Author: Peduti Advogados

Facebook team up with Gucci in counterfeit lawsuit fight in the US.

On April 26th, Facebook and Gucci America Inc. filed a lawsuit against the head of an international counterfeiting business in the United States District Court for the Northern District of California – against a woman called Natalia Kokhtenko for counterfeiting and for supposedly sell counterfeit Gucci products and other brands imitating the original via Facebook and Instagram.

In their complaint, the companies alleged that at least since April 2020 the defendant “has operated an international online business trafficking in illegal counterfeit goods”. The companies also said that Natalia “used Facebook and Instagram to promote her websites selling counterfeit products, including counterfeit Gucci-branded handbags, shoes, clothing, and accessories, in violation of Facebook and Instagram’s terms and policies.”

Additionally, the companies alleged that the defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products. This practice helped the counterfeiter escape from Facebook’s and Instagram’s enforcement actions.

Facebook’s first action was disabling the defendant’s account and removed various posts promoting the sale of the counterfeit products alleging that the posts and account violated Facebook’s and Instagram’s terms and policies which doesn’t allow users from “doing anything ‘unlawful, misleading…or fraudulent”; infringing or violating the intellectual property rights of others; or breaching its terms of service, community standards or other terms and policies. Facebook added that it offers various measures to protect intellectual property rights.

Regardless of Facebooks actions, the defendant has continued to use Facebook and Instagram to promote her sales of counterfeit Gucci products with the “unauthorized use of several of Gucci’s registered trademarks, including its house mark GUCCI, a number of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature Webbing.”

The defendant purportedly has “used these spurious marks in connection with a wide array of products, including jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks, handbags, backpacks, watches, sunglasses and bedding.” However, these were not genuine Gucci products, according to the plaintiffs. An example of an infringing product is shown below:

Gucci alleged in the complaint that it spends millions of dollars promoting its trademarks, thus, there is a high level of consumer recognition, so the consumers recognize Gucci as the source of these products and confirmed that after purchasing the defendant’s products, confirmed that they were not original.

The causes of the action are counterfeiting, trademark infringement, federal unfair competition, unfair competition in violation of California Business and Professional Code, common law unfair competition and breach of contract under California Law.

The Plantiffs seek to stop the defendant from continuing selling counterfeit products and from continuing to violate Facebooks and Instagram’s terms and policies.

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

Source: Luxury fashion brand Gucci has partnered with Facebook to file a joint lawsuit against the sale of counterfeit products. The companies alleged that the unidentified defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products.

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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.”

#falseproducts #gucci FACEBOOK Trademark

Brazilian Supreme Court recognizes international summons by post office as valid

The summons of a person domiciled in Brazil to respond to foreign judicial proceedings must occur through a letter rogatory.

The letter rogatory is a form of communication between the judiciary of different countries, with the objective of obtaining collaboration for the practice of procedural acts, such as summons of a debtor resident in Brazil for the payment of a certain amount.

However, the Supreme Court (STF), in a recent decision, upheld a decision of the Superior Court of Justice (STJ), confirming the validity of the summoning of a Brazilian company regarding foreign lawsuit by post office, without the need of a letter rogatory.

In the case analyzed by the STF (ARE 1137224), a Brazilian company had been cited by the Court of New York, by post office, to comply with a payment obligation. The STF took into account that there was a contract between the parties expressly providing for this method of service.

By approving the foreign judgment, the STJ held that the act of international service by post is valid, making the requirement of a letter rogatory more flexible. The decision of the STJ was based on the fact that postal summons is a legal means both in the U.S. and Brazilian Courts, as well as on the fact that there is a contractual provision.

The debtor company appealed to the Supreme Court, in order to annul the approval, since the summons did not take place by means of a letter rogatory. The STF, by maintaining the decision of the STJ, guarantees greater speed to summons of Brazilian companies and will prompt contracting parties to include in their contractual clauses the possibility of international summons by post.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation 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.”

#braziliansupremecourt #letterrogatory #summons

My trademark application was rejected by the BPTO, what should I do?

If your trademark application was rejected, probably the reason is because the trademark search was not done correctly.

There are many reasons to justify the rejection of a trademark application, we can cite some examples:

To reproduce or to imitate a trademark registration.
To use signs of generic, necessary, common, ordinary or simply descriptive nature, when related to the product or service to be distinguished.

This is the most common reasons but there many others in the Brazilian Intellectual Property Law.

Regardless of the cause, after the rejection decision is published, the applicant have 60 days to present an appeal against the rejection decision.

My trademark application was rejected by the BPTO

The first step is asking for a professional a legal opinion to verify if it is possible to present some of the arguments below, and what are the chances of granting the trademark application. The basis of the appeal can be:

Difference of the trademarks in their wholes;
Difference of market fields;
No possibility of confusion or undue association;
Protection of the applicant’s previous business name;
Coexistence of similar third parties’ trademark on the BPTO’s database;
Enough distinctiveness.

If it is possible to appeal, we recommend that you appeal for do not lose the investment involved.

If it is not possible to appeal, the better way is to choose another name for your trademark and ask for a professional to do a full search.

Finally, before filing a trademark application, it is very important to ask a professional to do a full search, this will prevent the rejection of your trademark and avoid future losses.

The search will show you the chances of granting and if the trademark is available for registration.

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Author: Luciana Santos Fernandes, Junior Associate 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.”

#appeal #rejection #trademarkrejected

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.

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.”

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

#extension #industrialproperty Brazil China Patent

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.

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.”

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

#injunction #IPrights #preliminary

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.

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.”

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

#MadridProtocol #oppositions #TrademarkinBrazil Trademark

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.”

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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#common #generic #vulgar Distinctiveness Trademark

SOFTWARE TAXES IN BRAZIL: ONLY MUNICIPALITIES ARE ALLOWED TO TAX SOFTWARE SERVICES

The tax regime applicable to software transactions in Brazil had raised controversies for a long time, because the federal government and each state or municipality have their own discretionary powers to enact their laws and regulations for collecting their taxes.

In this context thecompetence’s conflict between the ICMS and the ISS over new technologies of software supply, it is worth clarifying that the ISS is a municipal tax levied on the import and national provision of services provided by companies, legal entities or self-employed professionals, while the ICMS is a state tax levied on the import of products and the circulation of products, that is, applicable to products.

Before the taxation of payments for software could be varied depending on whether the transaction is characterised as the licence of a copyright, the sale of merchandise or the provision of services.

Thus, the decision was extremely difficult to identify a correct taxation of the software that caused the trial to be postponed several times

On February 18, finally the ministers of the Supreme Federal Court (STF) decided by majority vote that the Municipal Tax on Services (ISS) affects the licensing or right to use software because it is a service.

According to the STF, the taxable event of the ICMS is the transfer of ownership of the asset, which does not apply in cases of licensing or right to use software characterised as intangible goods.

Nonetheless, in the next session will be addressed it is still awaiting a decision about if this new understanding will be required only after the date of publication of the minutes of the judgment of the case or if it will also be valid retroactively, which would legitimize, for example, the recovery of amounts unduly paid to state tax authorities.

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Author: Sheila de Souza Rodrigues, Associate Lawyer at Peduti Advogados.

Source: STF conclui julgamento sobre disputa tributária em software (STF concludes the judgment on software tax dispute)

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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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#business #SaaS #taxlaw Software technology

The importance of copyrights on the music industry: the Taylor Swift case

Can you imagine creating a whole body of artistic projects and being prohibited of reproducing it? That’s exactly what is happening with the singer Taylor Swift, all because of a conflict related to copyrights.

It is known that there are two types of copyrights on the American system: the first, the musical work copyright, that is basically the musical composition – covering underlying music and lyrics of a song – and the sound recording copyrights, that covers the actual recording of a song, also known as a master recording of a musical composition.

While the singer is the owner of the musical work copyrights of her first six albums, Big Machine, her last record label, is the owner of the sound recording copyrights, which means that there are certain limits to the singer’s rights on the soundtracks.

The Section 106 of the U.S. Copyright Act itself relates to that, providing exclusive rights to the owner of the copyright:

“Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following (…)

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”

Analyzing the Law, it is clear that the record label, as said by the 6th item above, is responsible for the authorization for Taylor Swift to perform the soundtracks of her first six albums publicly by means of a digital audio transmission, which can definitely difficult the singers’ events and decisions on her songs.

The Record Label also receives a part of the soundtracks’ streaming profits.

Taylor Swift is now rerecording her oldest songs as new masters in order to have full rights on the soundtracks.

This case shows how important it is to know and protect every aspect of the copyright.

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

Source: Seeing “Red”: Taylor Swift and the Dueling Copyrights in a Song

Source: Taylor Swift: entenda por que cantora refaz álbuns com cópias de si mesma

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#copyright #musicindustry #taylorswift

The use of a third-party trademark in sponsored links

Sponsored links are used to divulge products and services, in websites, social medias etc. This service is paid, for a single fee or per click. Many companies use this kind of marketing because it is a way to divert the customers of others.

How?

They use a third-party trademark like a key word, when the customers search for this key word, the sponsored link appear. If the customer clicks in this link, they think that is a page of a certain company with prestige and good reputation, but in fact it is a page of a competitor company. This practice constitutes unfair competition.

Unfair competition is any act or practice in industrial or commercial activities contrary to honest practices, for example, uses fraudulent means to divert, for his own or a third-party benefit, clients from a third party.

In Brazil we have many judicial decisions published by the Courts determining competitors to cease the use of the third-party trademark in sponsored links.

Besides, the judicial decisions determine to the competitors pay damages to the trademark owners.

Because of that, if you want to contract a sponsored link service, it is important to abide the local trademark laws, and do not infringe third party trademarks. Use available key words.

How to protect my trademark?

If you are a trademark owner concerned with the use of your trademark in sponsored links, we inform you that you have the right to protect your trademark from dilution and parasitism, as well as its prestige and reputation. It is possible to be compensated for the damages suffered, pursuing a legal action.

We emphasize that is important to be assisted by professionals specialized in intellectual property in these cases. Our office monitors your trademarks and possible violations. Contact us for more information.

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Author: Luciana Santos Fernandes, Junior Associate at Peduti Advogados.

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#keywords #sponsoredlinks #trademarks