Archive for the 'Prensa Extranjera' Category

Improved protection for IP owners in Latin America in INTA Daily News

INTA daily news, 07 May 2013, Alli Pyrah

Read complete article here

Read all INTA Daily News 2013 in PDF here

Countries in Latin America and the Caribbean are cracking down on trademark squatters, combating pirates with tougher border measures and expanding IP rights to bring them in line with those in more developed countries. In particular, well-known and famous brands are gaining increased protection in Latin America as a result of international agreements and precedents set by recent cases.

Thwarting trademark squatters in Chile

In Chile, a new bill being considered by the country’s Congress aims to increase protection for brand owners but may meet with objections on constitutional grounds. The Chilean Industrial Property Law, which was published in March 2005, would bring the country’s law into line with international treaties, including the TRIPS agreement. “This new law will change many very important aspects of the current law,” says Rodrigo Velasco Santelices of Alessandri in Chile, who will be focusing on the proposed legislation during today’s session.

The law would introduce use as a requirement for maintaining ownership of a trademark. At present, Chile is one of few countries which do not have this requirement. The new legislation would allow anyone to file a cancellation action against a trademark on the grounds of non-use. Velasco says this aspect of the law will have important consequences for brand owners, particularly in the pharmaceutical industry.

In Chile, it is common practice to register and not use a trademark. “This has also unfortunately helped trademark piracy,” says Velasco. “If you don’t have use requirements it’s very easy to obtain a trademark registration because the legitimate owner of that trademark can’t file a cancellation due to non-use. I think this amendment has the intention of fighting piracy.”

The practice of registering a trademark with no intent to use it in the foreseeable future was partly due to the fact that historically, it took a long time to register a trademark—as long as four to five years if appeals were filed.The law requires certain types of products, such as new drugs, to have a corresponding trademark registered before they are launched. As a result, pharmaceutical companies have many stock trademarks registered.

In recent years, the Chilean government has made efforts to improve the efficiency of the registration process. The Chilean trademark office has now been separated from other branches of the government and given more resources, and it is now possible to file trademark applications online. Velasco says that an application without objections is now typically granted within a year. In a few cases, he has seen a registration completed in as little as eight to 10 months from the filing date.

The new law would also allow marks that are not intrinsically distinctive to be registered if they have acquired distinctiveness through use in the Chilean market; boost protection for famous marks and allow certain nontraditional marks to be registered for the first time; and expand protections for geographic indications and designations of origin, which were previously limited to the wine industry.

In addition, it would allow brand owners to register 3D, color, smell and sound trademarks. At present, sound marks can only be registered if they can be represented graphically as a musical score. “If the new law is approved, people could obtain registrations for simple sounds such as the noise of a HARLEY DAVIDSON motorcycle, which is a trademark in the United States,” says Velasco. “Up until now, it wouldn’t have been possible to register that sound as a trademark in Chile.”

Värde Partners Inc. will acquire FirstCity Financial Corporation

FirstCity Financial Corporation and Värde Partners, inc. entered into a merger agreement under which certain funds managed by Värde will acquire FirstCity.

Alessandri  acted as counsel to Värde and coordinated the due diligence process in relation to the Fisrst City subsidiaries in Chile, including Servinco, Chile’s leading collections company providing services to most of the banking and financial system in Chile.

Alessandri helps HBO defend Sex and the City

Latin Lawyer, Thursday, 22nd November 2012

Chile’s Alessandri & Compañía has helped US cable company Home Box Office (HBO) win a rare judgment recognising Sex and the City as a famous and notorious trademark beyond any class.

The decision was handed down by Chile’s Second Instance Court in June and upheld after appeal on 25 October. Continue reading ‘Alessandri helps HBO defend Sex and the City’

La Polar Pitches Chilean Stock Sale to Avoid Second Bankruptcy Since 1999

(…)

Bankruptcy Risk

“There is a risk of bankruptcy,” said Raul Montero, a partner at law firm Alessandri & Cia in an e-mailed response to questions.

Chilean law allows a company to continue operating and be sold as a whole within two years of declaring bankruptcy, Montero said.

La Polar declared bankruptcy in 1999 before the retailer was acquired by private equity firmSouthern Cross GroupSouthern Cross listed the company’s shares in 2003 and sold its remaining stake in 2006. Today La Polar has no clear controlling shareholder as all of its shares trade freely.

Chilean pension funds, known as AFPs, requested a freeze of La Polar’s expansion plans, an end to executive stock options and clarification on what the money will be used for as conditions to approving the share sale, financial daily Diario Financiero reported yesterday, citing people familiar with the negotiations that it did not identify.

Leer toda la nota de Bloomberg

Arturo Alessandri C. en entrevista con PM Network Magazine: Branching Out

Branching Out

PM Network Magazine (Project Management Institute, Washington D.C. – USA)

Maya Payne Stewart

May 2009

 

Given the precarious state of the global economy, it’s no surprise that companies are looking for new turf to conquer. But all the usual trials and tribulations of planning, organizing and executing projects can get even more complicated when project managers are faced with myriad differences in time zones, languages, work styles and laws.

To navigate cross-cultural terrain, project managers can’t expect instant success with the same old cookie-cutter formulas. While it’s not a revolutionary notion, many companies seem to forget they must learn to adapt to the market at hand.

A 25-year veteran of managing construction projects around the world, Terry Chapman says nothing beats boots on the ground. He first learned this as part of a team at Bovis Lend Lease Inc. when the U.K. project management and construction firm launched a shopping mall development in South Africa in the 1980s. He arrived ignorant of the complexity of the country’s cultural, ethnic and even tribal differences. But in the field, he quickly got an education in how the diversity of work styles could affect a project’s development.

“Before you get there, you wouldn’t imagine trying to dissect things to such a great degree,” says Mr. Chapman, managing director and owner of Queensborough Project Management, London, England. “It’s not black and white. It’s multicultural. There are a lot of competing interests that you can’t comprehend until you actually experience it.”

If project managers want to make it in new markets, they have to realize that they are visitors and respect the nuances of the local business culture before jumping into action. “It would be foolhardy not to understand them, recognize them and operate within those parameters,” Mr. Chapman says.

FACE TIME

The earlier project managers make inperson contact, the better, says J. LeRoy Ward, PMP, PgMP, executive vice president of ESI International, Arlington, Virginia, USA.

“A mistake that people make is thinking they can launch virtually and get the team together later,” he says. But identifying the core team is a step “that needs to happen from the very beginning to establish a personal connection,” Mr. Ward says. “It really is a best practice. The companies that want to ‘save money’ will pay for it in the long run because of confusion at the outset.”

When ESI launched an expansion project into India in 2008, the company had a variety of options, ranging from buying a local business to forging a

partnership.

After Mr. Ward and John Elsey, ESI’s president and CEO, interviewed partners in India, they decided that establishing a business in the region was the best solution.

Naturally, the expansion project couldn’t be handled entirely virtually For one thing, ESI had to have team members on the ground to navigate the country’s licensing and regulatory issues and ensure compliance with local law, as well as set up and staff the office.

 

And that was just the logistical component. To localize ESI’s product offerings for the Indian market, Mr. Ward says he had to meet with clients across the country—including outsourcing giants Wipro and Infosys. Those sessions helped the company understand the needs of the marketplace and customize its courses to make them relevant to the region.

 

In the case of India, that meant shortening the course duration and modifying all the case studies used for instruction. According to Mr. Ward, Indian clients prefer real-world examples that can teach them how to practically apply the knowledge they gain from the courses.

 

But for the project launch to work, the company had to do its

homework.

 

“You need to go there and do all the significant market research to see what it will take to sell your products,” Mr. Ward says. “Never underestimate the amount of time that you need to spend in the beginning with a partner or understanding the marketplace.”

 

GROUND RULES

 

Before companies go barreling into a new market, they should also seek advice from local counsel to minimize legal, tax and other regulatory issues, says Arturo Alessandri-Cohn,

managing director of Santiago, Chile-based law firm Alessandri & Compañía.

 

Multinational giants Benetton Group and Ritz-Carlton began planning projects in the market before talking to local lawyers and were shocked to discover others had already registered their trade names, he says. In Chile there is not a use requirement to register a trademark,

so many companies are forced to buy their own trademarks from local “pirates,” Mr. Alessandri explains.

 

In another example, a Scandinavian who launched a project to build a vineyard in Chile was unprepared for the new social and environmental conscientiousness that led residents to file suit against him.

 

“The client was at times disappointed and frustrated because he thought the mere fact that he was making this investment was enough for people to understand and be positive,” Mr.

Alessandri says.

 

But clearly that wasn’t the case. So the legal team set to work helping the client communicate the project’s merits to local stakeholders and won the lawsuits.

 

THE LOCAL TALENT

 

Staffing up locally also helps project managers anticipate and resolve issues as the project unfolds, says Bruce Howard, president of MWH Business Solutions, a Broomfield, Colorado,

USA-based project management firm.

 

“I’ve lived overseas for 16 years on different programs and I’m always thankful when surrounded by smart, indigenous personnel,” he says. “There are things they are taught through school or learn growing up that I don’t know. Hopefully, I’m smart enough to

ask questions.”

 

MWH got a crash course in U.K. laws and customs when it launched a six-year US$4 billion capital improvement program in Warrington, England for its client United Utilities. The massive initiative, which closed in 2006, included wastewater treatment plants, water-treatment works, overflows and pipelines. With all that work, the company had to scale up from zero to 300 people within the first year—and they couldn’t all be “Yanks.” MWH needed

some homegrown talent, but it also had to do some digging.

 

“First, you have to understand what the laws are, what the regulatory requirements are, the work week, the number of holidays, the different health and safety rules, pension pay,” Mr. Howard says. “You have to understand all of this before you start to talk about [hiring] people.”

 

To find the right project staff, MWH went to the typical places: universities for young workers and employment agencies to augment staff for peaks. The company also relied on its U.K. hires for referrals, regardless of their role within the organization.

 

LISTEN UP

 

When diving into new markets, companies can’t assume it’s business as usual. “Simply because you are used to one business model or one type of data analysis, you think others will provide the same data or approach,” says Stanley She, a Shanghai, Chinabased managing director for Asia Pacific procurement at faucet manufacturer Grohe. Beyond overseeing the nuts-and-bolts of maintaining supply chain integrity, he often acts as an interpreter of sorts—translating the intent of local suppliers’ words and actions for his German colleagues who bring a very different perspective to negotiations.

 

He cites pricing as an area that’s rife with cultural misunderstanding. At Grohe, the German headquarters expects a level of transparency and accuracy in requests for quotes that local suppliers aren’t always inclined to deliver.

 

“When we do our request for quotation, the details of process, overhead and profits—all of the information has to be very transparent,” Mr. She explains. “To our headquarters, it has to be utterly true and reliable, and we can negotiate our view based on that. The fact is sometimes suppliers don’t know what each process contributes to the total cost.”

 

So it’s often more effective to assess the package as a whole, he says, versus haggling over each small element. Nailing down mundane details early—the currency to be used, how numbers and dates will be formatted— helps project teams adapt to new terrain, says Marah Rosenberg, PMP, a former project manager at Avaya and now an independent project

management consultant in Red Bank, New Jersey, USA.

 

“These are not glamorous things but I find that if that’s set out at the very beginning, then you don’t have to think about it again,” she says. “You can start doing the real work that’s about designing and developing the project at hand.”

 

In 2007, her team’s real work was going into the Middle Eastern market with a customized version of Avaya’s 9600 line of IP (Internet protocol) telephones. “When launching in different markets you want to make sure that the visuals customers see on the phone— the letters or numbers—would match their expectations for their language and culture,” she says.

 

The project required many levels of work inside each country to make sure the alterations to the phone’s design suited the local customers. Even before sample phones were produced, Ms. Rosenberg sent slideshows of proposed product changes for review to country managers who understood local customer preferences.

 

Later, she shipped sample phones and software for testing by incountry consumers and oversaw font designs to ensure the text was legible on the displays, read right to left and

morphed accordingly when certain characters were combined.

 

“We have to ensure that we’re meeting our customer’s needs,” she says. “Listening to the voice of the customer is paramount.”

 

ALL TOGETHER NOW

 

When entering new markets, it’s easy to drown in details and lose sight of a project’s true mission. Matts Larsson, director of global training for Lund, Sweden-based Tetra Pak, says cultivating strong project identities across function and geography has helped the

food processing and packaging giant launch projects in 165 countries across the globe.

 

No matter what market it’s headed into, the company puts the focus on project management. Everyone from the sales force to administrative staff is trained on the company’s project management methodology and terminology.

 

“Everybody needs to understand what project management is from the beginning,” Mr. Larsson says, “because it is a project from when the opportunity is created until we have delivered and installed the final solution at the customer site.”

 

Speaking the same language—project management—goes a long way toward

mastering a new market. PM