INTERNATIONAL TRADEMARK ASSOCIATION BORDER MEASURES IN THE ANDEAN REGION FERNANDO TRIANA TRIANA, URIBE & MICHELSEN Calle 93B No P.4, Bogotá, D.C., Colombia, Tel.: (57-1) , Fax (57-1) – http//

INTERNATIONAL TRADEMARK ASSOCIATION AGENDA ►Introduction ►Decision 486 of the Andean Community ►Border Measures in the Andean Region ►Analysis by country: ►Colombia ►Ecuador ►Venezuela ►Bolivia ►Perú ►Conclusions

INTERNATIONAL TRADEMARK ASSOCIATION ►INTRODUCTION ANDEAN REGION

INTERNATIONAL TRADEMARK ASSOCIATION INTRODUCTION ANDEAN REGION Privileged geographical location for nautical, aerial and terrestrial commerce. It has and endures a social and economical situation which smoothes the progress of trademark piracy and counterfeit.

INTERNATIONAL TRADEMARK ASSOCIATION DECISION 486 OF THE ANDEAN COMMUNITY

INTERNATIONAL TRADEMARK ASSOCIATION ►It is the applicable Industrial Property legislation, in the Andean Community (Colombia, Perú, Ecuador and Bolivia). ►Enforceable since December 1, ►It fulfills the provisions of the TRIPS Agreement. ►Venezuela is no longer a country of the Andean Community and therefore Decision 486 is not enforceable there. DECISION 486 OF THE ANDEAN COMMUNITY

INTERNATIONAL TRADEMARK ASSOCIATION BORDER MEASURES IN THE ANDEAN REGION

INTERNATIONAL TRADEMARK ASSOCIATION ►It complies with the regulations of the TRIPS. ►The Border Measures proceeding applies for trademark infringement along with Copyright infringement cases, leaving outside its normative protection other IP infringement cases related with Patents, Industrial Designs, Trade Names, Slogans, etc. BORDER MEASURES IN THE ANDEAN REGION

INTERNATIONAL TRADEMARK ASSOCIATION “Article The owner of a registered trademark who has valid grounds for suspecting that the importation or exportation of counterfeit trademark goods will take place, may request the competent national authority to suspend this customs operation. The conditions and hand stipulated in the domestic legislation of the Member Country concerned shall be applicable to this request and to such an order as that authority may issue. The party requesting measures to be taken at the border shall be required to supply the necessary information and a sufficiently detailed and precise description of the goods subject to the alleged infringement so they can be identified. The competent national authority may, if permitted by the domestic laws of the Member Country, order the application of measures at the border ex officio.” BORDER MEASURES IN THE ANDEAN REGION

INTERNATIONAL TRADEMARK ASSOCIATION ► The owner of the IP right files a written complaint, before the customs authority including: ►Evidence of trademark right and/or copyright (Certificate of Registration) ►Proof of the existence of the alleged infringement. ►The Customs authority inspects the merchandise. BORDER MEASURES IN THE ANDEAN REGION Procedure:

INTERNATIONAL TRADEMARK ASSOCIATION ►Customs authority orders or refuses to order the suspension and/or withdrawal of the custom operation (importation or exportation). ►The IP right owner has ten days in order to prosecute the infringer. ►In case there is no proof of existence of the trademark and/or copyright infringement, the suspension of the custom operation is lifted. BORDER MEASURES IN THE ANDEAN REGION Procedure:

INTERNATIONAL TRADEMARK ASSOCIATION ►The merchandise remains under the customs authority´s custody until the judicial authority decides its destination. ►Small non commercial quantities of merchandise corresponding to the traveler´s personal belongings or small packages are excluded of said measures. BORDER MEASURES IN THE ANDEAN REGION Procedure:

INTERNATIONAL TRADEMARK ASSOCIATION ANALYSIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ►COLOMBIA ►The legal provision is Decree Nº 4540 of 2006, enacted by the President of the Republic. ►Border measures apply only to trademarks rights and copyrights. ►Relevant authorities: ►Customs: DIAN. ►Trademark office: Superintendence of Industry and Commerce (SIC). ►Judiciary: Judges and Public Prosecutors. ANALYSIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ►COLOMBIA ANALYSIS BY COUNTRIES Definition of infringing merchandise, under the terms of the Decree: “It is any type of merchandise (including its packaging), containing any type of identical and/or confusingly similar and unauthorized expression, in connection to a registered mark, violating the trademark´s owner’s rights”. Definition of copyright infringement under the terms of the Decree: “ Is the unauthorized or prohibited use of works covered by copyright law, in a way that violates one of the copyright owner's exclusive rights such as the right to reproduce or perform the copyrighted work, or to make derivative works.”

INTERNATIONAL TRADEMARK ASSOCIATION ANALYSIS BY COUNTRIES The trademark and/or copyright owner requests the customs authorities to suspend the operation and take control over the infringing cargo. To this end, the trademark and/or copyright owner will have to file a short brief explaining the basis of the border measure and providing evidence of the right (s) that are apparently being infringed. Likewise, the trademark and/or copyright owner will have to post a bond of 20% of the estimated financial value of the seized cargo to guarantee the payment of any damages that could be caused to the importer, exporter or third parties. ►COLOMBIA ►PROCEDURE:

INTERNATIONAL TRADEMARK ASSOCIATION ►COLOMBIA ►PROCEDURE : ANALYSIS BY COUNTRIES The trademark and/or copyright owner has 10 days to file a complaint, either civil or criminal, before the Colombian Courts, to prosecute the infringer. A copy of the complaint, duly stamped by the Secretary of the Court, will have to be sent to the customs authorities. In case the IP right owner fails to file the complaint, within the granted term, the border measures are lifted and the proceeding is terminated. Therefore, the customs operation may continue.

INTERNATIONAL TRADEMARK ASSOCIATION ANALISIS BY COUNTRIES The Civil or Criminal Court will make the final decision concerning the merchandise. Until such decision is made, the customs authorities will have to maintain the suspension of the import and/or export operation and will keep the merchandise in custody. In this regard, the customs authority (DIAN) has a database including pertinent information of trademark owners, and particularly of the most relevant ones, to facilitate their contact in case of an infringement. Goods yield to the travelers´ regime, urgent deliveries or postal traffic not constituting commercial operations, are excluded of these measures. ►COLOMBIA ►PROCEDURE:

INTERNATIONAL TRADEMARK ASSOCIATION ►BOLIVIA The customs authority is the COA. Leading the terns of article 250 of Decision 486, the Bolivian Administrative Authority has formalized a judicial proceeding by means of which a precautionary or injunction measure is requested by an IP right owner, which has to be filed before the SENAPI. ANALYSIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ►ECUADOR ►Border measures are applied as a variation of the Administrative Protection Proceeding regulated by the Intellectual Property Law. ►Relevant Authorities: ►Ecuatorian Institute of Intellectual Property –IEPI-. ►Custom Administrators. ANALISIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ►ECUADOR ANALYSIS BY COUNTRIES Procedure: Action may initiate ex officio or as per request addressed by the IP right holder. The request may be filed before the customs authority or the IEPI. Once the Border Measures are decreed, the applicant might be ordered to post a bond to guarantee the payment of any eventual damage that the measure can cause to the importer- exporter. Once the measure is confirmed, the merchandise will have to be submitted before the criminal judges. IEPI may also impose economic sanctions, which will be applied without prejudice of the ruling issued by the criminal justice.

INTERNATIONAL TRADEMARK ASSOCIATION PERÚ –After Peru executed the Free Trade Agreement with the United States of America, the legislative and executive branches enacted the following provisions: –Legislative Decree Nº 1092, by means of which trademark rights and copyrights are protected. –Supreme Decree Nº EF which establishes the pertaining internal procedure before the Customs Authority and the Trademark Office, which is as follows: –The infringing cargo might be detected by the IP right owner or by the customs authority (SUNAT). In either case, the IP right owner must file a judicial complaint for trademark and/or copyright infringement. ANALYSIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ►VENEZUELA The national customs authority is named SENIAT and is divided in several branches located in the main cities of the country. The current enforceable legal provision is the Administrative Ruling Nº SNAT/2005/0915 which develops the Law of Intellectual Property Protection during Customs Procedures. Furthermore, the Criminal Statute punishes these kind of conducts leading the terms of Counterfeit Law enacted on December, 2005 ANALYSIS BY COUNTRIES

INTERNATIONAL TRADEMARK ASSOCIATION ANALYSIS BY COUNTRIES ►VENEZUELA The owner of an IP right files a Complaint before the Customs National Intendence (INA) in the port of entry, providing the pertaining information linked to the counterfeited merchandise. The INA begins an administrative proceeding, with the investigation of the customs operation and ordering the seizure of the allegedly false goods. Once an official inspection is performed, the customs agents take samples of the products. From this moment, the IP owner has a term of 10 working days to file a Complaint for the IP infringement.

INTERNATIONAL TRADEMARK ASSOCIATION ANALYSIS BY COUNTRIES ►VENEZUELA While the legal term is ongoing, the INA provides the Complainant with a sample of the infringing product in order for him/her to officialy confirm whether or not the good is counterfeited. In case it is counterfeited, the entire cargo is confiscated and sent to the premises of the INA for its custody. Meanwhile, the judicial proceeding keeps its course, either before the Prosecutors office of the city where the cargo was seized, or before a Customs Court.

INTERNATIONAL TRADEMARK ASSOCIATION CONCLUSIONS

►Border measures are useful tools which are in process of being implemented recently in the Andean Region. ►First steps have been taken in order to turn Border measures into an effective trademark and/or copyright protection mechanism. ►It is necessary to spread these measures and defeat the prevention that the custom authorities and the IP community has about this matter. CONCLUSION CONCLUSIONS

INTERNATIONAL TRADEMARK ASSOCIATION ►In the future, it will be necessary to promote a further coverage the scope of the of Borders measures, in order to grant protection of other IP rights such as Patents, Industrial Designs, etc. ►It is necessary for the custom and trademark authorities to develop permanent communication systems (on line data bases) with the IP rights owners. CONCLUSIONS

INTERNATIONAL TRADEMARK ASSOCIATION Acknowledgments Wolfgang L. Ohnes Casso, JONES & CIA BOLIVIA Tel: (5912) Calle Reyes Ortiz No. 73, Edificio Torres Gundlach, Torre Oeste, Piso 5to, Oficina 502-B La Paz - Bolivia Cecilia Falconi Pérez FALCONI PUIG ABOGADOS Tel: Amazonas N y Roca, Edificio Río Amazonas, Of. 900, Quito - Ecuador Jose Barreda BARREDA MOLLER Tel: Lima - Peru

INTERNATIONAL TRADEMARK ASSOCIATION THE END Calle 93B No P.4, Bogotá, D.C., Colombia, Tel.: (57-1) , Fax (57-1) – http//