Brazil recognizes new designation of origin

Brazil recognizes new denomination of origin

In February 2022 the Brazilian Patent and Trademark Office (BPTO) published the recognition of “Norte de Minas” (North of Minas Gerais State) as a Denomination of Origin (DO) to the Aroeira honey.

This new Denomination of Origin establishes an area of 64 municipalities where the especial characteristics of the soil and climate, the presence of the aroeira-do-sertão tree with its specific interrelations and the knowledge of the beekeepers of the region, result in the production of a honey with characteristics and qualities derived from their geographical environment.

Brazil recognizes new denomination of origin

 

The North of Minas region concentrates large areas of dry lands ideal to growth of the aroeira-do-sertão tree, which are the main source of food of the Apis mellifera bees. This combination results in a honey with high concentration of phenolic compounds and honeydew, that differentiate this honey from others produced from different vegetable sources.

These natural factors aligned with the know-how of the beekeepers regarding the best trees where to fix the hives, its handling and right moment of harvest, allows the obtainment of high quality Aroeira honey. 

This denomination of origin elevates the number of geographical indications registered in the BPTO to 98, being 30 denomination of origin, 21 national and 9 foreign, and 68 indication of origin, all national.

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Author: Carla Pinheiro Beisiegel, Associate Lawyer at Peduti Advogados.

Source: Primeira IG de 2022 é para o mel do Norte de Minas

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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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Product from north of Minas Gerais receives geographic indication by BPTO

Product from north of Minas Gerais receives geographic indication by BPTO

A product named “Mel do Norte” received, this month (february 2022), the recognition of geographical indication, in the kind of denomination of origin, because it has unique and therapeutic characteristics.

Geographic Indication is an institute that granted to products or services a special identify by their place of origin and that brings to the product/service a reputation, value and an own identity, in addition to distinguishing this products from similar products available in the market.

As provided in the Brazilian Industrial Property Law, the Geographic Indication has two types: Indication of Origin and Denomination of Origin.

 

Product from north of Minas Gerais receives geographic indication by BPTO

 

The Denomination of Origin (DO) is the recognition of a country, city or region whose product or service has specific characteristics due to its geographical environment. 

Aroeira honey, now called as “Mel do Norte de Minas Gerais” received the Denomination of Origin recognition, because this product has compounds that strengthen the immune system and this is due to the fact that bees extract honey from a plant (Myracrodruon urundeuva) predominant in this region, known for its arid climate and little rainfall.

Therefore, it is expected that the new recognition of this product will bring the recognize, including an international promotion, adding value and resulting income for local producers in the north of Minas Gerais state.

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Author: Beatriz Cambeses Alves, Junior Associate at Peduti Advogados.

Source: Mel do Norte de Minas Gerais recebe Indicação Geográfica por suas características únicas e terapêuticas

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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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Exercising Prior User Rights before Brazilian Courts

Exercising Prior User Rights before Brazilian Courts

The prior user rights aim to guarantee to the user in good faith a certain trademark that has been filed and acquired by someone else.

The §1 of art. 129 of Brazilian Industrial Property Law (Law No. 9,279/96) requires, besides the good faith, proof of use of the trademark to distinguish or certify an identical or similar product or service at least 06 (six) months before the filing of the application.

Since Brazilian law does not stipulate how to exercise prior user rights, especially regarding the place of such claim, whether before Brazilian Patent and Trademark Office (BPTO) or the courts, some precedents provide guidance on how to act. 

In trademark nullity lawsuits in which prior user rights are invoked, BPTO is currently claiming that only administratively would the party be able to require precedence to a trademark registration.

However, the argument does not seem to meet the legislative intent with the §1 of art. 129 of Brazilian Industrial Property Law, nor does it appear to be aligned with the constitutional guarantee of access of the Judiciary.

Brazilian Superior Court of Justice (STJ) has several decisions recognizing the possibility of exercising prior user rights judicially and not only administratively, i.e., “[…] the interpretation that should be made of art. 129, § 1, of Law 9.279/96 cannot be understood as a restriction of means for the exercise of this right, preventing the previous user in good faith from seeking the Judiciary in the face of injury or threat to the right.”.

 

 

Nevertheless, STJ repudiates the claim of prior user rights before State Courts, having decisions that determine the contentious jurisdiction of the Federal Courts to analyze the possibility of granting precedence to a trademark registration to any individual or legal entity. In this regard:

However, the defendant could only claim the right of precedence, expressly provided for in § 1 of art. 129 of the LPI, before the BPTO or in its own lawsuit before the Federal Court, so that, if the registration granted to the appellant was annulled, it would be granted the registration of the trademark.

Indeed, as it necessarily implies the cancellation of the trademark already registered, such claim can only be made before the Federal Court, under the terms of art. 175 of the LPI (Brazilian Intelectual Property Law), and the matter cannot be examined even incidentally in the State Court.

Therefore, in addition to the requirements in §1 of art. 129 of the Brazilian Intelectual Property Law (user in good faith and proof of use of the trademark at least 06 months in advance from the filing), the precedents of Brazilian Superior Court of Justice have been admitting the possibility of exercise prior user rights administratively or judicially, as long as the judicial claim is made through a trademark nullity lawsuit, before a Federal Court. 

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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.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”