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