The term tangible property is literally
everything that can be touch and includes real property and personal property;
this is the definition also for law (Cheeseman, 2010). The U.S. economy is
based on the freedom of ownership of property.
Real estate and personal property are tangible properties, but there is
also the intellectual property rights have value to any business or
individual. The trade secrets makes any
business different from their competitors, trade secrets includes formulas,
patterns, designs, data, customers lists and business secrets. The state laws
impose civil damages and criminal penalties against persons who misappropriate
trade secrets.
Federal laws provide protection for
intellectual property rights, patterns, copyrights or trademarks. The owner is obliged to take precautions to
prevent that secret to be discovered by others.
If the owner doesn’t protect the trade secret, the secret is no longer
subject to protection under state law. The precautions to protect the trade
secret may include fences in buildings, locks on doors and hiring security for
the protection. The owner of a trade
secret can bring a lawsuit against anyone who obtains the trade secret by
theft, bribery or industrial espionage.
If the owner of trade secret wins they can recover the profits made by
the offender for the use of the trade secret, and prohibit the offender of
divulging and using the trade secret.
The Bacardi Corporation filled a lawsuit against
French spirit maker Pernod Ricard over the use of the Havana Club trademark in
the American market. It was a two decade
fight in court for the trademark. The case began in 1994 when Bacardi applied
for a U.S. trademark for Havana Club after they purchased the rights to the
brand from the Arechabales family, a family that make rum in Cuba and sold
Havana Club in the United States in 1930.
The Arechabales family went in exile and the registration lapsed in
1973, Cuba export registers the Havana
Club mark in 1976. Cuba export suit Bacardi when they tried to register the
mark to decades after they register.
After a long battle in court of two decades they took the case to the
Supreme Court, the decision of the Supreme Court was not to intervene in the
trademark dispute. After the Supreme
Court decision Mr. Pernod announced a new trademark Havanista, that he had
register. Registering Havanista
trademark was for him to have an opportunity to distribute premium Cuban rum
one day.
Trademark
property rights for the liquor industry
The government, through the camera projects, protects
the rights of brand liquor
industry. For example, years ago, they worked with the Law no. 265 of
September 4, 1998 - To amend the “Revenue Code of Puerto Rico Internal Revenue
Code of 1994" and to repeal the "Alcoholic Beverages Act of Puerto
Rico " (P. de la C. 1422)
Act 265, 1998.
This law was created to repeal Act No. 143 of
June 30, 1969, as amended, known as the “Beverage of Puerto Rico" in order
to adjust the Alcoholic Beverages Act of Puerto Rico with the new changes in
trade world, and give the Treasury Department the flexibility to attend and
oversee agile development liquor trade.
It is common knowledge that the Alcoholic
Beverages Act of Puerto Rico responded to an original scheme of an amended law
in 1969. From then until the present, there have been developments in the
liquor industry that warrant significant changes to promote better movement of
alcoholic beverage products supervised by the Department of Finance. This Act,
with the changes proposed today, must upgrade the consumption patterns of
alcoholic beverage products within Puerto Rican society, free trade of these
and adequate oversight by the Treasury Department. To achieve these purposes
this Act was amended. Here are the sections that apply to the protection of
trademark rights in the liquor industry:
·
Section 4051 - . Formula for Alcoholic
Beverages
No person shall manufacture and package liquor for commercial purposes without first obtaining the approval of the Secretary of the formulas of the products , and demand from the Secretary , submit samples thereof.
No person shall manufacture and package liquor for commercial purposes without first obtaining the approval of the Secretary of the formulas of the products , and demand from the Secretary , submit samples thereof.
·
Section 4052 - . Denatured Alcohol
(a) Formulas - . No person shall manufacture denatured spirits or specially denatured alcohol for industrial or commercial purposes, including the rubbing alcohol and goods made from denatured alcohol, unless the formula for making the same has been approved by the Secretary. Those persons shall submit samples of products when required by the Secretary.
(a) Formulas - . No person shall manufacture denatured spirits or specially denatured alcohol for industrial or commercial purposes, including the rubbing alcohol and goods made from denatured alcohol, unless the formula for making the same has been approved by the Secretary. Those persons shall submit samples of products when required by the Secretary.
·
Section 4054 - . Rum Puerto Rico
All rum label use in the phrase " Ron de Puerto Rico " and " Puerto Rican Rum " should be manufactured and aged for a minimum of twelve (12) months under the control of the government of Puerto Rico and meet the requirements for rum in this subtitle, and the quality requirements established by the Secretary of the Treasury by regulation to that effect.
All were to be shipped or exported from Puerto Rico must be produced and aged under government control and meet the requirements for rum in this Subtitle , and quality requirements established by the Secretary by regulation to that effect. Distilled spirits shall be not less than twelve (12) months of age at the time of being removed from the bonded warehouse where it’s aged.
All rum label use in the phrase " Ron de Puerto Rico " and " Puerto Rican Rum " should be manufactured and aged for a minimum of twelve (12) months under the control of the government of Puerto Rico and meet the requirements for rum in this subtitle, and the quality requirements established by the Secretary of the Treasury by regulation to that effect.
All were to be shipped or exported from Puerto Rico must be produced and aged under government control and meet the requirements for rum in this Subtitle , and quality requirements established by the Secretary by regulation to that effect. Distilled spirits shall be not less than twelve (12) months of age at the time of being removed from the bonded warehouse where it’s aged.
·
Section 4072 - . They will use packaging with
No Last Name, Trade Name or Brand Factory of Another Firm
No holder of a permit issued in accordance with the provisions of this subtitle or any other law, use or permit to be used in any way shape or any container, bottle or container bearing the name, trade mark, trade name or corporate belonging to or used by another permittee entitled thereto, without the consent of the owner.
No holder of a permit issued in accordance with the provisions of this subtitle or any other law, use or permit to be used in any way shape or any container, bottle or container bearing the name, trade mark, trade name or corporate belonging to or used by another permittee entitled thereto, without the consent of the owner.
A trademark is any word, name, symbol or
device or any combination thereof that: identifies and distinguishes the good
of a person, including a unique product, from those manufactured or sold by
others and to indicate the source of goods even if that source is unknown. In Puerto Rico the protection of trademark
law is enshrined in the Trade Marks Act of the Commonwealth of Puerto Rico, Act
No. 63 of August 14, 1991 10 LPRA sec. 171 et seq. Under this law, a trademark
is “any sign or device used to distinguish market products or services of a
person, product or services of another person ", 10 LPRA sec. 171.
This allows us to determine who has a better right
to a trademark: a company that first registered Trademark of the Department of
State of the Commonwealth but has not used it, or subsequent federal
registrant, who first before the used commercially in the United States and
Puerto Rico.
For example, if the Company X requests the
Patent and Trademark Office U.S. registration of certain brand and the request
is made with the bona fide intention to use the mark in a certain industry.
Start using the product in interstate commerce of the United States with the
application date in February and obtained registration of the mark in June of
that same year.
In May, another company M asked the State
Department of Puerto Rico that would record in his favor certain brand and same
product line above company. The application for registration is made without
the use of the mark in commerce previously, but with the intention of using it.
After some steps, the State Department finally registered the trademark.
In August, the company X expands the use of
the brand to Puerto Rico. Company X submitted to the State Department a request
for cancellation of the trademark registration of the company M. In his
petition, said that he had registered the same mark for the same type of
product, in the Federal Register of the Patent and Trademark Office.
He said that of allowing the
coexistence of both brands, consumers would be confused and could acquire the
company product M. In
Puerto Rico the protection of trademark law is enshrined in the Trade Marks Act
of the Commonwealth of Puerto Rico, Act No. 63 of August 14, 1991 10 LPRA sec.
171 et seq. (hereinafter Trademark Law). Through this section the existence of
a trademark owner following the registration of the Trademarks in the State
Department recognized. However, that right is conditional on the registration
to be made validly and also succumb to the timely claim by having a better
right over the trademark for having used before.
Our Trademark Act, therefore, combines
"the right born for use with the right set up with the record." Joint
Committees of Cooperatives, Commerce and Industrial Development and the
Judiciary Report P. S. 995 of June 19, 1991. However, by registering a
trademark with or without use, the applicant must meet several requirements.
The quoted Section 4 of the Trademark Act of Puerto Rico 10 LPRA sec. 171b
includes the formal requirements to apply for registration. The Section 5 10 LPRA sec. 171c, on the other
hand, lists a number of prohibitions that affect the register process of a
mark.
Under that section, you cannot register,
including: a mark that is identical to a mark already registered or known,
belonging to another and used in products or services of the same descriptive
properties or both resemble the another mark that is likely to cause confusion or
mistake in the mind of the public or lead to deception of purchasers 10 LPRA
sec. 171c (a) (7). However, even when
you've already made the registration of a mark, it can be subject to a
cancellation request. To this end, Article 19 of the Trademark Act of Puerto
Rico 10 LPRA sec. 171q provides that a person aggrieved by the registration of
a trademark may request cancellation by submitting a letter to the Secretary.
If at the time of filing more than five (5)
years have elapsed since the registration of the mark, the cancellation will
proceed only if present one of the basics outlined in Article 19, supra, as
follows:
·
Abandonment of the mark,
·
A search conducted in violation of the
provisions of the law,
·
The advent of the generic brand name product
or service for which it is used
·
Use of registration or permission of the
registered owner so that cause confusion about the nature, quality,
characteristics or geographical origin of the product or service for which it
is used
·
A record obtained by deceit.
Actions
managers may take to protect the trademark property rights
There are laws in both the United States and Puerto Rico that protect
and establish rights in the mark or service mark based on the use made of the
mark. Although it is not required to register the mark, it is highly
recommended as it provides distinct advantages.
Registration of a mark is prima facie evidence of ownership. Remedies
such as actions for damages or seizure orders are some of the actions that
infringers could be exposed.
The trademarks used in interstate commerce of Puerto Rico may be
protected if registered in the US Patent and Trademark Office. However, to
extend the reach in the protection in situations of intrastate commerce, local
registration is recommended to protect the trademark.
The process to register a trademark in Puerto Rico begins by filling an
application that sets the mark and the goods or services that are used. This
request is submitted to the Secretary of State along with a sworn statement on
the right to use the mark, facsimiles of the mark as used or proposed to be
used, and payment of a fee of $150.00 (Franchise, 2013). The renewal of registration must be made
within the term of 10 years. The brand owner has to file a sworn declaration of
continuous use accompanied by a sample of the use of the mark before the term
expires. During the fifth year after
the application filing date, a similar declaration of continuing use must be
filed otherwise the registration lapses (Franchise, 2013).
Act No. 80 of 2011 of Puerto Rico, known as the “Ley
para la Protección de Secretos Comerciales e Industriales de Puerto Rico”,
provides protection for know-how. The Trade Secrets Act covers
all information that is not generally known or accessible and provides its
owner with an economic value or advantage ("Act No. 80 of 2011 - Ley para
la Protección de Secretos Comerciales e Industriales de Puerto Rico,
"2011). To be protected under this law owner must take steps to ensure the
confidentiality of its information.
The "Act No. 80 of 2011 - Ley para la Protección de Secretos
Comerciales e Industriales de Puerto Rico" (2011) provide a list of
reasonable measures that must be taken such as:
·
restricting the number of persons authorized
to access certain information;
·
requiring employees to sign a non-disclosure
agreement;
·
formally classifying information as
confidential; and
·
implementing technological restrictions on
the transmission or use of information.
The "Act No. 80 of 2011 - Ley para la
Protección de Secretos Comerciales e Industriales de Puerto Rico,” (2011)
creates new causes of action against any person that:
·
acquires from another person a trade secret
that was acquired by improper means; or
·
discloses a trade secret without the consent
of the secret’s owner, if the disclosing party knew or should have known the
trade secret was obtained illicitly.
This law also attempts to protect the confidentiality of the information
through measures that ensure the integrity of the trade secrets in cutting
processes. The most common remedies under the Trade Secrets Act are damages and
injunctive relief, attorneys' fees or royalty payments.
In addition to the Trade Secrets Act, the general Tort and Property Law
of Puerto Rico as well as the unfair competition statutes and regulations may
be used to protect trade secrets. Furthermore, rule 513 of the Puerto Rico
Rules of Evidence declares trade secrets to be privileged information and rule
23.2(g) of the Puerto Rico Rules of Civil Procedure allows protective orders to
prevent disclosure of trade secrets (Franchise, 2013).
In the success of a
trademark exist some factors, there's no a miracle formula to the existence of
the trademark. ''No matter what market place you operate in; no matter size and
scope of your firm; registered trade mark is simply a must for your
business. It will serve to protect differentiate and add-value to what you do
and therefore make your business stand out in the crow’’ (Elms, 2013). There
can be procedure and laws that protected the trademarks but everything relapse
in the managers and employees who follow the rules in order to keep the
positive work done correctly and preventing that others company’s take the
ideas.
The managers are the
ones that have to take some action and educate the employees correctly, so all
of them can protect the organization’s property rights. We have to know
that not only the competitors will pay attention to every movement that your
company do, also you are going to find internal persons in your own company
that are taking some of your ideas.
What managers will do to
protect from the competitors: (Internal)
·
Educate employees awareness
training can be effective.
·
If
information is confidential to your company, the manager put a banner or label
on it that says so.
·
Lock all the
rooms where sensitive data is stored it would be digital or physical.
- Protect the passwords in the area that you have your system
- Install anti-virus software and keep it up to date.
·
Prevent unauthorized users from hacking into
your system
- Always have a back up for your work
·
Send people to inspect the physical premises, find out what kind of access people have to key systems.
·
Always maintain an original copy of source code.
You have to be aware to what
people did you trust because your ideas can be tell to the wrong people, so you
have to take some action before them to protect the ideas. Is very important
that you keep everything in the IP rights, this will help you against
time-consuming and expensive.For this kind of problems exist the Lanham Act (15 U.S.C.A. § 1051 et seq., ch. 540, 60 Stat. 427 [1988
& Supp. V 1993] that granted
you protection of a federally registered mark against of the use of similar
marks.
This Act specifically will protect you
against trademark infringement, trademark dilution, and false advertising. This Law also expands the types of trademarks and creates legal procedures to help trademarks enforce their rights.
Remember “Don’t focus on the competition; they’ll never give you money.” (Laja,
2013).
References
Cheeseman, Henry R. (2010) Business
Law, Legal Environment, Online Commerce,
Business
Ethics, and International Issues, Seventh Edition Chapter 1, Pearson
Education,
Inc., publishing as Prentice-Hall
Elms,
Jonathan (2013), Intellectual Property Office
Trademarks: Quick Facts
Franchise
(2013). Getting the Deal Through, Retrieved from http://www.franchise.org
Laja, Peep (2013), Stop
copying your competitors, Retrieved from
http://conversionxl.com/stop-copying-your-competitors-they-dont-know-what-theyre-doing-either/# ,
Retrieved on February 12, 2014
Lanham Act (15
U.S.C.A. § 1051 et seq., chap. 540, 60 Stat. 427 [1988 & Supp. V
1993]
Law no. 80 year 2011- Ley para la Protección de
Secretos Comerciales e Industriales de Puerto Rico. (2011).
LexJuris, Puerto Rico, Retrieved from http://www.lexjuris.com/lexlex/Leyes2011/lexl2011080.htm
Law no. 265 of September 4, 1998 - To
amend the “Revenue Code Puerto Rico Internal
Revenue Code of 1994 " and to
repeal the " Alcoholic Beverages Act of Puerto
Rico " (P. de la C. 1422)
Act 265, 1998 - Section 4051 - . Formula
for Alcoholic Beverages
Law no. 265 of September 4, 1998 - To
amend the “Revenue Code Puerto Rico Internal Revenue Code of 1994 " and to
repeal the " Alcoholic Beverages Act of Puerto Rico " (P. de la C.
1422) Act 265, 1998 - Section 4052 - . Denatured Alcohol
Law no. 265 of September 4, 1998 - To
amend the “Revenue Code Puerto Rico Internal Revenue Code of 1994 " and to
repeal the " Alcoholic Beverages Act of Puerto Rico " (P. de la C.
1422) Act 265, 1998 - Section 4054 - . Rum of Puerto Rico
Law no. 265 of September 4, 1998 - To
amend the “Revenue Code Puerto Rico Internal Revenue Code of 1994 " and to
repeal the " Alcoholic Beverages Act of Puerto Rico " (P. de la C.
1422) Act 265, 1998 - Section 4072 - . No Glass Containers will be used with
Name, Trade Name or Brand Factory of another Firm
Pernod Ricard
USA, LLC v. Bacardi USA, Inc. 702 F. Supp. 2d 238 (D. Del. 2010)
Decided
April 6, 2010
Trade Marks Act of the Commonwealth of
Puerto Rico, Act No. 63 of August 14, 1991 10 LPRA sec. 171 et seq.
