Analysis of legal tools to stop imports of food products or goods caused by unfair competition or lack of administrative requirements.
By: Mauricio Villeda-Zúñiga
In Honduras there are several mechanisms under different administrative laws to protect both merchants and consumers of food products for human consumption.
For this analysis we have had before us following legislation:
a) Industrial Property Law (Decree 12-99-E);
b) Health Regulation for the sanitary control of food;
c) Health Code;
d) Central American Technical Regulation (RTCA 67.01.31:06)
INDUSTRIAL PROPERTY LAW
The Honduran Industrial Property Law provides in Article 2, paragraph 6 that this law aims to: ... 6) to prevent acts that infringe industrial property or constitute unfair competition related thereto; and establish sanctions for them.
Article 80 of this law is very clear in stating that the right to the exclusive use of a trademark is acquired by the registration of the trademark in the Industrial Property Registry.
Likewise, Article 96 of the Industrial Property Law literally states "The registration of a trademark confers to its owner the right to proceed against third parties that, without his consent, do any of the following acts:
1.Apply, add or fix in any way a distinctive sign identical or similar to the registered trademark on products, or products that have been produced, modified or treated by services for which the trademark is registered;
2. Removing or changing the trade mark that the owner or an authorized person has applied, attached or affixed to the products referred to in the preceding;
3. Manufacturing labels, packaging, wrapping, or other similar items that reproduce or contain a reproduction of the registered trademark, as well as selling or storing such items;
4. Fill or reuse for commercial use, packaging or wrapping bearing the trademark;
5. Commercial use of an identical or similar sign with the trademark for the same goods or services for which the trademark is registered, or for different goods or services when the use of such sign for those products or services might create confusion or likelihood of association with the owner of the registered trademark; and,
6. Commercial use of a sign identical or similar to the registered trademark in circumstances where such use could lead the public to mistake or confusion, or could cause the owner of the trademark an unfair economic or commercial harm because of a dilution of the distinctiveness or market value of the trademark or unfair exploitation of the reputation or strength of the trademark.
The following acts, among others, shall be understood as use of a sign in commerce:
a. Introducing into commerce, sell, and offer to sell or distribute products or services with the sign;
b. Import, export, store or transport products with the sign;
c. Use the sign in advertising, publications, business documents or written/oral communications regardless of the means of communication, without prejudice to the rules on comparative advertising that may be applicable, and
d. Adopt or use the sign as a domain name, email address, name or designation in electronic media and other similar items used in electronic media or in electronic commerce.
We must take into consideration the content of Article 98 of this law since it states that the trademark registration does not confer to its owner the right to prohibit a third party to use the trademark in connection with the legitimately marked products that said owner, his licensee or any other person with the consent of the owner, had sold or otherwise introduced into commerce in Honduras or abroad, provided that such products and containers which were in contact with such products have not undergone any modification, alteration or deterioration.
It is also very important to keep in mind that all products that are sold in the country should clearly indicate the country of production or manufacture, name of producer or manufacturer, and the link or relationship between the producer or manufacturer and the owner of the trademark used on the product, if they were not the same (cf. Article 99 Industrial Property Law).
A possibility exists that a License Agreement assigns the rights of a trademark to third parties. Decree 16-2006 (Implementation Act of DR-CAFTA), in Article 12 clearly states "The right holder of a trademark may give another person, by contract, licenses to use the trademark. The contract that grants the license to use the mark is registered or recorded in the Office of the Industrial Property Registry in order to make public the existence of the license, without this constituting a prerequisite for assert any rights to cover the license. "
Article 163 of the Industrial Property Law provides that in cases of infringement of rights protected by this Law it may be requested one or more of the following measures:
1. The cessation of the acts that infringe the rights;
2. Compensation for damages;
3. The seizure of the objects resulting from the infringement and of the means that served mainly to commit the offense;
4. Theban on the import or export of goods, materials or means referred to in paragraph 3) of this Article;
5. The withdrawal from commercial channels of the objects or means referred to in paragraph 3) of this Article, or destruction when it is appropriate;
6. The attribution of ownership of the objects or means referred to in paragraph 3) of this Article, in which case the value of these assets is charged against the amount of compensation for damages and;
7. The necessary measures to prevent the continuation or repetition of the infringement, including the destruction of the means seized in accordance with the provisions of paragraph 3) of this Article where this is indispensable.
Whoever uses a trademark without having it duly registered won’t be able to recover damages for any use that third parties had made of such trademark during the time it had been registered. This is without prejudice to other actions and measures that the owner of the trademark can use in safeguarding his rights.
For products bearing a false brand name or trademark, it will not suffice the elimination or removal of the sign in order to permit the introduction of these products in commerce, except in exceptional cases duly qualified by the judge, or the owner of the trademark would give his prior express agreement.
HEALTH REGULATIONS FOR THE CONTROL OF FOOD
Article 79 of this regulation states that "Any food or food product produced, packaged or imported with a specific name and brand, prior to its circulation in the country or its export, requires a sanitary registration issued by the General Directorate of Health Regulation."
Article 80 of the same regulation rules states that it is not permitted to import, export, manufacture, manipulate, produce, handle, store, transport, distribute, market, wholesale or retail, or to advertise any food products that do not have a sanitary registration.
This regulation provides only 3 cases in which it may exceptionally allow the importation of food products without sanitary registration:
a) When circumstances arise in disasters and emergencies;
b) Samples for analysis in the process of registration,
c) In the case of donations to charitable institutions, with the authorization of the Directorate General of Health Regulation.
One issue that must be studied is that, prior to obtain the sanitary registration of a product or Sanitary Inscription (the process by which you can obtain permission to market a food product if it previously exists a sanitary registration obtained by other natural or legal person) the importer or seller of the product must first obtain his Sanitary license for the establishment that he owns. Sanitary License is one of the requirements of the Directorate General to grant a sanitary registration or sanitary inscription.
The Regulation provides in Article 61 that every natural or legal person who intends to install a food establishment must obtain, prior to operation, Sanitary License issued by the Directorate General of Health Regulation, and it must demonstrate that the establishment has appropriate health conditions of location, installation and operation.
The Regulation states in Article 63 that it is prohibited the operation and opening to the public of food establishments that have not obtained the Sanitary license of Operation pursuant to the provisions of the Health Code and these Regulations.
HEALTH CODE
Article 78 of the Health Code states literally that it should be registered at the Health Registry all the food products offered under a specific brand or name and those that before being introduced to the market, undergo a process of production, processing and fractionation.
CENTRAL AMERICAN TECHNICAL REGULATION
This regulation governs the uniform procedures to get sanitary registrations or sanitary inscriptions of food products for human consumption within the countries of Central America.
Article 4.1 Of the Regulation establishes the requirements for registration of a food product and obtaining the sanitary registration.
Article 4.2 of the Regulations sets out the process for registration.
Article 5.1 of the Regulation establishes the requirements and mechanisms for the sanitary inscription.
In conclusion, all food products may be retained and/or imports can be stopped by local authorities if:
a) There is no trademark registration;
b) There is no sanitary registration;
c) There is no sanitary inscription (if a prior sanitary registration exists that has been obtained by a third person or entity);
d) If the importer has no Sanitary License;
e) If food products have animal or vegetables origin, the importer must be duly registered as an importer in the Ministry of Agriculture.
GUTIÉRREZ FALLA & ASOCIADOS Avenida La Paz, No. 2702 Apdo. Postal 2735 Tegucigalpa, M.D.C. Honduras, C.A
Phone / Teléfonos: (504)2 238-2455 (504) 2238-2782 FAX: (504)2238-6109
