BACKGROUND

In light of the quick growth of counterfeit products in the international trade, and taking into account characteristic delays in the granting of trademark registration in the countries, it is possible to resort to the protection of figures, designs, forms, patterns, characters and others as copyrighted work. This creations, are subject to protection without requiring the compliance of any formalities as long as they fulfil the originality requirement and may be divulged according to Paraguayan law provisions and International conventions subscribed on the matter, as the Bern Convention and the TRIPS Agreement (ADPIC), among others. In this regard, it is highly valued the criteria adopted by Paraguayan authorities responsible of copyright protection that have in recent instances recognized the existence of this rights.

INTELLECTUAL PROPERTY DEFENSE

Notwithstanding referring to rules grounded in the Constitution, the protection
of figures, designs, forms, patterns, characters and others as copyright work
was somewhat resisted in the past, mainly due to the perception regarding
register that still prevails in the region connected to Civil Law tradition, eventhough it is a known fact that in copyright matters the simple creation of the work confers a protected right that is enforceable against all third parties.

In this respect, Copyright has been majorly recognized in Paraguay, in recent instances by seizing great amounts of items in infringement of intellectual property assets of third parties, registered as trademarks in several countries or undergoing registration procedures including Paraguay and that constitute work of intellectual property of the respective companies.

Seen as intellectual work protected by copyright, they may not be reproduced without the owner´s consent, being consequently any unauthorized use a right´s violation and even a crime; and subject to the actions and penalties prescribed in Paraguayan legal framework (Criminal Code and Copyright Law).

All original creations that demand an intellectual effort, are subject to protection under copyright, as long as they may be divulged – in this case by means of fixations made in consumer products, considering that these designs, character´s faces, patterns, forms, etc. may constitute artistic and photographic works, works of applied art or sculptures; notwithstanding they may as well qualify as trademarks, industrial designs or other intellectual property regimes, provided that they fulfil the requirements prescribed for protection under the concerned laws.

In this regard, after reasoned statements of the referred grounds of the cases were provided and confirmed by the expert opinions, authorities have:

a) recognized Copyright regarding the mentioned
intangible assets,
b) charge the accused, prosecuting them and,
c) ordered the destruction of the items, that was
performed in fulfilment of environmental standards.



Law N. 1328/98: Copyright and Related Rights

Article 3. Copyright protection shall cover all intellectual works of creative nature, in the literary or artistic field, regardless of their genre, form of expression, merit or purpose, the nationality or residence of the author or the owner of the rights concerned and the place of publication of the work (…) and whose enjoyment or exercise is not subject to the fulfillment of the registration requirement or any other formality.

The work protected under this law may as well qualify for other intellectual property protection regimes, such as patents, trademarks, privileged information on industrial processes or any other similar systems, provided that the work or elements in questions qualify for such protection under the concerned regimes.

Article 15. The author of a work by virtue of the mere fact of the creation of the work has the ownership of a right that is enforceable to all third parties, and comprises elements of moral and economical character as stipulated in this law.

Article 152. (…) Registration is a merely declaratory act, not constitutive of rights, in such a way that its omission does not prejudice the enjoyment or exercise of the rights recognized by this law.


CASE STUDY 1 / Tableware Items in Container in Puerto Caacupemí: Case N° 648/18

Plaintiff: GUCCIO GUCCI S.P.A. (GUCCI)
Seizure Date: September 14, 2018
Prosecutor: Diego Zilbervarg Giménez, Unit N° 1
Charged: K.T.S.

Comments

Specialized Prosecutor in Intellectual Property, Unit Nº 1, Dr. Diego Zilbervarg, proceeded along with officials to the seizure of plate sets, cups and kettles with GUCCI signature pattern (there were not registrated in Paraguay as a trademark at that moment), that were later moved into the Public Prosecutor Office Storage. 

Among the acts performed during the investigation, such as the report requests submitted to several public institutions, as well as statements, the seized items were also subject to expert opinion, considering the professional involved that the items infringed Copyright. Subsequently the Prosecutor proceeded to formulate charges against the owner of the consignee company. 

Finally, the items were destroyed on April 9 of 2019, in compliance with environmental standards and granting the accused an alternative option to the oral proceeding.


CASE STUDY 2 / Backpacks in two Containers in Puerto Seguro Fluvial: Case N° 787/18

Plaintiff: SPIN MASTER LTD. (PAW PATROL)
Seizure Date: October 29, 2018
Prosecutor: María Estefanía González, Unit N° 2
Charged: O.G.B. y E.O.S.

Comments

Specialized Prosecutor in Intellectual Property,Unit N° 2, Dr. Estefanía González Arévalo, proceeded with officials and DINAPI Enforcement Office to the seizure of backpacks with different images of characters, among them PAW PATROL ( that was not registered as trademark in Paraguay at that moment ), that were later moved to Public Prosecutor Office Storage. The Prosecutor subsequently proceeds to formulate charges against the owners of the consignee company.

Among the acts performed in the investigation, such as the requests of report submitted to different public institutions, and statements, the seized items were subject to expert opinion, considering the professional involved that the items infringed protected works related to Spin Master, in this case, cartoons and pictures of Paw Patrol.

The items were finally destroyed on May 9 and 16 of 2019, in fulfilment of environmental standards and granting the accused an alternative option to the oral proceeding.


CASE STUDY 3 / Toys in Commercial Establishment: Case N° 800/18

Plaintiff: SPIN MASTER LTD. (PAW PATROL)
Seizure Date: October 24, 2018
Prosecutor: Carmen Gubetich de Cattoni, Unit N° 3

Comments

Specialized Prosecutor in Intellectual Property, Unit N° 3, Dr. Carmen Gubetich de Cattoni, proceeded along with officials to raid a commercial establishment and seize toys of the characters of PAW PATROL, protected by Copyright, that were later moved to the Public Prosecutor Office Storage.

Among other investigation acts performed, such as requests of reports submitted to different public institutions, and statements, the owner of the business admitted the spurious nature of the items, based on Spin Master copyright and requested the items to be destroyed.

Finally, the items were destroyed on December 26 of 2018, in compliance of environmental standards and granting the accused an alternative option to the oral proceeding.

CONCLUSIONS

- In Paraguay it is possible to resort to the protection of figures, designs, forms, patterns, characters, and others as copyright works provided that they are original creations and subject to be divulged.

- Protection is not subject to the fulfilment of any formality.

- The protection under copyright law is entitled notwithstanding the work may as well qualify as trademarks, industrial designs or other intellectual property regimes, provided that they comply with the requirements prescribed in the considered laws to qualify for the protection.


DR. DIEGO PÉREZ
Lawyer
[email protected]
DRA. ANABEL FRACHIA
Lawyer
[email protected].uy