Paris Convention for the Protection of Industrial Property ([10]), in matters of marks provides in its Article 6bis(3) that “No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith”. Before the ratification of TRIPS, the Uruguayan jurisprudence was debating whether that norm was programmatic (that is, whether it marked an orientation that was not applicable until the State sanctioned a norm that expressly consecrated it) or whether it was self-enforceable or self-executable (that is, if it was directly applicable by itself).

Under the argument that TRIPS provides in its Article 1.1 that “Members shall give effect to the provisions of this Agreement” and in its Article 2.1 that “Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)”, reinforced by Article 2(1) of the Protocol on Harmonization of Intellectual Property Norms in MER.CO.SUR in the Field of Trademarks, Indications of Source and Appellations of Origin, and by Article 9.2 of the Interregional Framework Cooperation Agreement between the European Community and the Southern Common Market, which establish that the States are obliged to observe the norms and principles of the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property (1994), in accordance with the commitments assumed in the TRIPS Agreement to ensure an adequate and effective protection of Intellectual Property rights, the courts of Uruguay set the precedent that Article 6bis(3) of the Paris Convention was self-enforceable, and therefore, the action to pursue the use of a trademark in bad faith is not subject to temporal limits. "This Article is not only a self-executable rule, but a positive law in force in our country. Therefore, nowadays the question concerning whether the action for the prohibition or use of registered or notorious trademarks would have time limit or not, is resolved” ([11]). Within this line, some judicial decisions have pointed out that, because it is a matter of substance and not formal, it is at the moment of the final judgment when it must be previously analyzed whether the trademark use was in good or in bad faith, to determine whether the action for cessation of trademark infringement has prescribed or not ([12]).


3) The TRIPS is a complementary rule of the national civil norms, to determine convictions for damages for unfair competition

The Uruguayan justice has affirmed that international norms such as the TRIPS and Article 10bis of the Paris Convention, qualify "the illicit or, more precisely, certain conducts that give rise to the illicit called unfair competition, without exhausting the list of behaviours that can configure this misconduct. The clear thing is that a parallel system of responsibility is not established, so that, necessarily, that international rules must be applied... with the national general extra-contractual norms”, like Article 1319 of the Civil Code ([13]).


4) The TRIPS Agreement and the Uruguayan jurisprudence in the protection of undisclosed information

The Uruguayan courts have considered the TRIPS to protect and sanction the undue use of undisclosed information. It has been stated that the undisclosed information (which in the concrete case could not be demonstrated it was public), trade secrets or technopractical knowledge are protected by the TRIPS (Article 39 thereof) due to its commercial value, because to be reserved and for having been subject to reasonable measures to keep them covered, disregarding their protection of the regulations related to copyright. It was determined that the violation of an industrial secret or undisclosed information is an act of unfair competition, because it violates the private sphere of the company in its desire to keep the information hidden and precisely secret. This undisclosed information is an intangible good, worth for those who obtained it lawfully, derived from the competitive advantage that allows to take advantage of something that others can not, because they do not know it. Following the World Trade Organization guidelines, it was settled that although the TRIPS Agreement does not impose that undisclosed information be treated as a form of property, it does protect that persons who have legitimate control of that information have the possibility to prevent it could be disclosed to third parties or could be acquired or used by third parties without their consent, in a manner contrary to honest commercial uses. It was defined that the expression “in a manner contrary to honest commercial practices” meaned as the World Trade Organization describes, “at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition”. And it was established that the judicial action must protect these reserved data against any disloyal commercial use and any disclosure made without the consent of the one who has legitimate control over the information, except when necessary to protect the public, or unless measures are adopted to guarantee the protection of the data against any unfair commercial use. Thus, if the facts that are held to be certain are suited to confirm a hypothesis of unfair competition, "there can be no hesitation that the use of undisclosed information of these proceedings, is capable of configuring an illicit act with suitability to affect patrimonially to the plaintiff, of which obviously, in accordance with the principles received in our order, derives its right to obtain its repair and cessation of that harmful acts” ([14]).


5) Direct use of the TRIPS to order the forfeiture and destruction of merchandise in infringement

The 6th Court of Appeal Civil Division ordered the seizure and destruction of the goods made in violation of the patent rights, and of the instruments useid for their elaboration, as an effective way to punish and dissuade the infractions, based on the TRIPS Agreement. This court considered that "This conclusion is supported by the provisions of Article 46 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)..., which expressly establishes that the judicial authorities are empowered to order that the infringing goods be, without any compensation, removed from commercial circuits or that be destroyed, provided that this is not incompatible with the existing constitutional dispositions”. For the Uruguayan justice, then, that Article 46 "...allows judges to order that the materials and instruments that have been used predominantly for the production of infringing goods be, without any indemnization, eradicated from the commercial market, so that the risks of new infringements could be minimized" ([15]).

In criminal proceedings related to merchandises in customs transit, the judges of Uruguay have applied directly international norms in the matter of trademarks, mentioning  among other rules available, the TRIPS  Agreement ([16]).


6) Obligations related to acts prior to the date of application of the TRIPS Agreement

The Uruguayan Administrative Contentious Court has affirmed that, when the old patent regime of Law No. 10.089 (prior to Law No. 17.164 of 2 September 1999, which came into effect on 18 January 2000 in Uruguay) did not authorize the patenting of medicinal compositions or chemical products, the application for the patent revalidation had been correctly rejected, since the old law did not allow generically the patenting of medicinal compositions or chemical products. Notwithstanding the TRIPS began to be applied in Uruguay by Law No. 16.671 in December 1994, that is to say, before the reform of Patent Law No. 10.089 by Law No. 17.164, it was affirmed that Article 70.8 of the TRIPS Agreement referred to applications and not to patents previously granted abroad, so that regime did not include the so-called revalidations or import patents, that were in themselves an exception to the general system of patenting ([17]).


III. By way of conclusions

In the Oriental Republic of Uruguay, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), despite having validity and being an instrument of law, in this country is rarely mentioned or applied by its national justice on Intellectual Property matters. This situation could be due to the scarce diffusion that the TRIPS Agreement has had in the Uruguayan Judiciary Power, to the almost null formation that the Uruguayan judges have in general about Intellectual Property laws, and because that sort of cases are seldom considered in the Uruguayan Judicial Branch.

In the few judgments in which the TRIPS was invoked, it was used to strengthen the protection of Intellectual Property rights. For example, guiding protection standards, establishing as self-executable the imprescriptibility of actions for cessation of trademark use in bad faith, to calibrate the determination of damages, and to order the seizure and destruction of the goods in infringement and of the instruments or implements used in their manufacture.



Geneva, 12 December 2017










* Presentation given at the Symposium on the TRIPS Agreement and the National Judiciary held in Geneva (Switzerland), from 12 to 15 December 2017. The author wants to thank Drs. Gustavo Fischer and Beatriz Bugallo for their kind comments and suggestions.
[1] For knowing the main norms on Intellectual Property in Uruguay, and the international instruments ratified by this country, see ETTLIN Edgardo, “Normativa sobre Propiedad Intelectual de la República Oriental del Uruguay”, paper, Montevideo, 2012, in “https://es.scribd.com/document/116892643/Edgardo-Ettlin-Normativa-Sobre-Propiedad-Intelectual-en-Uruguay”, 406 pages; and in http://www.wipo.int/wipolex/en/profile.jsp?code=UY”.
[2] MER.CO.SUR: Mercado Común del Sur (Southern Common Market).
[3] Sentences No. 397/2015 and No. 261/2016 of the Contentious Administrative Court. Sentence No.  48/2017 of the 7th Civil Judge (Civil Court) of Montevideo.
[4] Judgment number 286/2017 of the Contentious Administrative Court. The names used are abbreviations of the original ones.
[5] Sentences No. 101/2015 and No. 391/2016 of the Contentious Administrative Court.
[6] Sentence No. 337/2017 of the Contentious Administrative Court.
[7] Sentences No. 574/2013, No. 391/2016, No. 362/2017, No. 651/2014 and No. 719/2015 of the Contentious Administrative Court.
[8] Sentences No. 345/2014 and No. 578/2016 of the Contentious Administrative Court.
[9] Sentence No. 737/2017 of the Contentious Administrative Court.
[10] In Uruguay, the Paris Convention for the Protection of Industrial Property was ratified by Decree-Law No. 14.910 of 19 July 1979.
[11] Sentences No. 112/2012, No. SEI-0008-000116/2013 and No. SEF-0008-000095/2017 of the 7th Court of Appeal, Civil Division. Sentence No. 112/2012 of this Court changed its previous criteria, which established that the action for cessation of trademark infringement expired in a year (sentence No. 193/2008, based on a national disposition, Article 89 of Law No. 17.011). In the line that it does not operate any kind of temporal limitations for the action for cessation of trademark use in bad faith, see sentence No. SEI 0003-000016/2016 of the 1st Court of Appeal, Civil Division (with a discord); sentences No. i-711/2011 and No. DFA-0004-000519/2013 of the 5th Court of Appeal, Civil Division; sentences No. 249/2003 and No. SEI-0005-000021/2017 of the 2nd Court of Appeal, Civil Division; sentences No. 127/2002, No. 109/2010 and No. 90/2011 of the 6th Court of Appeal, Civil Division.
[12] Sentences No. 112/2012, No. SEI-0008-000116/2013 and No. SEF-0008-000095/2017 of the 7th Court of Appeal, Civil Division.
[13] Sentence No. 98/2010 of the 2nd Court of Appeal, Civil Division.
[14] Sentence No. 24/2007 of the 3rd Court of Appeal, Civil Division.
[15] Sentence No. 318/2009 of the 6th Court of Appeal, Civil Division.
[16] For example, sentences No. 506/2014 of the 4th Court of Appeal, Criminal Division, and No. 379/2009 of the 1st Court of Appeal, Civil Division.
[17] Sentences No. 228/2015, No. 534/2015 and No. 318/2016 of the Contentious Administrative Court. Also from this Court, judgments No. 179/2006, No. 372/2006, No. 511/2006 and No. 577/2006.