The rise of counterfeits in the midst of e-commerce development – guidelines for combating counterfeit in Brazil

E-commerce refers to a type of business that is completely conducted through the internet, meaning from the selection of the product, choice of delivery address and payment method [1]. Its first records can be traced back to the 1970s in the United States of America and the 1990s in Brazil [2].

 

However, despite already being a very popular and widely used type of business, it was during the pandemic, due to its social and economic impacts, that we faced a “BOOM” in the online market.

 

People, with the most diverse services and products, began to use this alternative and cheaper medium to reach consumers and thus achieve a certain income.

 

 

During this period, considerable amounts of capital were directed towards the development of online operating systems that better met this new demand, creating a faster and less bureaucratic space.

 

In response to this new movement, the Director General of the World Intellectual Property Organization, Mr. Daren Tang, in an interview with CNBC in 2022, declared that this scenario would bring many positive and negative points to industrial property rights [3].

 

In TANG’s opinion, the advancement of e-commerce would bring easier ways for people to trade counterfeit products, however, on the other hand, companies that manage these platforms should face the problem with counterfeits seriously, being in contact with national governments to monitor and deal with this situation.

 

Despite this, for TANG, what this wave still brings is the creation of new opportunities for entrepreneurs, which, for the Director General, is fantastic.

 

Going even more deeply into this issue, in 2019, the EUIPO – European Observatory on Infringements of Intellectual Property Rights, together with the OECD – Organisation for Economic Co-operation and Development, published a study entitled “Misuse of E-commerce for Trade in Counterfeits” [4].

 

In this scenario, the National Council for Combating Piracy in Brazil (CNCP) has a Guide [5] and Handbook [6] of good practices and guidance for combating piracy in e-commerce.

 

In the complete report of the study, these were some of the main conclusions:

 

  • In 2020, as a consequence of the restrictions caused by the Covid Pandemic, there was an increase of at least 20% in online commerce compared to the traditional market.
  • Statistics observed during the period from 2017 to 2019 showed that at least 50% of the detentions in the EU would be of counterfeit products, of which 90% would have been sent by mail to the country; and
  • Most of the counterfeit products sold through the online market belong to the categories of perfumery and cosmetics, pharmaceutical products, and optical products.

 

In the documents, in order to help companies that work with e-commerce platforms to create a safe and transparent environment, the CNCP advises:

 

  • Validating the Seller’s CPF or CNPJ, with their complete identification, as well as proving their existence through a bank account, digital wallet, or associated payment methods.
  • Reserving the right of the Platforms to demand fiscal documents related to the accessory obligations of the sale of their products or services, under penalty of exclusion of the Seller user who does not meet this requirement; and
  • Creating a specific notification channel for cases of illegal product sales, with permission for consumers and intellectual property rights holders to access it.

 

The CNCP also advises those who use e-commerce to take a proactive stance towards these measures, as well as to always remain vigilant, working together with government agencies for protection.

 

In addition to this, those who work with this new form of commerce can still count on various private organizations with expertise in dealing with intellectual property protection issues, which can assist in creating a Policy for the Use and Protection of rights, as well as providing all necessary support to hold infringers accountable.

 

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Author: Juliana Kaomy Mikado and Cesar Peduti Filho, Peduti Advogados.

Fonte: 

[1] O QUE É E-COMMERCE E PARA QUE SERVE? In EXAME. Available at: https://exame.com/invest/guia/o-que-e-e-commerce-e-para-que-serve/ . Access on: Mar 18, 2023.

 

[2] Dr.E-coomerce consultoria em e-commerce. Available at: https://www.doutorecommerce.com.br/criando-um-e-commerce/aprenda-origem-e-o-que-e-e-commerce/#:~:text=O%20e%2Dcommerce%20nasceu%20em,1999%20com%20o%20site%20Submarino. Access on: Mar 17, 2023.

 

[3] RISE OF E-COMMERCE MAKES IT EASIER TO SELL COUNTERFEIT GOODS: WORLD INTELLECTUAL PROPERTY ORGANIZATION. In CNBC. Available at: https://www.msn.com/en-us/money/experts/rise-of-e-commerce-makes-it-easier-to-sell-counterfeit-goods-world-intellectual-property-organization/vi-AA11xPIS . Access on: Mar 17, 2023.

[4] OECD/EUIPO (2021), Misuse of E-Commerce for Trade in Counterfeits, Illicit Trade, OECD Publishing, Paris. Available at: https://doi.org/10.1787/1c04a64e-en . Access on: Mar 18, 2023.

 

[5] Guia: Boas práticas e orientações às plataformas de comércio eletrônico para a implementação de medidas de combate à venda de produtos piratas, contrabandeados ou, de qualquer modo, em violação à propriedade intelectual. Secretaria Nacional do Consumidor Conselho Nacional de Combate à Pirataria e aos Delitos Contra a Propriedade Intelectual Ministério da Justiça e Segurança Pública – Esplanada dos Ministérios 5º andar, sala 538, CEP 70064-900 – Brasília-DF. Available at: https://www.gov.br/mj/pt-br/assuntos/noticias/conselho-nacional-de-combate-a-pirataria-lanca-guia-de-boas-praticas-e-orientacoes-as-plataformas-de-comercio-eletronico/Guiaboaspraticaseorientacoesasplataformasdecomercioeletronico_compressed.pdf Access on: Mar 17, 2023.

 

[6] CARTILHA DE BOAS PRÁTICAS E-COMMERCE. Secretaria Nacional do Consumidor Conselho Nacional de Combate à Pirataria e aos Delitos Contra a Propriedade Intelectual Ministério da Justiça e Segurança Pública – Esplanada dos Ministérios 5º andar, sala 538, CEP 70064-900 – Brasília-DF. Available at: < file:///C:/Users/Juliana.kaomy/Desktop/Cartilha%20de%20Boas%20Pr%C3%A1ticas%20no%20e-commerce.pdf>. Access on: Mar 21, 2023.

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

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

The recordal of IP agreements before the BPTO

In Brazil, companies that transfer their technologies or sign  contracts involving licensing of industrial property rights (trademarks, patents, industrial designs and topography of integrated circuits should record the agreement before the Brazilian Trademark and Patent Office in order to pay royalties for foreign companies. 

 

The rules to record the agreement used to be very strict mainly regarding the formalities in the agreement related to legalization. However, recently, the BPTO has simplified the rules. For agreements signed abroad it is not necessary to legalize the agreement nor notarize. Moreover, digital signatures are accepted. 

 

 

Furthermore, now it is possible to pay royalties related to trademark and patent not granted in Brazil yet. Before 2023, it was possible to record the agreement but the payment was not allowed until trademark or patent grating. 

 

After the changes, we expect that the process will be faster and with less bureaucracies.

 

If you need to record an agreement in Brazil and have more questions, we will be glad in help you.

 

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Author: Laila Reis Araujo and Cesar Peduti Filho, 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.”

 

The trademark’s force impact on the enterprise market value

Whats the importance of the trademark’s makert force?

The trademark is one of the most important assets a company might invest in, given the relativity of its intangible worth, which is defined by several external and market aspects, besides the elements and characteristics of the trademark itself.

 

Therefore, a strong trademark confers the company that owns it relevant value and possible leverage in negotiations in general, as mergers and acquisitions, since it makes part on the very company market value, generating direct impact on the transaction’s agreed price.

 

In order to achieve such advantage, the enterpreuner must watch out for the three main aspects that configure a strong trademark. They are: design, customer service and marketing.

 

Obviously, the design must be attractive to the clientele, in order to benefit the company expansion. Furthermore, there are certain precautions the enterpreuner must attend to for the best performance of the trademark in the market reality, such as intrinsic distinctiveness and highlighting among its competitors. 

 

 

The same applies to the marketing campaigns, as well managed ones are a key factor the to trademark visibility, notoriety and prestige.

 

As we know, most companies came to realize that the customer service is increasingly becoming the determining factor for clients’ purchasing decision, as well as fidelity and the possibility of spreading the business quality.

 

By these means, we have that companies must strive for creating a strong trademark to assign its business, that should be able to attract and maintain the clientele, in order to add value to the company itself, granting possible leverage in all kinds of intercompany negotiatons.

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Author: Enzo Toyoda Coppola, and Cesar Peduti Filho, Peduti Advogados.

Source: Qual a importância da marca em fusões e aquisições?

https://leouve.com.br/ultimas/qual-a-importancia-da-marca-em-fusoes-e-aquisicoes#:~:text=A%20marca%20pode%20influenciar%20positivamente,expandir%20e%20aumentar%20seus%20lucros.

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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.”

Brazilian PTO publishes Technological Radar on fertilizers

The Brazilian PTO published, in January 2023, the Technological Radar of Fertilizers, drafted within the scope of the National Fertilizer Plan (PNF), developed by the Interministerial Working Group established by Decree No. 10.605/2021, with the aim of strengthening policies to increase competitiveness in the production and distribution of fertilizers in Brazil, in a sustainable manner.

 

It is very important to highlight that the Technological Radar it is always drafted by the Division of Studies and Projects of the Brazilian PTO, that analyses the technological information contained in patent documents. The radars focus on the analysis of technologies/sectors listed as priorities by the Brazilian Government and/or partner institutions. Its scope is to present the technological development in Brazil and in the world through the analysis of the patent documents of the technological sector.

 

 

The National Fertilizer Plan (PNF) activity plan was divided into two stages: 1) International Benchmarking and 2) Diagnosis of the production chain in Brazil, comprising themes divided into six lines of action: Nitrogen; Phosphor; Potassium; Emerging Chains; Science, Technology and Innovation; and Environmental Sustainability.

 

In this context, the Brazlian PTO was responsible for conducting studies on technological patent information bases on the fertilizer production chain, more specifically for the Nitrogen, Phosphorus and Potassium (NPK) chains.

 

Starting from a sample of 174,000 fertilizer patent documents, two specific types of analysis were performed for fertilizers. With this worldwide analysis, it was possible to present an overview of the state of the art of the technologies in question, showing the volume of inventions on a global level and the main applicants, which reflect the most prominent actors in research and development in the area.

 

In the national diagnosis, the analysis of patent applications filed in Brazil showed interest in the Brazilian market, as well as technologies with potential use in the country. The study also analyzed the patent applications filed by residents in Brazil, with the aim of identifying the profile of technologies under development in the country and who has the skills to generate innovation in the sector.

 

The entire content of the study in question can be easily accessed through the federal government website, in the corresponding link.

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Author: Bruno Arminio, and Cesar Peduti Filho, Peduti Advogados.

Source: INPI divulga Radar Tecnológico sobre fertilizantes;

INPI divulga Radar Tecnológico sobre fertilizantes

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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.”

Brazil joins Geneva Act of the Hague Agreement for the international protection of Industrial Designs

On February 13, 2023, Brazil filed before WIPO (World Intellectual Property Organization) the Instrument of Adherence to the Geneva Act of the Hague Agreement for the international protection of Industrial Designs.

 

The adherance to this Act will allow the onwer of Industrial Designs to seek their protection in 96 countries, through one filing. This will reduce costs and bureaucracy related to such protection.

 

This system can be compared to the Madrid Protocol system for trademarks, since the procedure to protect the Industrial Design in other countries throguh Hauge system is very similar to the one to protect trademarks internationally, through Madrid Protocol: the owner of an application or registration can designate it to other countries, at once, through WIPO.

 

 

The Brazilian Patent and Trademark Office will start receiving international applications for Industrial Designs, through Hauge system, on August 1st, 2023. 

 

The expetation is that the adherence to this system will increase considerably the filings of Industrial Designs in Brazil.

 

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Author: Carollina Marfara, and Cesar Peduti Filho at Peduti Advogados.

Source: Brasil adere ao Sistema de Haia para a proteção internacional de Desenhos Industriais

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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.”