Dispute of automotive giants Fiat, Ford and Volkswagen with independent auto parts manufacturers

The Administrative Council of Economic Defense (CADE) started to judge the case in which the National Association of Auto Parts Manufacturers (Anfape) accuses automakers Fiat, Ford and Volkswagen of anti-competitive behavior.

The main focus of the discussion would be that automobile companies prevent independent manufacturers from producing spare parts such as bumpers, bodywork, headlights and mirrors.

On the one hand, the automobile companies claim that the products are industrial property registrations being under their exclusive use. They also claim that there is no limitation in the intellectual property law of applying the registration to replacement parts, and that there are, in addition, legal obligations for them to be in those markets.

The companies also emphasize that exercising industrial property rights is not an unlawful act and added that the discussion on what is intellectual property is not the responsibility of CADE but of the Judiciary.

On the other hand, the independent manufacturers claim that the registration applies only to articles used in manufacturing, not to the replacement products. As an additional argument, they claim that maintaining the industrial property argument in the spare parts market guarantees to the automobile companies the monopoly of the production of these products.

For the public prosecution, the consumer is imprisoned by the manufacturer of his vehicle, subject to the consequences of the exercise of potentially abusive economic power.

Source

Author: Barbara Fernandes Marcon Pires

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

Brazilian NGO sues Google in USA

Rio de Janeiro-based NGO AfroReggae has been suing Google since September 2016 for allegedly failing to give credit to the partnership that resulted in a project named Beyond the Map (Além do Mapa) – a series of 360-degree interactive videos showcasing the history of residents of the favelas of Rio de Janeiro, launched just before the Rio Olympics.

The NGO claims that it gave Google support in the incursion into the communities, presenting the company´s producers with local information, trivia and life histories, which was part of AfroReggae´s previous project named It Is In The Map (Tá no Mapa). AfroReggae was founded in 1993 with the mission of using the arts and culture as tools of social development. AfroReggae delivered its vital contribution to the project but Google surprisingly did not recognize the NGO in the credits of the service. In face of the frustrating situation, AfroReggae filed a case at the court in Santa Clara County (Silicon Valley, California), where Google’s headquarters is located.

In late June, the court gave the green light to AfroReggae’s action, opening the possibility for charging punitive damages. The NGO´s attorney explained that no set amount will be presented beforehand, since the assessment of the extend of the damage will be carried out by the court, which shall take in consideration the damage caused and the size of the company as well as warning it wants to give the company in order to avoid recurrence.

The NGO´s attorney sustains that Google took advantage of AfroReggae because the Olympics was a huge event, so an unique opportunity for promotion was lost.

Álvaro Petrillo
Attorney at law in Peduti

Registering Contracts have become simpler in Brazil

In July, the resolution 70/2017 was published by Brazilian Patent and Trademark Office (BPTO). In accordance with this new resolution, BPTO is not obliged to analyze the content of the contracts to register them.

In Brazil, the registration of contracts in BPTO is mandatory in order to remit royalties to foreign companies. Prior to this resolution, BPTO used to examine the contracts and the amount of payments. There could be a rejection based on the amount of the royalties to be paid. This procedure used to delay the registration of the contracts and without the registration the payments to foreign companies were not permitted.

Now, the registration has become simpler and faster, BPTO examines the formal aspects of the contracts and emit a registration certificate at latest within 01 month. Meantime, a safeguard is made: ”BPTO does not examine the contract in accordance with the tax legislation, tax legislation and remittance of capital abroad legislation”.

Legal entities may now own EIRELI in Brazil

[one_half]Up to now, only individuals could be owners of Individual Limited Liability Company (EIRELI) in Brazil. However, as of May 2017, legal entities may also hold EIRELIs, as provided in item 1.2 of Annex V of Normative Instruction 38/2017 of the Department of Business Registration and Integration (DREI), published on 3 March 2017, and which will enter into force on 2 May 2017.

It is worth remembering that EIRELI is a type of limited liability company that, unlike other corporate types, does not require two partners for its existence, but only one owner. In its constitution, it is necessary to pay minimum capital of 100 (one hundred) times the national minimum wage, which represents a minimum capital of R$ 93,700.00 (article 980-A of the Brazilian Civil Code – Law 10,406/2002).

This is a very positive change for the domestic and foreign corporate sector, as it expands the range of business types that companies can use for their enterprises in Brazil. In addition, those limited companies that had/have a second minority partner only to comply with the legal requirement of duplicity of partners, will be able to become EIRELIs, with the exclusion of the minority partner, thus reducing bureaucratic costs and unnecessary legal risks.

EIRELI can be used as a type of holding company in complex corporate structures, to enable corporate and succession planning.

Foreign multinationals will also be able to take advantage of the novelty in their investments in Brazil, by instituting EIRELIs owned by them or by transforming their Brazilian subsidiaries into EIRELIs, which will certainly reduce costs with solicitors, among other bureaucratic inconveniences.

The full text of this normative instruction can be accessed at: http://drei.smpe.gov.br/.

AUTHOR: Cintia BusseAutor .

Brazil: Still one of the preferable countries to where to extend IP rights?

According to the Central Bank of Brazil, for the first time in weeks, the expectative to the recovering of the economic activity is more optimistic in Brazil.

The expected revelation of the National Consumer Price Index (IPCA), on April, showed that the expected inflation for 2017 has decreased, since it changed from 4,06% to 4,04%. After six weeks of instability, the prediction to 2017 Gross Domestic Product (GDP) changed from 0,40% to 0,43%, followed by the advance of the estimated industrial production that came out from 1,26% to 1,36%.

For 2018, the forecast is a continuous growing of 2,50% to the economic activity and to the industrial production.

This scenario lead us to think that the Brazilian market shall have back the attention of the international investors and, thereafter, keep Brazil among the preferable countries to where to extend IP rights.

Source

Brazilian Patent and Trademark Office will hire more examiners

With the purpose of stimulating management and improving its operating performance, Brazilian Patent and Trademark Office (BPTO) announced the convocation of 70 new public servants.

70 new public servants will be hired, being 50 for the position of Researcher in Industrial Property and 20 for the position of Technologist in Industrial Property.

This measure is intended to strengthen and accelerate the examinations of Trademarks and Patents in Brazil.

“Even in times of economic adjustment, it is necessary to provide conditions for the productive sector to advance. The examination of trademarks and patents has to be done in a time compatible with international practices. Our management is strongly committed to the reduction of bottlenecks and the modernization of INPI, and the appointments of the authorized reserve records are another big step in this Direction” – said Marcos Pereira

In turn, the BPTO president, Luiz Otávio Pimentel, pointed out that the entry of the new employees will have a positive impact on the Institute’s services and will not generate a public deficit, since there is a forecast of an increase in revenues and there have been exonerations and retirements since the last recruitment.

“The appointment, even if reduced to the need of personnel, was necessary to equate the structural problems of the BPTO, providing the best service of the business sector and of society with regard to the acts of our legal competence. Considering the current economic constraints of the Brazilian Government, the expenses arising from the entry of these new employees will not imply an increase in the public deficit, since the entrance of the bankrupt may be absorbed by the Institute, in view of the expected increase in BPTO revenues and also the reduction Of staff caused by the exemptions and retirements since 2013, when there was the last entry of servers. Since then, there have been more than 190 exonerations and retirements” said the president of INPI.

Written by Dra. Clécia Bruna Diniz Pereira , Lawyer of Peduti Sociedade de Advogados.

Source: http://www.inpi.gov.br/noticias/ministerio-do-planejamento-autoriza-inpi-a-convocar-cadastro-de-reserva

Patent registration row has 240,000 orders and delays can take 11 years in Brazil

The time to have a patent in Brazil can take up to 11 years, exactly, 11 years of waiting to have a response from a vital organ to the technological development of our country, to encourage innovation, to increase the investments of the initiative private sector, which would certainly increase employment and the social development.

Today the Brazilian Patent and Trademark Office (Instituto Nacional da Propriedade Industrial – INPI) has 260 researchers responsibles to analyze all the applications filed, an average of almost a thousand processes for each examiner, since the Institute already has about 242 thousand processes to be analyzed.

It is known that the lack of structure is a chronic problem, that can be worse with the economic crisis if the government decides to cut more resources. In the United States, for example, there are about 6,000 examiners, which reduces the exams to about two years. In Brazil, we should have a much stronger structure, once the official fees paid by the applicants to process the services provided by the INPI has a contractual nature, that is, the amounts collected should be totally redirected to the INPI by the Federal Government. However, It is not what happens, since the majority of the amount paid by the applicants is dissolved in public accounts.

This situation creates a big discredit to our country, since the companies that could invest much more, or even those that could begin to invest in research and development, are discouraged by the inefficiency of the Institute, certainly that the development necessarily goes through a fast and hard system of industrial property protection, since technological evolution takes place quickly and competition does not allow this speed to decrease.

This way, one of the ways to speed up the national development is, without doubt, the massive investment in INPI through solid policies created by our government, stimulating more innovation and technology to our country and, as an inevitable reflection of this Policy, we will see an increase of several sectors of our economy, and as a consequence will stop buying international technology to use the technologies developed here, helping reduce the cost Brazil, making us more competitive in the international market.

Another relevant aspect, we have to express our criticism to those who consider it a monopoly and would be a market reserve.

Both expressions, monopoly and the market reserve, are covered by the idea of one who carries on an activity without any competitor or competitor without any other solution being given to the problem being solved by those who exercise the monopoly or the market reserve, this situation is prohibited by our competitive legislation and inspected by the Brazilian Administrative Council for Economic Defense, an agency of the government and often referred to as CADE.

In this sense, it is worth to clarify that patent is the exclusive exploitation that the State confers on the individual that brings to the general knowledge a certain technology, an innovation, through its individual capacity, intellectual or financial, but this particular deserves the privilege of exploitation as he spent part of his time and money to bring society an improvement, which would not be the case if we depended on a system of sharing.

Patent is also a source of innovation, in the way that it has the complete presentation of its innovation to society, its literature will be the source of studies and improvements, making possible new patents and even more innovation. Patent does not mean monopoly, because it does not protect the technological solution, but the way in which the solution was given, and it is still possible to have numerous solutions to the same problem that patent has solved. When Thomas Edison invented the incandescent lamp, other forms of lighting already existed and many others were created, being numerous objects of patent, that is, also stimulated the competition giving us immeasurable benefits.

In this way, we have verified that a hard system of protection of industrial property, efficient and fast, stimulates social evolution through innovation, contributing to competition and bringing new opportunities to strengthen our country and our companies in the international scenario. For this reason, it is clear that we can not agree with what is going through the INPI, requiring a restructuring of the structure so that we have more credibility in relation to the protection of industrial property and achieve the solid system that we believe that will be able to help us.

Pedro Zardo Júnior
Attorney at law
Senior associate – Head of the litigation team in Peduti

Intellectual property in textile and clothing industry in Brazil

A recent article published by Sergio M. P. de Carvalho, Marina F. Jorge, Vivian I. Barcelos, Felipe V. Lopes, Fernando L. de Assis, Vicente de S. C. Freitas and Gustavo T. P. da Silva, entitled “Use of patents, industrial designs and trademarks in the textile and clothing industry in Brazil” [available on http://www.inovacao.unicamp.br/sem-categoria/uso-de-patentes-desenhos-industriais-e-marcas-na-industria-textil-e-de-confeccoes-no-brasil/] highlights that the number of patent, industrial design and trademark applications for textile and clothing articles has increased between 2000 – 2012.

According to the international patent classification, the treatment of textile and others are in the first place, reflecting 1,406 applications or 36% of total patent applications filed between 2000 and 2012. In the second place is the textile yard and others with 781 (20%) of the applications filed in the same period; and in third place is braiding and others, with 619 applications (16%). Patents for invention appear in the fourth position with 468 (12%) of these applications.

In relation to industrial designs of non-residents, the classes related to the textile and clothing industries presented a less significant participation in the period between 2000 and 2012. The growth rate in the period was expressive, around 164%. However, when considering absolute numbers, there is an increase of 54 applications. In 2000, non-residents with 33 applications represented 11% of the total applications filed. In 2006, the year in which the largest number of non-resident applications was registered, they reached 23% of the total, with 146 applications filed.

With regard to trademarks, according to the Nice classification, the applications shows a predominance of class 25 (for clothing, footwear and headgear). The class in reference represents 88% (93,529 applications) of the total applications in the textile sector. After that are bed and table fabrics, with 1,952 application (15%) and 2% of the requests for lace and embroidery and others (2,033 applications) and yarns for textile use (1,871 applications).

Lilian Silva
Attorney at law
Associate in Peduti

DIGITAL LAW

Signed on May 11, 2016, Decree No. 8.771 came to regulate Law No. 12.965 / 2014 (Brazilian Internet Act).

This decree it’s about:

  • Discrimination of data packets on the Internet and traffic degradation.
  • Records and data protection by connecting providers and applications.
  • Transparency in request registration information by the public administration.
  • Inspection and investigation of offenses.

The breakdown of data packets on the Internet and degradation are set out in Chapter II (Art. 3 to Art. 10) which deals with the network neutrality provided for in art. 9 of the Brazilian Internet Act.

In this chapter, art. 3, requires the equal treatment of data packets and should be guaranteed the preservation of the public and unrestricted nature of the internet and the fundamentals, principles and objectives of Internet use in the country, complementing the legal provisions of that art. 9 of the Brazilian Internet Act, which provides that the responsible for the transmission, switching or routing has the duty to treat isonomic form any data packets without distinction by content, origin and destination, service, terminal or application.

About discrimination or degradation of traffic, these are exceptional measures which should only occur through technical requirements necessary for the proper provision of services and applications.

The decree also provides for the prohibition of unilateral conduct or agreements between responsible for the transmission, switching, and routing with application providers.

This measure aims to curb not equal treatment provided for in network neutrality, forbidding agreements that compromise the public and unrestricted nature of the internet, prioritize data packets due to commercial arrangements and prioritize applications offered by the transmission companies, switching or routing.

The guard and data protection are provided for in Chapter III (Art. 11 to Art. 16).

It defines what are considered cadastral data and of its request by the administrative authorities, which must be specific and not generic, a fact that differs from the provisions of art. 10, § 3 of the Brazilian Internet Act, behold, there was no impediment to access such registration data.

The novelty is brought about annual publication made by the websites, the head of each agency of the federal government that will bring statistical reports of registration data request.

New security standards and confidentiality of records, personal data, and private communications, are listed to the connection and applications providers must retain the smallest possible amount of such data and communications are among the listed items, create management solutions records to ensure the inviolability of the data.

Finally, the monitoring and investigation of offenses are set out in Chapter IV (Art. 17 to Art. 22), which determines that Anatel will be the regulatory body for monitoring issues and finding violations and the National Secretariat of consumers will act on inspection and find violations.

* This review was prepared for the purpose of enriching the debate and should not be construed as a legal opinion on any specific transaction or business.

Written by Fabio Cosentino

fabio@peduti.com.br

Slogans – There are protection?

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