China changes regulation in order to extend patents’ expiration date

copyright or patent concept, intellectual property

It is known that the extension given to patents is a huge deal, especially to the creator, considering the time taken by the State to recognize the title and give the proper protection to the invention. 

In Brazil, the term of the Brazilian patents in general is being discussed on the Supreme Court on the Direct Unconstitutionality Action filed by the Attorney General’s Office, arguing that the disposition of the only section of the article 40 of the Law n. 9.279/1996 (Industrial Property Law) would be unconstitutional and would establish an undetermined extension to all patents. 

Although the action is yet to be ruled on the Supreme Court, it is known that the article of law only exists to compensate the delay of the analysis of the patent requirement by the Brazilian Patent and Trademark Office (BPTO), which is not rare. 

copyright or patent concept, intellectual property

Meanwhile in China, the direction is the opposite from Brazil. The country is changing its regulation to add an article that will stablish the possibility of the prolongation of the patents of chemical and biological products and traditional medicinal products if the China Intellectual Property Administration (CNIPA) takes more than three to four years to analyze the requirement. 

China’s behavior is an indicator that the extension of the patents must be guaranteed by the regulatory entities and the regulation of the country in general in order to ensure the protection and incentive of the invention and the creator.  

We now expect that the decision of the Brazilian Supreme Court recognizes the necessity to maintain the disposition of the article 40 of the Industrial Property Law. 

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Author: Maria Luiza Barros da Silveira, Junior Associate at Peduti Advogados.

Source: Enquanto Brasil questiona, China estende prazo de vigência das patentes 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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The preliminary injunction order in Brazil concerning IP rights

Wooden gavel for judge on table next to folder with documents. Justice and law enforcement concept

In Brazil, as in other countries, it is possible to request the judge to grant a preliminary injunction in order to prevent the infringer of intellectual property rights from continuing to use them during the lawsuit.

The Brazilian Industrial Property Law and the Brazilian Civil Procedure Law defines two objective criteria that authorizes the judge to adopt this measure, which are the probability of the right (fumus boni iuris) and the danger of damage or risk to the useful result of the process (periculum in mora).

The probability of the right, in general, refers to the strength of the right raised by the plaintiff. If it is possible to demonstrate ownership of the violated rights, the actual occurrence of the violation and that the use of the trademark or patent is easily verifiable, the requirement of the probability of the right will be fulfilled.

Regarding the danger of damage or the risk to the useful result of the process, the plaintiff must prove that the continuation of the violation during the lawsuit may cause damage that is difficult or impossible to repair.

Such damages may be moral or material, like the wear and tear of the trademark in the market, the diversion of customers, the decrease in revenue or the increase in the offender’s assets for committing the violation.

Wooden gavel for judge on table next to folder with documents. Justice and law enforcement concept

On the other hand, it must be demonstrated that the failure to grant an injunction may render the process ineffective in its closure. In other words, it is necessary to prove that if the injunction isn´t granted, the plaintiff’s right will be lost until the effective resolution of the lawsuit.

Considering it is a drastic measure that can destroy the defendant’s business, it is natural for judges and courts to adopt a cautious stance when deciding on such requests.

In this sense, it is also relevant to demonstrate to the judge that the granting of the injunction will not lead to the end of the defendant’s business, leading to bankruptcy and causing indirect impacts on the economy, with the unemployment of employees of the alleged perpetrator.

In case a preliminary injunction is granted, but at the end of the lawsuit it is found that the plaintiff’s rights have not been violated, the Brazilian Civil Procedure Code provides the possibility of the plaintiff being sentenced to repair the damages caused to the defendant by asking for the preliminary injunction, which is an effective mechanism to guarantee the restoration of any damages that may arise from an unfair injunction.

In conclusion, as in other legal systems around the world, Brazilian legislation has measures to provide, thru a lawsuit, immediate order to cease the violation of immaterial rights, preserving the plaintiff’s rights.

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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The opposition procedure on international trademark applications in Brazil

Accounting on a tablet computer and laptop, close-up

When a trademark application is filed in Brazil, the Brazilian and Trademark and Patent Office (BPTO) publishes the application so that third parties can file opposition within 60 days.

Afterwards, the opposition is published on the Brazilian Trademark Gazette and the owner has 60 days to respond to it.

Finally, the BPTO analyzes the opposition and the trademark application. At this point, the BPTO can issue office actions or issue a decision approving or rejecting the application.

Differently of from other countries, like USA, China and European Union, where the formal and substantive examination are conducted before the opposition period, in Brazil the BPTO firstly performs the formal examination and then publishes for opposition purposes. After this procedure, the Office conducts the substantive examination, followed by the final decision.

Accounting on a tablet computer and laptop, close-up
It is important to be aware of this information, mainly, when filing a trademark application through the Madrid Protocol. The BPTO notifies the owner through WIPO when an office action or a final decision is issued. However, oppositions are not included in WIPO’s notification system, and applicants will be only notified through the National Gazette.

So, in case the trademark owner does not have a local agent, he may not be informed about the opposition and, consequently, may not have the opportunity to respond to it. Therefore, the trademark application will be examined – and maybe rejected – based only on the opposition arguments.

If the owner is interested in having a trademark registered in Brazil through Madrid Protocol, hiring a local agent to monitor the application shall be taken into consideration.

If you have any question regarding oppositions procedures in Brazil, feel free to contact Peduti Advogados.

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Author: Laila dos Reis Araujo, Senior Associate & Head of The International Department at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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The definition of “generic”, “necessary”, “common”, “vulgar” and “descriptive” signs and why are they not registrable as a trademark in Brazil.

Businessman stamping with approved stamp on document at meeting.

In Brazil, the Industrial Property Law (L. 9.279 / 96) prohibits, by means of its article 124, VI, the registration of trademarks that consist of signs of a generic, necessary, common, vulgar or descriptive character in relation to products or services they want to distinguish.

The principle of distinctiveness is a fundamental condition for a trademark, that is, the assessment by the BRPTO (INPI) takes into account the distinctive capacity of the expression under examination. The prohibition on registering expressions considered as non-distinctive is for the simple reason that such elements will not be seen as a trademark by the consumer. In addition, allowing owners to have trademarks composed of a common sign to exist would generate an unfair monopoly.

The trademark manual (created by the BPTO) defines the types of non-registerable signs:

  • Generic sign is a “term or nominative expression or its graphic representation that (without being necessary in relation to the product or service or indicative of nature, nationality, weight, value, quality and time of production or service provision) designates the category, the species or the genre to which a given product or service belongs, and cannot individualize it, under penalty of violating the right of competitors.” As an example, “FOOD” to indicate food products;
  • Necessary sign is a “term or nominative expression or the indispensable figurative element to designate or represent the product or service, or even its inputs.” As an example, “OLIVE OIL” to indicate olive oils;
  • Common character sign is a “term or nominative expression or figurative element that, although it does not correspond to the name or representation by which the product or service was originally identified, has been enshrined, for current use, for this purpose, integrating, thus, the commercial language.” As an example, “CAR” to indicate cars;
  • Vulgar sign is composed of a “Slang, popular or family names that also identify a product or service.” 

Businessman stamping with approved stamp on document at meeting.

However, there is an exception  regarding the registration of generic, common, vulgar or descriptive trademarks:

Art. 124. The following cannot be registered as a trademark:

VI – a sign of a generic, necessary, common, vulgar or simply descriptive character, when related to the product or service to be distinguished, or that commonly used to designate a characteristic of the product or service, as to its nature, nationality, weight, value, quality and time of production or service provision, unless they are sufficiently distinctive.

Such a reservation allows generic, necessary, common, vulgar or descriptive terms to be registered in case they are sufficiently distinctive. That is, these non-distinctive terms can be registered if they are accompanied, for example, by a sufficiently distinctive logo. 

Thus, art. 124, VI ​​serves to prohibit a holder from preventing his competitors from using terms directly related to products and services. However, it still allows owners who use these types of expressions, accompanied by a sufficiently distinctive logo to have the trademark registered. 

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Author: Laís Iamauchi de Araujo, Associate Lawyer at Peduti Advogados.

Source: Manual de Marcas 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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