Author: Peduti Advogados

The importance of trademark registration in Brazil

Trademark registration protects the interests of the company. Its brands are among the most important assets of a company. When well cared for, a brand can generate a constant inflow of profits through direct or indirect exploitation, as it is the main link between the business and the customer.

Through trademark registration, the following rights are granted: (i) exclusive use throughout the national territory, in its market segment and (ii) the right to prevent unauthorized third parties from making use of the same or similar expressions.

In addition, if the trademark is used without being registered, at any time the company can be forced to stop using by others who were more cautious and registered the mark in the first place.

The trademark also brings credibility to the establishment.

The importance of trademark registration in Brazil

In addition, the trademark allows its owner to license or franchise its business, increasing its income without ceasing to be the owner of the brand.

In Brazil, the registration of trademark takes place before the Brazilian Patent and Trademark Office (BPTO).

The trademark registration must be requested from the BPTO by filling out a specific form, which must be delivered along with the image file.

The procedures may seem simple, but they are not. From the initial research to the chosen categories, the whole process requires extensive practical and theoretical knowledge, which is why Peduti Advogados Associados provides services for depositing and monitoring brands through a highly qualified team.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Attorney at law, 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.”

#brand Trademark

The Microsoft’s patent that enables to digitally reincarnate a person as a chatbot

On December 01, 2020, the United States Patent and Trademark Office (USPTO) published the patent US 10,853,717 B2, filed by Microsoft, which presents the possibility of digitally reincarnating a person as a chatbot.

To do that, Microsoft intends to use social data, such as images, voice data, social media posts, electronic messages and written letters, to train an artificial intelligence that, throughout machine learning, will be able to mimic a person.

According to patent’s abstract ‘The social data may be used to create or modify a special index in the theme of the specific person’s personality. The special index may be used to train a chat bot to converse in the personality of the specific person. During such conversations, one or more conversational data stores and/or APIs may be used to reply to user dialogue and/or questions for which the social data does not provide data.’.

The idea of using social data to create a simulacrum of a person has already been presented in fiction, notably in Black Mirror tv series. The first episode of the second season (‘Be Right Back’) tells the story of a young woman whose boyfriend is killed in a car crash. While mourning him, she discovers that technology allows her to communicate with an artificial intelligence that imitates her boyfriend.

In real life, on February 06, 2020, a Korean TV show used virtual reality to reunite a mother with her seven-year-old daughter who died in 2016. For eight months, the production team has used VR technology to implement the late child’s face, body, and voice into an interactable virtual character.

Despite the ethical issues of ‘bringing someone back from the dead’, it is important to note Microsoft’s patent does not indicate the specific purpose of creating a chatbot of a deceased person.

As a matter of fact, for Microsoft the use of social data to create a person’s chatbot is much more useful to help the company to improve its own customer service chatbots, as well as a enabling the creation of an efficient AI assistance.

On the other hand, though, the malicious use of such technology may increase the cases of identity theft. If it is common to see the hacking of social media accounts to perpetrate the sending of spam or malicious links, the use of a chatbot interpreting a person hacked may raise the numbers of such crimes due to the difficulty to identify the real source, if it was truly sent by the person or by a chatbot emulating him.

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Lawyer Author of the Comment: Carlos Eduardo Nelli Principe

Source | Source | Source | Source | Source

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Regulations of software patents in Brazil

In August 2020, The Brazilian Trademark and Patent office (INPI) created a guideline stating rules for the examination of patent implemented through software. The guideline was published for a public consultation and suggestions by interested parties.

After reviewing the suggestions, INPI issued a final guideline that will be used for examination of software related patents in Brazil.

It is important to mention that as the software-related patents are based on a process, so it only can be registered as an invention patent and have to comply with the requirements established on the Brazilian law.

Moreover, the Brazilian law does not allow a patent of a software itself.

It is mandatory the relation with a device, so the product can be patented or the device functionality.

Peduti Advogados has patent attorney specialized on patent matters, if you have any question regarding a software-related patent and the requirements feel free to contact us.

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Lawyer Author of the Comment: Laila dos Reis Araujo

Source

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#PatentinBrazil #softwarepatent Patent

Legitimate Interest In Action

With the beginning of the data age, companies and organizations started to store more information about their customers uncontrollably. Papers storing the information became to be digitally retained by organizations.

To comply with the new global trend on processing data, Brazil issued a law known as the General Law for the Protection of Personal Data (LGPD) as of August 14, 2018. This law entered into force in September 2020 to regulate the processing of personal data in Brazil.

Ten legal bases set the conditions for processing personal data. The legitimate interest is one of the most flexible ways of making data processing viable by the controller.

The organization needs to carry out some tests to ensure that the legitimate interest can be applied as a legal basis for data processing, evaluating, and documenting the Legitimate Interest Assessment (LIA).

One should consider some issues to ensure that the legitimate interest is applicable to data processing, such as:

· Why do you want to process personal data?

· What benefit do you expect to obtain from the processing of personal data?

· Do any third parties benefit from the processing of personal data?

· How significant are these benefits?

· What would be the impact if you could not continue with treatment?

· What is the intended outcome for the data subject?

The company needs to balance the factors identified during the assessment and decide whether it still believes that its interests are compatible with the treatment of data taking into account reasonability and ethics as guiding principles of the test.

It is relevant to advise the person in charge of personal data protection or advise a consultant specialized in Digital Compliance, bringing benefits in the evaluation procedure to ensure that the company reaches a satisfactory degree of compliance with the data protection regulations.

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Lawyer Author of the Comment: Felipe Liphaus

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#Compliancedigital #DireitoDigital #governançadedados #GovernançaDigital LGPD

Priority examination for patent applications in Brazil

In Brazil, through the Brazilian Trademark and Patent Office (BPTO), it is possible to request priority for a patent application in some specific cases, listed below:

1) Based on the applicant:

– physical person of age 60 or older;

– physical person with physical or mental disabilities;

– person with a serious disease;

– Micro-Enterprises and/or small-sized companies;

– Scientific, technological, and innovation institutions;

– Startups.

2) Based on the situation:

– Applications that need to be granted in order to obtain financial resources;

– when third parties are being accused of counterfeiting the object of the patent application;

– applications that third parties own a technology that was later applied for as a patent;

– Technology processes resulting from public funding;

– Technology processes available on the market.

3) Based on the technology

– applications seeking protection of green technology;

– applications whose object is a product for treatment of specific diseases, including Covid-19.

4) Based on the cooperation

– Applications of patent families whose protection was initially requested in Brazil;

– Applications whose matter was considered to be patentable by a partner office.

Usually, the priority is applicable in cases that require urgent analysis, which justifies the priority in relation to other patents applications. We clarify that even for patent applications in which it is not possible to apply for priority, the BPTO has been working to reduce the backlog.

It is important to note that for each type of situation in which priority is applicable, different documents will be required and the amount of the fee also differs from case to case.

Peduti Advogados assists companies and individuals on this kind of procedure. Feel free to contact us if you want to know more information about this procedure.

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Lawyer Author of the Comment: Luciana Santos Fernandes

Source

Headline: Trâmite prioritário – NOVOS PROJETOS-PILOTO

#analysis #patentsapplication #priority

The importance of the evidence in a claim of trademark distinctiveness

Priority examination for patent applications in Brazil

In a recent decision, the Norwegian Board of Appeals confirmed the rejection decision issued by the Norwegian Industrial Property Office (NIPO) and declined Facebook’s claim to register the WhatsApp Logo for a variety of products and services, such as software and telecommunication services. This decision is surprising, not just based on the insertion of this logo as a mark in the world’s routine, but also because it may be the result of failure of the evidence submitted to support the trademark distinctiveness.

The Norwegian Board of Appeals sustained that the trademark was unable to function as a “symbol of commercial origin”, and that its level of distinctiveness was deemed insufficient to be registered as a trademark, confirming the NIPO’s rejection decision.

It is unthinkable that Facebook would have a hard time proving the distinctiveness of the WhatsApp’s logo, since we as consumers immediately connect this symbol to its products and services as soon as we see it anywhere. Therefore, what comes to our mind is that the gathering of evidence in this case was not as careful as the circumstances required.

Therefore, this situation clearly shows that the investment in marketing, publicity and sales should not be the only focus a company should have to build a strong and valuable trademark, it is likewise of great importance to care about all legal aspects that involve the protection of that mark.

The owner of a trademark that has its distinctiveness challenged shall not rely only on the supposed fame and large recognition of the sign, instead sufficient time and effort should also be devoted to gather evidence of the dissemination of the sign in the relevant market. The proof of distinctiveness can be, in some cases, as important as the distinctiveness itself.

The failure of proving a mark is registrable and has – or has acquired by virtue of extensive use – sufficient distinctiveness could be, in the end, disastrous to the business results as a whole, especially if the company has already put a lot of effort and money to establish the sign in the market and to connect to its products and/or services.

In the worst-case scenario, all the investment already made in a mark might be in vain if the necessary legal care is not taken properly.

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Lawyer Author of the Comment: Gabriela Miranda

Source

Headline: Bad news for WhatsApp as Norwegian Board of Appeal refuses to register logo

Distinctiveness evidence Trademark

The use of exaggeration in the advertising industry – the puffing technique

Puffing is the advertising technique of using exaggerated adjectives, which may or may not cause misleading. This advertising practice is not prohibited in cases where the exaggeration used is evident and harmless and does not have the animosity or capacity to deceive the consumer.

In this sense, the use of puffing should be limited to its legitimacy of use when it does not mislead the consumer or causes him to acquire what he does not want because it is excessive and abusive advertising. Therefore, when exaggeration is easily observed, there is legitimacy for use.

The brazilian doctrine understands that puffing is not prohibited, as it is represented “as flashy advertising, whose subjective or playful character does not allow it to be objectively seen as binding.”¹

To test whether or not there is a subjective criterion, which does not use a critical and individual assessment of the consumer. Thus, the personal element (personal opinion) will prevail, and consumers will choose the product according to their personal interests and motivations and will not respond to the exaggerations caused by puffing as “the best flavor”, “the film of the year” etc.

puffing advertising technique

Additionally, as the puffing technique is very common when exaggeration is used to refer to the subjective elements of the product to which the ad refers, such as the expressions “the most delicious”, “the best flavor”, “the most welcoming”, and there is no need to demand proof of such statements, as consumers’ opinions about the product or service will certainly be different. For this reason, the consumer does not credit the ad for its exaggerated subjective character.

It can be used as an advertising technique when it is perfectly possible for the consumer to understand the exaggerated and sumptuous character of advertising, when it is, for example, an exaggeration that has a subjective aspect as its object.

If the exaggeration refers to an element that can be objectively measured and, after criteria have been established and the evaluation has been carried out, the object of the puffing does not correspond to the reality of the advertised product or service, advertising will be misleading.

If it’s considered a misleading information/advertisement, it can be fought by unfair competition supported by the brazilian law.

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¹ JUNIOR, Nelson Nery. Os princípios gerais do Código Brasileiro de Defesa do Consumidor, Revista, p. 67

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Lawyer Author of the Comment: Laís Iamauchi de Araujo

Source: The puffing advertising technique

#advertising #puffing

How maradona’s trademarks were not under his ownership

Diego Armando Maradona, the soccer player from Argetina that passed away on November 25th, 2020, although being worldwide famous and known not only by soccer fans, was not the owner of the brands related to him, such as “Diego Armando Maradona”, “Diego Maradona”, “Maradona”, “Diegol”, “El 10”, “El Diego” e “La Mano de Dios”, registered in Instituto Nacional de La Propriedad Industrial of Argetina.

According to the magazine “Olé”, also from Argetina, the brands are registered under the titularity of the company Sattvica S.A., that is reporterdly controled and owned by Matías Morla, Maradona’s last attorney, and Maradona does not appear in any kind of information of the brands registration.

fonte: ole.com.ar

It is important to highlight that the ownership of the brands by the company does not mean that there was any kind of illegality, bearing in mind that is possible that the soccer player has assigned his rights to the company.

This subject will now be discussed by Maradona’s Family on the inventory process in order to clarify if the brands should be part of the division of Maradon’s assets.

In any case, this situation shows the importance of the regular brand registration, bearing in mind that it is one of the most important and valuable assets owned by someone, such as Maradona’s trademarks.

Maria Luiza Barros da Silveira, December 11th, 2020.

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Lawyer Author of the Comment: Maria Luiza Barros da Silveira

Source: Empresa do advogado de Diego Maradona é dona de todas as marcas do ex-jogador, diz jornal

Source: Una empresa de Morla es la propietaria de todas las marcas Maradona

#brand #industrialproperty #Maradona #soccer #trademarkregistration

The Legal Framework for Startups

On December 14th, the Chamber of Deputies of Brazil approved the complementary bill (PLP) 146/19 better known as the “Legal Framework for Startups” and now is subject to the appreciation by the Federal Senate.

According to the bill, the startups shold have a history of up to ten years since foundation and up to 16 million reais of annual revenue.

The company also needs to declare that it has an innovative business model or that it belongs to the special regime Inova Simples, provided for in The General Law on Micro and Small Enterprises (123/06) it has the objective of establishing general rules regarding the differentiated treatment to be given to micro-enterprises (MEs) and Small Companies (EPPs) throughout the country.

The draft bill provides to implementation of a regulatory sandbox to stimulate innovation. Also provides a special bidding procedure to stimulate investment in startups. Furthermore, the draft bill provides rules will affect the working relationships.

In short, the “Legal Framework for Startups” proposes to facilitate the expansion of the startups market in the country, especially because promises simplifying bureaucracy and to create a more legally secure environment for entrepreneurs and potential investors.

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Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source: Câmara dos Deputados aprova marco legal das startups

#inovation #startup

An overview of The Directive on Copyright in the Digital Single Market

The Directive on Copyright in the Digital Single Market¹ aims to harmonize some points of the Copyright Law of the European Union, hardening penalties for violations of copyright to guarantee greater protection to the owners of intellectual works published on the internet.

For the moment, the Directive is awaiting final approval by the Council of the European Union and after its publication in the Official Journal of the EU the Member States will have two years to transpose the new rules into their national law.

Among many discussions that have arisen from the Directive, two articles have gained extreme repercussion due to the changes that may rise from them in the way in which copyright is treated by the Member States of the European Union.

The articles 11 and 13 – now corresponding to articles 15² and 17³ due to the last changes inserted in the Directive – which received the name ‘link fee’ and ‘upload filter’, respectively.

The Article 11 (now Article 15) is intended to tax news aggregators (such as Google News) for disclosing links to news available in another website. On the other hand, the article 13 (current article 17) provides responsibility for the platforms that disclose copyright protected works without the consent of its creator.

In other words, if the platform user infringes the copyright of third parties when posting the content, the responsibility will fall directly on the platform itself.

If artists and content creators welcomed the proposed measures to increase the protection of their rights, opposing groups, led mainly by companies like Google and Facebook, have already firmly opposed the Directive.

The main issues

Mainly, there can be indicated two problems that compromise the way which content is nowadays disseminated over the internet.

First, in relation to the so-called “upload filter”, there is a need for the platform to previously analyze the content that is posted by its users, thus configuring a prior censorship.

Among the most affected by the article 13 is the YouTube video platform, which has been ostensibly opposing the directive’s approval and encouraging its users to do the same, as noted in the ‘European copyright: there’s a better way’⁴ manifesto, disclosed by Google, owner of the platform.

An overview of The Directive on Copyright in the Digital Single Market

Effectively, although Youtube already adopts a strict policy for copyright protection, if the Directive is approved in the terms in which it is proposed, it is quite possible that the videos made available by the platform will be previously analyzed more accurately before of its placement to the public.

Furthermore, it cannot be forgotten that the platform’s discretion will unequivocally cause problems for content creators, who will constantly need to make complaints about deleted videos on the platform due to alleged copyright infringement, causing the service to not continue the way it currently does.

On the other hand, in relation to the implications of the so-called “link fee”, it is already possible to observe its effects in countries like Spain and Germany, in which, regardless of the directive’s approval, local governments have already decided to tax news aggregators . In Spain Google News was discontinued due to the implementation of this fee⁵.

In this point it is important to highlight that a study ordered by the European Commission analyzed the effects of the application of this tax in Spain and Germany. As a result, the study revealed that newspapers benefited from the services provided by news aggregators, expanding their visibility, and attracting the public to consume their services⁶.

However, it is important to note the version of the Directive adopted in March 2019 contains specific provisions that oblige Member States to protect the free upload and sharing of works for the purposes of citation, criticism, analysis, caricature or parody.

This change addresses the portion of the most vigorous complaints against the first versions of the Directive’s texts, as it ensures that memes and GIFs can continue to be shared freely.

Conclusion

The measures proposed by the Directive to increase copyright protection on the internet have the potential to drastically change the way that content is disseminated today.

Despite the legitimate and expected preservation of copyrights on the internet, the difficulty of applying the measures proposed by the Directive comes up against both the interests of companies that will be most affected by the Directive and the users themselves, who are not willing to give up the achievements raised over the years with technological advances.

There is a need to balance the wishes of users and interested companies with the preservation of copyright on the internet, adopting measures that efficiently protect such rights without significantly altering the way content is disseminated and consumed on the internet.

It is important to highlight that although still restricted to the Member States of the EU, the Directive may reflect on the way other countries located outside the European Union deal with the protection of copyright on the internet.

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¹ Full text available on:

^{https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32019L0790&from=EN}

² Article 15 – Protection of press publications concerning online uses – […] 5. Member States shall provide that authors of works incorporated in a press publication receive an appropriate share of the revenues that press publishers receive for the use of their press publications by information society service providers.

³ Article 17 – Use of protected content by online content-sharing service providers – […] 4. If no authorisation is granted, online content-sharing service providers shall be liable for unauthorised acts of communication to the public, including making available to the public, of copyright-protected works and other subject matter, unless the service providers demonstrate that they have: (a) made best efforts to obtain an authorisation, and (b) made, in accordance with high industry standards of professional diligence, best efforts to ensure the unavailability of specific works and other subject matter for which the rightholders have provided the service providers with the relevant and necessary information; and in any event (c) acted expeditiously, upon receiving a sufficiently substantiated notice from the rightholders, to disable access to, or to remove from their websites, the notified works or other subject matter, and made best efforts to prevent their future uploads in accordance with point (b).

^{4 https://blog.google/outreach-initiatives/public-policy/european-copyright-theres-better-way/}

^{5 https://www.theguardian.com/technology/2014/dec/11/google-news-spain-to-close-in-response-to-tax-on-story-links}
^{6 https://www.asktheeu.org/en/request/4776/response/15356/attach/6/Doc1.pdf}
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Lawyer Author of the Comment: Carlos Eduardo Nelli Principe