Month: July 2015

Although slogans are valuable tools for marketing and advertising purposes and to enhance the selling power of services and products, these are fragile elements according to the Brazilian Law, since no person is entitled to get exclusivity on them.
The Brazilian Intellectual Property Law is quite clear by listing the cases in which certain expressions (including slogans) cannot be registered as a trademark, which includes slogans: the section VII of article 124 provides that “signs or expressions used only as a means of advertising.” cannot be registered. This is the main point of the dispute between AMBEV (which uses the slogan “Brahma, the number 1” for one of its most popular products) and Der Braumeister (which uses the institutional slogan “brewery number 1 of São Paulo”) and is valid to any and all terms used to qualify a product and/or service for marketing purposes.
In this sense, it is worthy to say that there are reservations: despite the verbal elements of a slogan cannot be protected itself, it is possible to obtain trademark protection to a slogan with the addition of figurative elements, stylized fonts or any other feature that turns the slogan into a sufficiently distinctive trademark.
However, the granting of the registration will not prevent competitors or any third parties to use the word elements of the brand. The protection granted by the registration is regarding the use of visual and aesthetic elements equal or similar.

STJ denies AMBEV exclusivity of “Number 1” expression for Brahma Beer

The Third Class of the Superior Court of Justice decided that the Brewery Der Braumeister Paulista can continue to use the expression “number 1” in your product. By majority, the court considered that the company had not the intention to usurp the clientele of beer Brahma, Ambev.
The minister Paul of Tarsus Sanseverino, the words “Number 1” acts as a qualifying product or service, like “the best, the preferred, the most consumed” – expressions that “do not submit the record to be of use common, especially when there are distinguished by special graphic characters. ”
Ambev filed a compensation lawsuit against Der Braumeister alleging unfair competition because of the slogan “brewery number 1 of São Paulo”. Said that there was misappropriation of the term “number 1”, which would be the exclusive holder, it identifies your product – Brahma beer – nationwide. Also pointed out the misuse logo similar to its presentation of the competing product. According to AmBev, the expressions are registered “Brahma Chopp, beer number 1” (since 1993) and “Brahma, the number 1” (since 1992), and the sign for the brand Brahma Chopp and its constituent elements (since 1992).

Logos

The trial court rejected the request. Found that the evidence indicated by Ambev, by themselves, do not reveal confusion between the names. “The arrangement of names is quite different, and the wheat ears design is made so as not to induce similarity, it can’t be concluded that the mere inclusion of such a design is understood as a violation of industrial property rights,” said the sentence.

The São Paulo Court modified the decision to conclude that the Brewery Der Braumeister presenting your product with elements similar to the logo of Brahma and his promotional material brings a slogan that also blends with the advertising of Ambev.
In the STJ, the Der Braumeister maintained that the “number 1” is generic or public domain, and that Ambev took the risk to use in their campaigns an expression which, alone, no one can appropriate. She rejected the accusation of unfair competition, claiming that has long used the unopposed expression of Ambev and the products coexist peacefully.

Ambev said that despite the signs and advertising expressions no longer be record object, still receive protection based on Industrial Property Law.

Advertising Expression

In his opinion, the Sanseverino minister pointed out that the similarity verified by TJ-SP with regard to logos is not strong enough to constitute unfair competition, fireworks to customers of ownership or confusion of reason in the consumer market.

According to the minister, pointed identity merely a red band, which is not enough to cause confusion, or because the names are different, either because the Der Braumeister is a beer hall/restaurant and not just a producer of beverages.

As for the “number 1” expression, Sanseverino stressed that the Law 9.279 / 1996, when listing the situations not subject to the possibility of registration as a trademark, expressly mentioned advertising expressions.
“The phrase ‘beer number 1’ is nothing more than merely advertising expression, widely used by Brahma, true, but now is not subject to registration and thus does not allow its use to be made unique,” he concluded.
The rapporteur also said that the advertising spread by Der Braumeister expression “brewery number 1 of São Paulo”, because it is service that includes the branch of food / restaurant, does not seek to monopolize unfairly clientele of Brahma. With information from STJ Press Office.

Dra. Paula Ajzen

According to data from the Brazilian Franchising Association (ABF), the annual revenue of the Brazilian franchising sector exceeded R$ 103 billion in 2012, an amount almost four times higher than the R$ 28 billion generated by the sector in 2002.

These are impressive figures but they clash against the new reality of this market: if before the possibility of investing in a franchise was restricted to the wealthiest part of the Brazilian population, the increase in the number of franchises requiring lower start-up investment from their franchisees ended up significantly changing the profile of entrepreneurs of this sector.

Another fact that may have contributed to the Brazilian interest in the franchise sector is the business risk: according to a research conducted by the Micro and Small Business Support Service (Sebrae)(1), the mortality rate of ordinary companies with up to two years of existence in Brazil has remained around 25%, whereas during the last decade, the mortality rate of companies involved in any kind of franchising has revolved around 5% during the first three years of the business, according to data from ABF.

This fact shows the vigor with which franchised companies manage to face the peculiarities of the Brazilian market. In the words of Maria Helena Diniz, “franchising is advantageous for both parties inasmuch as it allows the franchisor to expand his or her business with little investment while allowing the franchisee the opportunity to be his or her own boss, to be the owner of his or her own company, at far lower risks than the risks faced by those who venture into their own business without counting on the help of someone with experience who owns a leading brand.” (2)

The relationship between franchisor and franchisee is based on a franchise agreement that stipulates the conditions for the distribution of products and/or services in association with a license to use the trademark and know how, subject to compensation and without an employment bond – as is the case in employment relations.

Franchise agreements are subject to Law No. 8,995 (Brazilian Franchise Law) and aims at building a relation of cooperation, consolidation of the franchise trademark, increase of market share, and economic gains for both the franchisor and the franchisee.
The most important provision of the Franchise Law relates to the Franchise Offer Letter, which has to be delivered to the potential franchisee, at least ten days before the execution of the franchise agreement.

Such document must contain a very extensive host of information to the franchisee about the proposed business for the purpose of allowing potential interested parties to obtain more detailed knowledge on the products and services covered by the franchise, brand-related issues, the franchisor’s financial health, investments required from the franchisee, among others.
As mentioned before, the franchisor’s failure to comply with the obligations related to the Franchise Offer Letter may cause the agreement to be null and void and may lead to the return of all royalties that may have been paid by the franchisee.

(1) In: http://www.sebrae.com.br.

(2) DINIZ, Maria Helena. Tratado teórico e prático dos contratos. 6. ed. São Paulo: Saraiva, 2006. 4. v, p. 50.

Fonte: http://www.lwyr.cl/opinion/franchise-agreements-in-brazil/

According to data from the Brazilian Franchising Association (ABF), the annual revenue of the Brazilian franchising sector exceeded R$ 103 billion in 2012, an amount almost four times higher than the R$ 28 billion generated by the sector in 2002.
These are impressive figures but they clash against the new reality of this market: if before the possibility of investing in a franchise was restricted to the wealthiest part of the Brazilian population, the increase in the number of franchises requiring lower start-up investment from their franchisees ended up significantly changing the profile of entrepreneurs of this sector.
Another fact that may have contributed to the Brazilian interest in the franchise sector is the business risk: according to a research conducted by the Micro and Small Business Support Service (Sebrae)(1), the mortality rate of ordinary companies with up to two years of existence in Brazil has remained around 25%, whereas during the last decade, the mortality rate of companies involved in any kind of franchising has revolved around 5% during the first three years of the business, according to data from ABF.
This fact shows the vigor with which franchised companies manage to face the peculiarities of the Brazilian market. In the words of Maria Helena Diniz, “franchising is advantageous for both parties inasmuch as it allows the franchisor to expand his or her business with little investment while allowing the franchisee the opportunity to be his or her own boss, to be the owner of his or her own company, at far lower risks than the risks faced by those who venture into their own business without counting on the help of someone with experience who owns a leading brand.” (2)
The relationship between franchisor and franchisee is based on a franchise agreement that stipulates the conditions for the distribution of products and/or services in association with a license to use the trademark and know how, subject to compensation and without an employment bond – as is the case in employment relations.
Franchise agreements are subject to Law No. 8,995 (Brazilian Franchise Law) and aims at building a relation of cooperation, consolidation of the franchise trademark, increase of market share, and economic gains for both the franchisor and the franchisee.
The most important provision of the Franchise Law relates to the Franchise Offer Letter, which has to be delivered to the potential franchisee, at least ten days before the execution of the franchise agreement.
Such document must contain a very extensive host of information to the franchisee about the proposed business for the purpose of allowing potential interested parties to obtain more detailed knowledge on the products and services covered by the franchise, brand-related issues, the franchisor’s financial health, investments required from the franchisee, among others.
As mentioned before, the franchisor’s failure to comply with the obligations related to the Franchise Offer Letter may cause the agreement to be null and void and may lead to the return of all royalties that may have been paid by the franchisee.

The decision given by the Third Civil Court of São Paulo emphasizes the importance of the copyright registration in Brazil – which is often overlooked by the authors in general.

According to the Brazilian Copyright Act, the protection of intellectual works (such as photos) arises from its creation, regardless of prior registration – therefore, the registration itself is not required by means of law. The author is the person entitled to pursue the registration before the responsible authorities and this measure can help to solve any conflict like the mentioned in the news, considering that the registration can be used as proof of authorship and date of creation of the intellectual work until the presentation, by any party, of other proof showing the opposite.

The issue mentioned in the news shows that the author actually took care to pursue the registration of his photographs before the responsible authority regarding, which was a decisive factor to obtain the favorable decision given. In addition, the Third Civil Court of São Paulo also ruled that, even if the authorship was not proven, the claimant would be assumed as the owner of the photos, since he was the first to announce himself as the author of the works. However, this assumption could easily been dismissed if the defendant had made any proof capable to put in doubt the authorship of the claimant.

The decision in reference shows the importance of the registration procedure of intellectual works before the responsible authorities.

If photographer announces to be an author of the image, it’s up to who used prove otherwise

The photo is protected as a work of artistic creation and the photographer owns the copyright. To be the weakest part of the relationship, if the photographer publicly announces the image authoring, it is up to those who used the photo to prove otherwise. Following this understanding, the judge Luis Fernando Nardelli, the third Civil Court of São Paulo, condemned a travel company to compensate a photographer to use six photos without giving proper credit.

Represented by lawyer Robert Wilson Furtado, Wilson Roberto Consulting and Legal Advice Office, the photographer filed action seeking compensation for material damage by having used the image without acquiring the rights, and for moral damages, for not credited the image to the author. According to Roberto, we used six images of the photographer’s collection that had been recorded at the National Library and notarized.

Analyzing the case, the judge Luis Fernando Nardelli understood that the photographer was right. For him, “the company took advantage of the author’s work and publicized the photographic work illegally, without authorization, for profit, failing to pay the author for carrying on the work of authorship.”

For the judge, it was proved in the records, the documents attached, the authorship of the images. Nardelli also noted that, even if it was not proven authorship with documents, copyright rights rules should be interpreted in favor of the intellectual creator, “presumably the weaker party ” . ” A lot of rebuttable presumption in favor of the plaintiff to be the creator of an intellectual work since it was the first to advertise as such , while the reverse proof to the contrary (LDA , art. 13) , which it is not acquitted (CPC , art. 333, II ) , “concluded the judge.

The company tried to argue that the case, apply the provisions of Article 48 of the Copyright Law, which states: “The works permanently located in public places may be freely represented through paintings, drawings, photographs and audiovisual procedures “. However, for the judge, the article does not serve the case, since none of the six photographs refers to art works located permanently in the street or square.
Given the facts, the judge ordered the company to pay R$ 9000 (Nine thousand reais) for property damage, “as the author charges on average between R$ 1000 (one thousand reais) and R$ 2000 (two thousand reais) by photo for use of websites in images.” Already for moral damages, for not giving credit to the author of the photos, the judge ordered the company to pay R$ 6000 (six thousand reais).

Dr. Raphael Lemos Maia

The art of storytelling is something as human as humanity itself. Fundamental element of formation of cultures over the years, “telling” stories (or storytelling) is something from the dawn of humanity, when the Cro-Magnon man began the practice of rock art, relying on drawings – and quite rudimentary way – the facts experienced in prehistoric every day.
Surpassing the pre-history, storytelling won ancient civilizations (such as the Aztecs, Egyptians, Greeks and Romans) and even religious institutions, as a way to promote the entertainment and education, as well as to preserve the history and culture of peoples and nations. And, as it should be, the practice of storytelling reached modern civilization with the same force that had in the past.
Storytelling, however, does not always mean telling the truth: we know that many stories are based on myths, legends, assumptions, rumors and inspirations with one or more bits of fantasy and fiction – as in the good old Santa Claus, an character inspired on St. Nicholas.
As the storytelling, this kind of story also reached modern civilization, weighing up, however, which is increasingly difficult to instill fantasies in the human imagination, because of the ease to “unmask” such stories in modern times, by seeking for information on the Internet. But still, there are people and especially companies increasingly engaged in such practices, but with a very different view of our ancestors: marketing.
The storytelling as a marketing tool has been increasingly explored around the world and, in Brazil, a leading market in the production of advertising, this practice has grown considerably.
This is because, as demonstrated by the analysis of marketing doctrine, storytelling is a way to retain consumers by “telling” a story that establishes an identification connection between a company, a brand, a product or a service and its consumer, reinforcing branding.
This story, if told properly, creates an emotional bond with the consumer that enhances engagement and the valuation of basic elements of his decision, as best price, best service, etc. That is, tell the right story for your target audience can increase sales, bring new customers and retain existing ones – all that any company wants.
It happens that, being a marketing tool, invariably the storytelling business is viewed as an advertising artifice for commercial purposes (profit) directly or indirectly, subject to self-regulation of the industry and consumer protection laws.
With the growing interest in storytelling by advertising agencies and companies, many have been devoted to this practice in a risky way, making use of fanciful stories to build concepts to products and services, as well to approach the consumer, as reported regarding Diletto (from the ice cream industry) and Do Bem (non-alcoholic beverage industry), being represented by the National Council of Self-Regulation (CONAR).
For those who know these companies, it is clear that their marketing is state of the art: while Diletto produces fine popsicles and boasts freezers (and even stores) with classic and fancy design, Do Bem stands out on the grocery shelf with their juices and box of teas with natural-looking.
The storytelling of them makes the same way, and while Diletto account that its recipes are based on some of the Italian immigrant fictionally named as Nonno Vittorio (an alter ego of the grandfather of the founder of the brand), Do Bem that its fruits come from the farm of Mr. Francesco, one of the company’s suppliers.
Without going into the truth of such stories, it is worthy to say that the Brazilian Code of Advertising Sector Self-Regulation provides that “every advertisement should be respectful and conform to the laws of the country; must also be honest and true “and that provides that description and claims must contain a true and verifiable presentation, in the same sense of the Brazilian Consumer Law.
Therefore, if the storytelling is fictitious, a disclaimer shall be provided to state stating that it is a fictional story or at least fiction elements were incorporated to enhance the story. All this in order to prevent responsibilities and avoid proceedings before CONAR and even in the State Courts, which may be too costly.
And even the storytelling is true, it is recommended that the company keep records and supporting documents to prove the story told is a true story, including for prompt response purposes since that the greatest damage that may occur, without doubt, is regarding the image of the company or the brand. A mistake in this sense can turn a lots of investments in “a once upon a time” a good marketing strategy.
Anyway, is important to say that CONAR decisions cannot be enforced as State Court decisions can, but they are usually adopted by the punished.

Conar investigates Diletto and Do Bem

São Paulo – CONAR (National Council for Advertising Self-Regulation) is investigating the Diletto companies (ice cream) and Do Bem (Well of juice).
The cases are open on November 3, investigating the stories about brands, created by themselves – the “storytelling”.
They cite the report published in the magazine Exame “Every company wants to have a good story. Some are lies,” the journalist Ana Luiza Leal. Consumers complain that there is information on packages and in advertisements that are not true.
The Diletto says, for example, that the popsicles brand born with Vittorio Scabin, grandfather of the founder of the brand. They say he manufactured ice cream in Italy and came to Brazil to escape the Second World War.
But as the Review report shows, the one Nonno Vittorio never existed. “I recognize that I may have gone too far in history,” said Leandro Scabin, founder of the company.
This technique to create or disseminate stories involving the company and the brand is known as “storytelling”. Narratives create humanized tones for brands, unmoved consumers, promote values – so they stand out among so many competitors in the market.
From Do Bem is also being investigated for their stories. The company says that oranges are baked and come, for example, the lord of the farm Francesco, the interior of São Paulo. Many consumers identify with the “organic” and “family” brand. “Eco-friendly”.
The Exame magazine shows, however, that giants like Brazil Citrus provide oranges to Do Well – and also for several other companies in the industry.
Consumers in this case, claim that advertising is misleading, because it seems that small farmers are being directly benefit from Do Bem.
Diletto and Do Bem will be notified and will have ten days to submit their defenses, which must be judged in the meeting of December 11.
If the result is positive for the consumer, both shall be notified to “recommendations” to suit. For example, change packaging and in marketing.

World Trademark Law Report
31-03-2006

DIEGO PERANDINAdvogado

The Brazilian Patent and Trademark Office (BPTO) has issued a new resolution on highly renowned marks – a status provided under Article 125 of the Industrial Property Law pursuant to which marks are given a special level of protection. Resolution 121/2005 revokes Resolution 110/2004 and introduces the following changes:

Article 2 defines the parameters to be considered when assessing whether marks are highly renowned, such as:

• the marks’ history;
• the reputation of the goods and services to which they apply; and
• the signs’ attractiveness to the general public.

This will help remove some of the subjectivity inherent to the assessment of such marks. The BPTO had previously defined ‘highly renowned marks’ in Resolution 54/2002, taking into account Brazilian doctrine and the comments of the Association Internationale pour la Protection de la Proprieté Intellectuelle on the matter, but the factors considered in the definition were held to be insufficiently objective.

• The resolution introduces the requirement that there must be a genuine conflict between the marks at issue in opposition and nullity proceedings. This is designed to prevent the filing of opposition or nullity proceedings for the sole purpose of obtaining the status of highly renowned mark from the BPTO.The analysis of a given mark’s renown now occurs upon examination of an opposition or administrative nullity action, and no longer takes place before the analysis of the merits of the action, as was the case under Resolution 110/2004.

• The new resolution now provides the possibility to challenge an application to receive highly renowned mark status in response to an opposition action.

• Alterations were made to the composition of the Special Commission responsible for analyzing requests for recognition of a mark’s highly renowned status. Formerly, the commission comprised three sitting members and two substitutes. The commission is now chaired by the BPTO’s director of trademarks and is composed of three sitting members and three substitutes.

• Article 10(1) complements the terms of Article 14(1) of the previous resolution, establishing that the owner of a mark granted highly renowned status will not be subject to the payment of any fee other than a determined payment during the period of protection of the highly renowned status (ie, five years) for the maintenance of the status, unless the BPTO requires additional documentation to this end.

Despite the changes noted above, the new resolution does not address the question of possible requests for the recognition of a mark’s renown outside of opposition or nullity proceedings before the BPTO.

Co-autor: Ana Carolina Lee Barbosa Del Bianco