The Brazilian highly-renowned trademark: An analysis related to the registration granted to YAKULT’s three-dimensional trademark

The Brazilian Patent and Trademark Office (BPTO) granted to the Japanese company Yakult the registration of high renown for the three-dimensional trademark “YAKULT,” which represents the most globally recognized fermented milk bottle consumed daily by approximately 40 million people, according to information from the brand itself.

 

In light of this, we will explore the concept of a highly-renowned trademark and discuss the importance and benefits of such registration in Brazilian territory.

 

In Brazil, the trademark registration system plays a fundamental role in protecting the intellectual property rights of companies, and one of the special categories of trademarks is the “highly-renowned trademark,” which is granted to trademark with significant recognition and widespread notoriety among the general public.

 

In the specific case of Yakult, the Japanese company holding the registration obtained the status of “high renown” from the BRAZILIAN PATENT AND TRADEMARK OFFICE (BPTO), due to the high level of recognition, distinctiveness, and notoriety of the three-dimensional bottle representing their trademark among consumers and even among people who are not direct consumers of the product.

 

 

The registration granted to Yakult as a highly-renowned trademark provides the company with broader and more comprehensive protection against unauthorized or improper use of the trademark by third parties, thus preventing the dilution of the brand and safeguarding its reputation and market value throughout the national territory, even against identical or similar brands, regardless of the business sector.

 

Therefore, it can be concluded that the highly-renowned registration in Brazil offers its holder special protection and recognition to a trademark that achieves a high degree of recognition among the general public. This registration provides significant benefits, such as extensive protection against improper use concerning similar brands and also enhances the brand’s appreciation, strengthens its image among consumers, and ensures a strong position in the Brazilian market.

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Advogados autores do comentário: Nicole dos Santos Silva e Cesar Peduti Filho, Peduti Advogados

Fonte: Yakult obtém registro de marca de alto renome do INP

Solicitar o reconhecimento de alto renome de registro de marca
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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.

 

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.”

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Brazil grants its first denomination of origin for Erva-Mate

The Brazilian Patent and Trademark Office (BPTO) recently published the recognition of “Erva-Mate do Planalto Norte Catarinense” as the newest Denomination of Origin (DO) in Brazil. This Denomination of origin includes an area of 20 municipalities in the State of Santa Catarina.

“Erva-mate” is a type of herb commonly consumed in the south of Brazil and the region in the North of the Santa Catarina State is well known for its production. The herb from this region differentiates itself by its higher concentration of caffeine, higher glow, deeper green color and higher level of sweetness, when compared to the herbs produced in the states of Paraná and Rio Grande do Sul.

 

 

These characteristics are due to the location that combines the lowest insolation levels in the State, with the shadow made by the Araucária Forest, which maintains a balance of heat and humidity in the soil and air that gives its special characteristics to the herb.

Regarding the human factors, the harvest, trituration and preparation of the “erva-mate” are a result of the influence of several different people who inhabited the region throughout the centuries, dating from the original Indians, to the caboclos and tropeiros.

This denomination of origin elevates the number of geographical indications registered in the BPTO to 99, being 31 denomination of origin and 68 indication of origin. 

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

Source: Planalto Norte Catarinense torna-se a primeira Denominação de Origem para erva-mate

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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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Do you know what are the ways to lose a trademark?

Do you know what are the ways to lose a trademark?

The registration of a trademark before a Brazilian Patent and Trademark Office (BPTO) is a public title that ensures the ownership and exclusive use of a trademark to identify a product or service in the Brazilian territory.

A trademark registration is granted after the payment of an administrative fee and it is valid for a period of 10 (ten) years and may be extended for another 10 (ten) years and in an uninterrupted way. However, do you know the ways a owner can lose the registration of a trademark already granted?

As provided in the article 142 of the Brazilian Industrial Property Law, the registration of a trademark may be revocate in 4 (four) ways:

 

Revocation through absence of extension

Revocation through the absence of extension is the natural cause of the extinction of a trademark registration and it happens when the ten-year period ends and the owner does not request, within the ordinary and extraordinary deadlines, the extension of this registration.

 

Do you know what are the ways to lose a trademark?

 

Revocation through renounce

Renounce is an act which the owner who no longer has an interest in maintaining his trademark registration before the BPTO. This act may be total or partial, that is, in the event that the holder only renounce some of the products or services specified in his trademark registration.

 

Revocation through non-use action

This form of revocation is only request by an interested third party and cannot be declared by the BPTO.

For a trademark  fulfill its social function, the owner of a a trademark registration must be start its use within a period of 5 (five) years, counting from the grant date. If it is not being used, a third party may request the expiry of a registration so that it becomes available to be explory by anyone.

 

Revocation in the case of the owner is domiciled abroad and does not constituted an attorney domiciled in Brazil

Finally, as the title describes, the revocation of a trademark registration can also occur in case the owner is domiciled abroad and not maintain, in national territory, a Brazilian attorney before the BPTO or in the judicial sphere.

Therefore, in order to avoid the loss of a trademark registration, it is extremely important to appoint an Brazilian attorney specialized in intellectual property so that it can monitor the period of extension of a registration, as well as the use of the trademark.

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

Source: Registro de marca

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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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Brazil recognizes new designation of origin

Brazil recognizes new denomination of origin

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

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

Brazil recognizes new denomination of origin

 

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

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

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

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

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

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Product from north of Minas Gerais receives geographic indication by BPTO

Product from north of Minas Gerais receives geographic indication by BPTO

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

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

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

 

Product from north of Minas Gerais receives geographic indication by BPTO

 

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

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

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

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

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

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PATENTS IN BRAZIL: DECISION OF THE SUPERIOR COURT OF JUSTICE (STJ) CONSIDER INVALID AN INFRALEGAL ACT OF THE BPTO’S RESOLUTION NO. 113/2013

Patents in brazil: decision of the superior court of justice (stj) consider invalid an infralegal act of the bpto’s resolution no. 113/2013

The Brazilian Industrial Property Agents Association – ABAPI filed a Public Civil Action seeking discuss about whether it is valid or not an infralegal act of the BPTO’s Resolution No. 113/2013 was created to regulate the procedures related to the control of payment of anual fee for patentes in Brazil.

This Resolution generate disagreement because several patents and patent application have been declared irremediably forfeited due to non-payment of annuities.

The monocratic decision welcomed the request formulated by the plaintiff based on the article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”).

According to the rule laid down in article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”):

“The patent application and patent may be restored, if the applicant or patentee so requests, within 3 (three) months from the notification of the dismissal of the application or the extinguishment of the patent, upon payment of a specific fee.”.

Patents in brazil: decision of the superior court of justice (stj) consider invalid an infralegal act of the bpto’s resolution no. 113/2013
Source: migalhas.uol.com.br/

Posteriorly, the Federal Court of Appeal for the 2nd Region (TRF2) decided to dismiss the Appeal of BPTO.

On September 04, in the judgment of Special Appeal under Specific Court Regulations nº 1.837.439, The Superior Court of Justice – STJ, the highest Brazilian court for standardizing the interpretation of federal law all over the country – confirmed the understanding of the Federal Court of Appeal for the 2nd Region.

In short, the Minister Ricardo Villas Bôas Cueva understood that “While the article 87 of the LPI allows the patent holder or applicant to request the restoration, within the period of 3 (three) months from the notification, the BPTO’s resolution limits the application of institute to a requirement not foreseen in the LPI.” and concluded that the article 87 creates a new opportunity for a upon payment of a special fee, that is, creates an exception to the rule of extinction of the patent for non-payment

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Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source

Headline: Ato infralegal do INPI não pode restringir direito de restauração de patente previsto em lei

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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BPTO Seeks Improvement in the Patent Analysis Procedures

On May 15, 2018, it was initiated the work of an external consultancy that will evaluate the procedures involved in patent analysis by the BPTO (Brazilian Patent and Trademark Office), as well as the selection, training and evaluation mechanisms of its examiners. Such work has as goal to indicated the current issues and how they can be fixed and ways to improved the procedures of patent analysis.

In a second stage, the consultancy should be extended to improve procedures in the area of trademark analysis.

The consultancy is result of a partnership with the British Government, through the Prosperity Fund, whose objective is stimulate development and poverty reduction in several countries. The fund has 1.3 billion

pounds (about R $ 6.4 billion) in investments, being 80 million (about R $ 396 million) intended to Brazil, until 2022.

For three weeks, the consultants will work with the BPTO, collecting information and keeping in touch with examiners, managers and IP service users.

Lawyer Author of the Comment: Natália Nogueira dos Santos

Source (link)

Headline: Consultoria Externa Irá Buscar Melhoria Operacional da Área de Patentes

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BPTO has announced the beginning of Patent Prosecution Highway (PPH) pilot project with USPTO

On May, the BPTO announced that the Patent Prosecution Highway (PPH) pilot project with USPTO will begin its second phase, which will be initiated on May 10 until April 30, 2020. The measure was published in the BPTO Gazette nº 2470 on May 8.

The Patent Procurement Highway allows expedited examination of a patent application that has a positive patent right in another office/ member of the Institute, in addition to being associated. The pilot project came into force on February 1, 2018 in Brazil and the BTPO will accept applications for a period of two years, limited to 200 patent applications examined.

The innovation is that the information technology area is now included in the project, besides technologies already contemplated (oil, gas and petrochemical).

The current phase will also allow 50 patent applications to be included in the priority list of PPH from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT).

During the period of validity of the PPH, a total of 200 applications will be accepted in each country. The applicant may apply to join the PPH per month, except for the last 30 days of the program.

By PPH, Brazilians can use the result of the examination of the patent application in the BTPO to accelerate the analysis in the US and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average.

Advogada Autora do Comentário: Barbara Pires

Fonte (link)

Manchete: “INPI publica nova fase do PPH com Estados Unidos”

“INPI publishes new phase of PPH with the United States”

“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.”