Protection of industrial designs through the Hague System.

The Hague Agreement entered into force on August 1, 2023, in Brazil. The Agreement aims to reduce costs and formalities inherent in the process of obtaining and maintaining the international registration of industrial designs.

 

It’s important to highlight that industrial designs are a form of intellectual property (IP) that protects a commercial product’s ornamental features, such as its shape, color and patterns. By registering a product’s industrial design with a national or regional IP office, the design’s owner has the right to prevent others from making, selling or importing products with copycat designs.

 

Industrial designs are granted in each country as well as patents and trademarks. For companies expanding their international operations, like Daio Paper, this raises the costly and time-consuming prospect of having to register their designs in every country they want to conduct business in.

 

 

The “Hague System for the International Registration of Industrial Designs” offers an alternative and centralized route for the registration and protection of industrial designs between the signatory countries, by enabling the registration of designs in multiple countries through a single application.

 

For example, Daio Paper Corporation, a Japanese company that manufactures a broad range of paper products, took advantage of the system. 

 

To create and maintain a distinct corporate identity and brand, Daio Paper created unique industrial designs for its sanitary products, aiming to stand out from the crowd and earn recognition and loyalty from customers. 

 

Daio Paper, following Japan’s inclusion in the Hague System in 2015, was quick to recognize the benefits of using the system. Not only would it reduce costs and simplify procedures for the company, it would also enable them to prevent counterfeit products from being produced and sold in countries where Daio Paper was expanding into.

 

In this way, The Hague System constitutes an important instrument for the strengthening of the national industry, for the consolidation of the international commercial relations of the country and for the advance of the integration of the nation in the international system of Intellectual Property.

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Author: Nathália Regina Alves Dourado e Cesar Peduti, Peduti Advogados.

Source: IP Advantage

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Flona Tefé Collective Mark is Launched

On March 31, 2023, the newly created collective mark for the Flona Tefé was officially launched in Manaus, Amazon region, Brazil. The event celebrated the registration of the collective mark of the association APAFE (Associação dos Produtores Agroextrativistas da Floresta Nacional de Tefé e Entorno) with the National Institute of Industrial Property (INPI).  

 

Members of the association, who mainly produce cassava flour and derived products, honey, and oils in the Amazon region, will be able to use the collective mark to better position their products in the market. 

 

 

The participants of the event had the opportunity to discuss, on the occasion, about the development and registration of the collective mark, the importance of the collective mark for product commercialization and market access ant it’s potential benefits, as well as the future of the collective mark Flona Tefé.

 

It’s important to highlight that the collective mark has been developed as part of a Development Agenda Project that WIPO is implementing in Brazil, in collaboration with the Brazilian Micro and Small Business Support Service (SEBRAE), the National Institute of Industrial Property (INPI), the Ministry of Foreign Affairs and other local partners.  

 

The project aims at facilitating the use of this IP tool by local communities.

 

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Author: Nathália Regina Alves Dourado and Cesar Peduti, Peduti Advogados 

Source: https://www.wipo.int/collective-marks/en/news/2023/news_0001.html 

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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.

 

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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Exercising Prior User Rights before Brazilian Courts

Exercising Prior User Rights before Brazilian Courts

The prior user rights aim to guarantee to the user in good faith a certain trademark that has been filed and acquired by someone else.

The §1 of art. 129 of Brazilian Industrial Property Law (Law No. 9,279/96) requires, besides the good faith, proof of use of the trademark to distinguish or certify an identical or similar product or service at least 06 (six) months before the filing of the application.

Since Brazilian law does not stipulate how to exercise prior user rights, especially regarding the place of such claim, whether before Brazilian Patent and Trademark Office (BPTO) or the courts, some precedents provide guidance on how to act. 

In trademark nullity lawsuits in which prior user rights are invoked, BPTO is currently claiming that only administratively would the party be able to require precedence to a trademark registration.

However, the argument does not seem to meet the legislative intent with the §1 of art. 129 of Brazilian Industrial Property Law, nor does it appear to be aligned with the constitutional guarantee of access of the Judiciary.

Brazilian Superior Court of Justice (STJ) has several decisions recognizing the possibility of exercising prior user rights judicially and not only administratively, i.e., “[…] the interpretation that should be made of art. 129, § 1, of Law 9.279/96 cannot be understood as a restriction of means for the exercise of this right, preventing the previous user in good faith from seeking the Judiciary in the face of injury or threat to the right.”.

 

 

Nevertheless, STJ repudiates the claim of prior user rights before State Courts, having decisions that determine the contentious jurisdiction of the Federal Courts to analyze the possibility of granting precedence to a trademark registration to any individual or legal entity. In this regard:

However, the defendant could only claim the right of precedence, expressly provided for in § 1 of art. 129 of the LPI, before the BPTO or in its own lawsuit before the Federal Court, so that, if the registration granted to the appellant was annulled, it would be granted the registration of the trademark.

Indeed, as it necessarily implies the cancellation of the trademark already registered, such claim can only be made before the Federal Court, under the terms of art. 175 of the LPI (Brazilian Intelectual Property Law), and the matter cannot be examined even incidentally in the State Court.

Therefore, in addition to the requirements in §1 of art. 129 of the Brazilian Intelectual Property Law (user in good faith and proof of use of the trademark at least 06 months in advance from the filing), the precedents of Brazilian Superior Court of Justice have been admitting the possibility of exercise prior user rights administratively or judicially, as long as the judicial claim is made through a trademark nullity lawsuit, before a Federal Court. 

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

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The Skate Fairy – Rayssa Leal fights a dispute in Brazil for the annulment of the registration of the trademark “Fadinha do Skate” (The skate fairy)

In September 2019, a company called RRS Odontologia, a dentistry company located in Maranhão, Brazil presented a trademark application for the trademark “FADINHA DO SKATE” (the skate fairy), nickname Rayssa (Olympic Athlete) is known for in the whole world.

In August 2020, Rayssa claimed the cancellation of the trademark register before the BRPTO based on article 124, XVI in which is stated that a trademark it is not registerable as a well-known pseudonym or nickname, singular or collective artistic name, except with the consent of the owner, heirs or successors.

The expression “FADINHA DO SKATE” it’s a well-known nickname adopted by Rayssa and the dentistry company did not have the consent from Rayssa to register it as a trademark. The Olympic athlete’s defense argued that “A simple search for the expression on Google returns numerous news, images and videos with quotes from the nickname with which the applicant was famously known in the country and in the international sports world”.

 

Rayssa Leal, a ‘Fadinha do Brasil”, comemora a conquista da medalha de prata no skate street
Foto: Wander Roberto – 26.jul.2021/COB

 

To get the trademark, Rayssa had two paths: requesting the registration of the same expression in different categories than the company in her city already has (clothing and medical and educational services) or trying to cancel the granted registrations. She chose the second one and is trying to cancel the third-party registration.

Then, the BRPTO will analyze if the trademark “FADINHA DO SKATE” its really a well-known nickname as she defends.

The main discussion is that this decision will depend on the it evidence presented by Rayssa because the truth is: this nickname is highly associated with her now due to the Olympic games but is she known by this nickname for that long? Or was it only well-known by the skaters?

Considering the chances of Rayssa, its not possible to know whether the BRPTO will follow one or other path. The BRPTO can point out that she should have monitor this trademark applications before its grant and not after that.

In these cases there is more chance to cancel the trademarks in a nullity action than administratively in the BRPTO. But, the BRPTO can follow another understanding regarding this matter.

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

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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. 

copyright or patent concept, intellectual property

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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The Madri protocol and its importance to Brazil: the list created by BRPTO with translations of Brazilian goods and services.

the Madri protocol and its importance to Brazil

 

The Madrid protocol came into force in 2019 and brought about major innovations in trademark registration in Brazil. This protocol aims to make it easier for applicants to file and manage trademark applications in several countries, through centralized management of these registrations.

The adoption of the Madrid Protocol brings the possibility of a multiclass system – not yet available in the BRPTO system. In addition, it also brings the international order system originated in Brazil, the order holder must pay a fee to the BRPTO for the certification order.

The certification is a formal examination carried out by the INPI, at this stage the BRPTO analyzes the information of the depositor together with the information on the registration application. This information will form the basis of the international application.

Afterwards, the request will be forwarded to the International Bureau (International Bureau of the World Industrial Property Organization – WIPO). The last step is to forward the documentation to each designated country. Countries will examine applications and apply their own legislation.

The great challenge of the Madrid Protocol is the translation of Brazilian elements such as drinks, typical foods such as feijoada into English or Spanish as provided for in the Madrid Protocol. The BRPTO trademark board created a large list with several services and products typically from Brazil and translated it for inclusion in a list called Madrid Goods and Services. The list, very well prepared by the BRPTO, contains more than 600 “Brazilianized” terms.

the Madri protocol and its importance to Brazil

The creation of this list by the BRPTO was aimed at preventing the following from occurring: other countries grant trademarks for denomination that are actually names of typically Brazilian products, hypothetically we can think about for example the United States permitting the registration of the term “feijoada” as a trademark or even “açaí ” which are typical Brazilian foods.

The list facilitates the work of Brazilian depositors interested in protecting their trademark abroad, especially when drafting the specifications and also serves for foreigners to understand the Brazilian terms since the trademarks are published for any third-party objections.

Some of the terms included in the list are: feijoada (bean and meat based dish), a carne de sol (sun-dried salted meat),  pão de queijo (brazilian cheese bun), brigadeiro (sweet made of condensed milk and chocolat), caipirinha (sugarcane-based alcoholic beverage), rapadura (brown sugar in the form of a small brick).

An example of a problem that happened was the registration of the term “açaí”, which is a fruit typically from the Brazilian Amazon rainforest, by a Japanese company. After negotiations, the Japanese patent and trademark office canceled the registration of the “açaí” trademark.

In general, Brazil grows in the area of ​​Intellectual Property with the adoption of this Protocol since it places Brazil in the international system for the protection and registration of trademarks.

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Lawyer Author of the Comment:Laís Iamauchi de Araujo

Source 1 | Source 2

Headline: The Madri protocol and its importance to Brazil: the list created by BRPTO with translations of Brazilian goods and services

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The protection of the trade-dress in brazilian law

the protection of the trade-dress in brazilian law

Nowadays, companies no longer think only about the quality of their products and / or services, but also about the whole set of elements that form the company’s identity and differentiate it from competitors.

This “set” is called the trade-dress, which is the set of identifying elements of a company, product or service. It is, in short, the global set of external and aesthetic characteristics of the product, service or establishment able to individualize them.

What often happens is the copy or imitation of this set or even some elements that characterize the company’s product / service by competitors in order to confuse the consumer, alienating the clientele or even damaging the company’s reputation in the market.

How to proceed when your company is a victim of trade-dress violation?

In Brazil, protection for the trade dress itself is not provided for in specific legislation, the Brazilian legal diplomas being concerned exclusively with the protection of the individual recordable elements (like trademarks).

The jurisprudence, however, has been in charge of combating possible violations of the image set.

The protection of the trade-dress in brazilian law

This protection has been a guarantee based on Article 5, item XXIX, of the Brazilian Federal Constitution: 

“The law will grant authors of industrial inventions temporary privilege for their use, as well as protection for industrial creations, trademark ownership, company names and other distinctive signs, in view of the social interest and the technological and economic development of the country;”

In addition to constitutional protection, the defense of the institute has also caused the incidence of rules of the Civil Code, the Consumer and the Industrial Property Law (unfair competition).

The article 195, item III, of the Industrial Property Law defines unfair competition as a crime:

Article 195. A crime of unfair competition is committed by anyone who:

(…)

III – applies fraudulent means, to divert, for its own or someone else’s benefit, the clientele of others;

Brazilian jurisprudence has been acting mainly by applying unfair competition to cases involving trade-dress. A Judge at the Rio Grande do Sul Court of Justice once said “In addition to the loss of profit, the improper use of someone else’s trade dress can cause an impact on the trademark’s objective honor, which as a result of such action, has put the quality of your product to your customers, which can damage your good reputation in the market ”The central point for recognizing, in court, as an act of unfair competition the sale of products or services with a trade dress similar to that of others is the verification of the possibility of confusion that such conduct may generate for consumers, through the association product or service that is unfair to the original.

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Lawyer Author of the Comment: Laís Iamauchi de Araujo

Source

Headline:The protection of the trade-dress in brazilian law

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How to register a trademark in Brazil?

How to register a trademark in Brazil?

It is important to start saying that Brazil is a first to file country, which means that the rights over your trademark are acquired upon registration. 

The recommendation is always to register a trademark at the earliest stage possible, to not risk the exclusivity of using the intended term.

Besides that, there is another relevant point about the trademark registration – the fact that Brazil had an enormous backlog of work at the BPTO. Nowadays, the BPTO has improved its performance. A registration should take around one year and four months without oppositions or rejection decision.

It is strongly recommended that before filing the trademark a full search on the BPRO base is done.  

Brazil classifies trademarks in the following way: 

  • Scope of protection: Product or service
  • object of protection: Collective or certification
  • According to its graphical representation: nominative, mixed, figurative or three-dimensional.

How to register a trademark in Brazil?

The following information are needed to file a trademark:

  • general information about your trademark and business application form
  • Official fee payment receipt
  • digital image (if applicable)
  • power of attorney (if applicable)
  • regulation on use and other documents to support your application

A trademark can only be registered if it is directly relevant to the business’ nature or activities. For foreign entities, it is necessary to have a legal representative in Brazil to undertake the trademark registration process. The trademark is valid per 10 years.

However, a registration becomes vulnerable to cancellation based on the non-use after 05 years. This cancellation may occur when a legitimate third-party files the cancelation action, for example when this party have had the trademark rejected based on this trademark. 

Brazil is a country that has become more attractive to investment after its economy began to gain speed and cannot be a discarded country to have you trademark registered.

Furthermore, Brazil recently joined the Madrid Protocol, which makes it possible to file a single application with the World Intellectual Property Organization (“WIPO”), which will  forward to the offices of the countries designated by the holder, among the signatories to the protocol, for examination of the application based on national law and subsequent registration and protection.

It will no longer be necessary to register the trademark in Brazil and separately in the other countries in which the holder wishes to obtain protection.

We have explained the whole Brazilian trademark system in Chambers magazine, you can find here: 

https://practiceguides.chambers.com/practice-guides/trade-marks-2020/brazil

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Lawyer Author of the Comment: Laís Iamauchi de Araujo

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