ANDEAN FREE TRADE AGREEMENT (COLOMBIA, ECUADOR, PERU) – UNITED STATES OF AMERICA OBJECTIVE “To seek that Intellectual Property has reasonable levels of protection (with the purpose of stimulating the production of goods, services and artistic and literary creations in Colombia), but without jeopardizing neither the health of the population nor the possibility of counting on medicines and other products at accessible prices for the consumer public. In the same way, also negotiating limitations and exceptions to Intellectual Property rights.”

TOPICS OF INTEREST FOR COLOMBIA IN THE FREE TRADE AGREEMENT In the negotiation table, which corresponded to the sector of the Intellectual Property, the following subjects of interest were highlighted in regard to trademarks : Relation between Geographical Indications and Trademarks. Common Use Denominations. Trademark License Registrations. Electronic filing of Trademark Applications. Trademark Law Treaty (TLT). Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks Relation with TRIPS Agreement.

TEMACOLOMBIAINTERES PERCIBIDO POR PARTE DE E.U.A. Relation between Geographical Indications and Trademarks. Keeping the level of protection of Geographical Indications in regard to trademarks, in order to take advantage of the potential that the country has in this matter. To diminish the protection of the Geographical Indications in regard to trademarks. Common Use Denominations. To avoid that the protection of trademarks may affect the sanitary policies of information to the public. To strengthen the trademark regime. Trademark License Registrations. To maintain the registry as source of information and economic resources. To eliminate the formalities and avoid to disclose the content of license contracts.

. Electronic filing of Trademark Applications. To increase the efficiency of the Trademark Office in order to provide a better service. Contribute to the efficiency of the Trademark Office, as guarantee for the effectiveness in the protection of Intellectual Property rights. Trademark Law Treaty (TLT). To avoid the adoption of provisions incompatible with the Andean Community regulations. Legal security for its companies in the registration of trademarks in Colombia. Reduce of bureaucratic costs. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. To facilitate the registry of Colombian trademarks in other countries. Legal security for its companies in the registration of trademarks in Colombia. Speediness in the trademark registry.

TRADEMARKS To ratify or accede to the Trademark Law Treaty (1994) by January 1, 2008, or the date of entry into force of the Free Trade Agreement, whichever is later. To ratify or accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989), by January 1, No party shall require as a condition of registration, that signs be visually perceptible. That Geographical indications may constitute certification or collective marks. Emphasis in the Application of article 20 of the TRIPS Agreement in regard to the fact that “other requirements” must not reduce the use and effectiveness of the trademark. FINAL RESULTS OF THE NEGOTIATION OF THE FREE TRADE AGREEMENT.

Emphasis in the right that it is granted over the trademark before third parties, when confusingly similar signs are used. Possibility of establishing limited exceptions to the rights conferred by the registration of the trademark. Application “mutatis mutandis” of Article 6 of the Paris Convention for the Protection of Industrial Property, to the goods or services that are not identical or similar to those identified by a well-known trademark. That for the effect of determining the Notoriety of a trademark it is not required to prove the reputation of the sign beyond the sector of the public who normally deals with the merchandise or relevant services.

Each party shall provide a system for the registration of trademarks, which shall include: a) A serving in writing to the applicant of the refusal of the registration of the trademark. b) The possibility to contest an initial refusal and to appeal judicially a final refusal to the registration. c) The opportunity to file oppositions or to seek the invalidity of a mark already granted. d) A requirement that decisions in opposition or cancellation proceedings be reasoned and in writing. Provision of a system for the electronic application, electronic processing, registration and maintenance of trademarks. Provision of a publicly available database, including an online database of trademark applications and registrations.

Condition so that the publication or registration of a trademark, discloses the goods and services that pretends to be covered, in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks (1979). That the relation of goods and services may be studied without consideration to the International Class to which they belong. That the initial registration and each renewal are granted for a term of no less than ten (10) years. No party may require recordation of trademark licenses to establish the validity of the license, to assert any rights in a trademark, or for other purposes.

GEOGRAPHICAL INDICATIONS That the registration process of a Geographical Indication shall be carried out: a) With the minimum of formalities. b) With a regulation readily available to the public. c) With the opportunity to file oppositions or seek the cancellation of the same once it has been granted. d) With clear provisions in regard to the filing of applications and petitions. The possibility to deny the registration of a Geographical Indication when the same may result in conflict with a confusingly similar trademark application or a registration which has been obtained in good faith.

CURRENT APPLICABLE LAW IN REGARD WITH THE PROTECTION OF TRADEMARKS IN COLOMBIA DECISION 486 OF THE ANDEAN COMMUNITY – (2000). AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS AGREEMENT) – (1994). PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY – (1967). GENERAL INTER-AMERICAN CONVENTION FOR TRADE MARK AND COMMERCIAL PROTECTION – (1929). NICE AGREEMENT CONCERNING THE INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES FOR THE PURPOSES OF THE REGISTRATION OF MARKS – (1979).

COMMON GENERAL PROVISIONS REGARDING INTERNATIONAL TREATIES All the Trademark related International treaties, have as basis for their implementation, the fact of being compatible with the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY – (1967). Within the governing principles of these treaties there are always clauses of NATIONAL TREATMENT and MOST FAVOURED-NATION TREATMENT. The agreed text within the framework of the negotiation of the FREE TRADE AGREEMENT, includes the following principles: - More Extensive Protection and Enforcement. - National Treatment - Application of the Agreement to Existing Subject Matter and Prior Acts. - Transparency

Remissions and Concordance between the International Treaties and the text of the Free Trade Agreement. In regard to the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY – (1967). ARTICLE of FTA: “Article 6bis of the Paris Convention for the Protection of Industrial Property (1967) shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.” Concordance: Articles 16.2 and 16.3 of TRIPS.

In regard to the NICE AGREEMENT CONCERNING THE INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES FOR THE PURPOSES OF THE REGISTRATION OF MARKS – (1979). ARTICLE of FTA: “Each Party shall provide that: (a) each registration or publication that concerns a trademark application or registration and that indicates goods or services shall indicate the goods or services by their names, grouped according to the classes of the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1979), as revised and amended (Nice Classification); and (b) goods or services may not be considered as being similar to each other solely on the ground that, in any registration or publication, they appear in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other solely on the ground that, in any registration or publication, they appear in different classes of the Nice Classification.”

In regard to the AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS AGREEMENT) – (1994). Article 15 of TRIPS: “... Members may require as a condition of registration, that signs be visually perceptible.” (Highlighted out of the original text). Development of TRIPS. Article of FTA: “No Party shall require, as a condition of registration, that signs be visually perceptible...” IN the same way we find other articles of TRIPS developed within the text of the Free Trade Agreement, among the same: Articles and of FTA with Article 16 of TRIPS. (Rights Conferred). Article of FTA with Article 17 of TRIPS (Exceptions). Article (c) of FTA with Article 15.5 of TRIPS (Oppositions and Cancellations). Article of FTA with Article 18 of TRIPS (Term of Protection). Article of FTA with Article 21 of TRIPS (Licensing and Assignment).

In regard to DECISION 486 OF THE ANDEAN COMMUNITY This Decision constitutes the applicable regime of Industrial Property for the countries of the Andean Community (Bolivia, Ecuador, Peru and Colombia), reason for which the harmonization of the text decided within the FTA, is a very sensible subject. Conditions for Registrability. Article of FTA:It does not require as a condition for registration that the sign be visibly perceptible. Article 134 of D. 486: Requires as condition for its registration that the trademark be capable of graphic representation. Collective and Certification Marks – Geographical Indications. Article of FTA: Establishes that signs used as Geographical Indications, may constitute a Certification or Collective Marks. Article 180, 185 y 201 of D. 486: Provide respectively different and independent concepts for Collective Marks, Certification Marks and Geographical Indications.

ELECTRONIC APPLICATIONS. Article of FTA: Includes an electronic system for the filing, maintenance and registration of trademarks, as well as an online database available to the public. D. 486: Does not provide any requirement in this regard, nor said electronic system is completely functioning in any of the Andean Community countries. LICENSES. Article of FTA: Does not require as condition to establish the VALIDITY of a trademark license its recordal before the Trademark Office. Article 162 of D. 486: It is mandatory to record the trademark licenses in order to have effect before third parties.

INCORPORATION OF TWO NEW INTERNATIONAL TREATIES Trademark Law Treaty (1994). The importance of this treaty is the inclusion within the national regime of the multi-class registration of trademarks, which does not operate in any Andean Community member country. “Article 3.5 of TLT: (Single Application for Goods and/or Services in Several Classes) One and the same application may relate to several goods and/or services, irrespective of whether they belong to one class or to several classes of the Nice Classification.” Certainly, an incompatibility between this provision and the Decision 486 of the Andean Community exists, and its inclusion in the national regime could generate strong reactions in the other member countries.

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989). It is one of the most controversial International treaty in Latin America. To this date only Colombia has agreed to ratify it. Much has been spoken about its advantages and disadvantages, finding algid points of discussion in respect to its conflict with Decision 486 of the Andean Community, namely on the following subjects: Regulation of the Opposition procedure, namely Andean Oppositions. Publication of trademarks in the Colombian Industrial Property Gazette. Petitions to competent authorities, in this case WIPO. Recordal of Trademark Licenses. The registration of “specific color” trademarks. Regulation of Cancellation Actions for non use and Nullity Actions.

In addition to the legal considerations and several issues in regard with the incompatibility between the Madrid Protocol with the Colombian Constitution, the convenience of these treaties for Colombia is also in discussion. Namely due to the economic resources that must be invested and the administrative changes that the Trademark Office must have to undertake for the timely and adequate execution of the obligations derived from the same. It is a real concern, the possible avalanche of trademark applications, the “Central Attack” and the real use of these treaties by the Colombian corporations, represented in a 96% by Small and Medium size enterprises. Curiously, at no moment of the negotiation of the FTA the discussion was opened on the convenience neither on the adoption of the Trademark Law Treaty (1994), nor the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989). Until the last moment of the negotiation we thought that both treaties would be included under a clause of “BEST EFFORTS”. Still the reason for which Colombia assumed the obligation to adhere to these treaties without previous discussion and in so short term is unknown.

IMPLICATIONS OF THE COMING CHANGES IN VIRTUE OF THE FREE TRADE AGREEMENT. 1.ADVANTAGES: - Consolidation of the market with the United States of America, which nowadays is the first commercial partner of Colombia. - Greater Facility for the export of trademarks. - High commitments to improve the efficiency of the Trademark Office. 2.DISADVANTAGES: - Very short term to make the necessary adjustments for the adoption of these treaties, on the part of the Trademark Office and the Government. - Lesser protection in regard to Geographical Indications. - The multilateral treaties adoption should be discussed in an independent forum to the one of a bilateral treaty. - The adoption of the mentioned treaties can generate strong reactions of other member countries of the Andean Community, by virtue of the unbalance that it generates. - Possible Changes to Decision 486 of the Andean Community, which already was a consolidated regime.

3. MEASURES TO BE TAKEN Governmental: To regulate the adoption of the mentioned treaties. To harmonize the provisions which result incompatible to the Decision 486 of the Andean Community. To approve a budget that allows to fulfill the obligations derived from the agreements and the new electronic system of marks. On the part of the Law Firms: To restructure the business due to the changes that will arise, in special for the adoption of the Madrid Protocol. To take an active position in the Regulation of the mentioned treaties and the harmonization of the applicable legislation.

CONCLUSIONS 1. Everything said in this presentation will depend on the approval of the Free Trade Agreement in the respective legislative organs of Colombia and the United States of America. On the part of Colombia, it seems not to have greater oppositions although there are serious doubts of its Constitutionality. On the part of the United States, new negotiations in the labour chapter are being opened and the political panorama could have greater incidence in its approval.

2. It is found objectionable and reproachable to use international instruments, as trade tokens in the negotiation of Free Trade Agreements, moreover with respect to non-related matters. Apparently, it seems that in this case, the ratification of the “Trademark Law Treaty” and the “Madrid Protocol”, came as a consequence of the breach of the Colombian obligations derived from the Patent Cooperation Treaty.

3. Definitively, the change of provisions in the trademark registration systems must have a deep and independent discussion. No State should have to be committed to subscribe and to ratify multilateral treaties by virtue of obligations emanated from bilateral treaties.