Brazil reaches 100 Geographical Indications

On this Tuesday, December 6, 2022, Brazil celebrates the recognition by the Brazilian Patent and Trademark Office of the 100th Brazilian Geographical Indication, the “Barreado do Litoral do Paraná”.

 

The first recognition took place exactly 20 years ago, which was the indication of source for wines from Vale dos Vinhedos, a region in the state of Rio Grande do Sul.

 

76 of these 100 indications are indications of source and 24 are apellation of origin.

 

 

The difference between these institutes is that the indication of source certifies that the region is known and recognized for the production of a product or provision of a service, while the apellation of origin certifies that the product or service has unique characteristics and qualities resulting from natural factors of the region or applied human processes.

 

35 geographical indications are from the Southeast region, 32 from the South region, 17 from the Northeast region, 12 from the North region and 4 from the Midwest.

 

64 of them are for agri-food products, 20 for non-agri-food products, 15 for wines and spirits and one for service.

 

The “Barreado do Litoral do Paraná” is a typical product of the coast of that state, which consists on products made of beef cooked exhaustively in a hermetically sealed pan with manioc flour gum, according to the tradition originating in the Azores, in Portugal.

 

In case of doubts or interest related to this subject, Peduti Attorneys i sat your disposal to assist you.

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Author: Rafael Bruno Jacintho de Almeida, Head of Prosecution, and Carollina Marfará, Associate Lawyer at Peduti Advogados.

Source: With the barreado do Litoral do Paraná, Brazil reaches 100 Geographical Indications

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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.”

 

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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“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.”

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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“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.”

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

“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.”