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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Legal Troubles for Meta’s Threads Platform: Twitter Threatens Lawsuit

The analysis from the perspective of Brazilian legal system

The newly launched Threads text platform by Meta is already facing legal issues. According to a report from Semafor, Twitter is threatening to sue Meta over Threads.

In a letter addressed to Meta’s CEO, Mark Zuckerberg, included in the report, a lawyer from X Corp, the parent company of Twitter owned by Elon Musk, states that “Twitter has serious concerns that Meta Platforms has engaged in systematic, intentional, and unlawful appropriation of Twitter’s trade secrets and intellectual property.”

The letter is said to have been sent to Meta’s CEO hours after the launch of Threads. The document accuses Meta of hiring “dozens of former Twitter employees” in the past year and claims that these employees “have had and continue to have access to Twitter’s trade secrets.”

 


Meta has reportedly responded to Twitter’s accusations, denying them and stating that they are unfounded. This is not the first time Meta has been accused of launching platforms similar to competitors’ to maintain its market share, as Instagram Stories helped the platform strengthen its user base compared to Snapchat, while Reels has been compared to TikTok.

 

According to Brazilian intellectual property law, the determination of potential software plagiarism relies on demonstrating the copying of the program’s source code. This is because, according to Article 8, I of the Copyright Law, the systems themselves, including their layout and functionalities, are not eligible for protection under copyright law. However, the source code, given its textual form (programming language), is protected. 

 

Nevertheless, the use of privileged information for unfair competition is condemned by the legal system, considering its policy against unfair competition (Article 2, V, Industrial Property Law). In such cases, the specifics of the particular situation will be evaluated.

As a specialized intellectual property law firm with 46 years of experience in the field, Peduti Advogados can certainly assist you in any potential demands of this nature.

 

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Author: Enzo Toyoda Coppola and Cesar Peduti Filho, Peduti Advogados.

Source: https://googlediscovery.com/2023/07/06/twitter-ameaca-processar-meta-por-suposta-violacao-de-propriedade-intelectual-no-threads/

https://www.semafor.com/article/07/06/2023/twitter-is-threatening-to-sue-meta-over-threads

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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 collaboration between the BPTO and the USPTO for Intellectual Property

In May 2023, the Brazilian Trademark and Patent Office – BPTO and the United States Patent and Trademark Office – USPTO met to discuss technical cooperation between the institutes, among the actions planned for the agreement are the Hague Agreement, Madrid Protocol, PPH, North American experience with IP Marketplace tool, relationship with users and initiatives in the areas of diversity, inclusion, equity, accessibility and gender. 

 

 

This partnership has a practical basis and is justified, mainly, in the fact that the United States is the country with the largest number of Brazilians trademark applications through the Madrid Protocol. The discussion is based on a memorandum valid until 2025 and aims to meet mutual interest of both countries, market movement between them and ongoing measures.

 

Some collaborative practices have been observed over the years, such as, for example, the course taught in collaboration between BPTO and USPTO on how to accelerate the examination of patent applications and patent eligibility in the areas of software and biotechnology in the USA, for example.

 

This kind of work sharing arrangements with foreign intellectual property (IP) offices helps to improve intellectual property examination efficiency and facilitate cooperation within the global IP system. 

 

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Author: Ana Luiza Pires, and Cesar Peduti Filho, Peduti Advogados.

Source: INPI and the USPTO discuss collaboration initiatives for 2023 

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Developing and protecting your online brand: tips for the new entrepreneur

Trademark protection is critical in establishing long-term protectable rights in every brand. This way, first of all, there are some important tips to observe regarding the naming and branding part of any new venture in Brazil. 

To start, it’s crucial to not rely exclusively on descriptive phrases. Generic terms, which describe the class of goods or services, are never protectable. And laudatory terms aren’t usually protectable either.

Also, it is important to make it clear who the legal owner of the brand should be, if a third party helped develop the brand. 

Then, there are important steps in developing legally protectable rights in the new identity to avoid ending up in legal challenges by inadvertently copying another party’s brand.

 

 

The first step is to conduct trademark clearance searches to identify competing uses, which could present a challenge to the use of the trademark. 

Besides, while most trademark offices allow owners to file directly online, including in Brazil, a good trademark professional can order a clearance search, review it with knowledge of trademark law and then provide guidance.

Most people think that the only requirement to be considered when filing a trademark is third party rights, however the Brazilian law has other twenty-two prohibitions. 

It is important to highlight that while there is no need to wait further to put the brand into use, you should immediately file trademark applications to register the trademarks.

Finally, it is highly recommended to protect your brand by filing to register it as a domain name and secure your brand across social media platforms. In this sense, you should also monitor your brand online to ensure it isn’t being misappropriated or misused.

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

Source: Developing and protecting your online brand: tips for the new entrepreneur 

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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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Video games, the metaverse and diversity

Intellectual Property, video games, metaverse, diversity, Tencent, Peduti

Recentley Jia Wang, a veteran leader in data science and engineering within the interactive entertainment industry, shared her views with WIPO Magazine on the future of the video games industry and the role that intellectual property (IP) plays in it.

 

Tencent is a global technology firm that operates the world’s leading video game development, publishing and operations platform, and Jia Wang is the Deputy Director of the Technology Service Center for the North Americas Team.

 

Jia Wang clarifies that Tencent is strongly committed to IP and recognizes its enabling role in generating a more vibrant, creative, and innovative ecosystem for games and other areas of their business. A game is both a creative and a technical product and IP protects both aspects. There’s a lot of IP involved in the games that Tencent develops, from the technical mechanisms that enable and enrich the user’s experience to the storyline and the heroes they create.

 

Video games, the metaverse and diversity

 

Regarding to the mertaverse, Jia Wang explains that it’s not yet clear what it is or how it will evolve, although there’s a huge buzz around it. Tencent sees the metaverse as part of “hyper-digital reality”, a concept that integrates the digital world with reality to create a blended experience, which will allow people to connect more deeply with the virtual world. It will simply spark people’s imagination and push the boundaries of possibility.

 

Finally, talking about diversity, Jia Wang highlights that women in all sectors face many challenges, and that in the games industry they are definitely in the minority, but that’s changing. At Tencent America, for example, there is commitment to diversity and inclusion, many women are in leadership positions and there’s a strong sense that women can be successful there. The games industry requires many different skill sets, and that creates a lot of opportunity for everyone.

 

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Author: Nathália Regina Alves Dourado, Bachelor of Laws, at Peduti Advogados.

Source: Tencent, video games, the metaverse and diversity: an insider’s view 

 

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Is a trademark coexistence agreement accepted in Brazil by the Brazilian Trademark Office?

Is a trademark coexistence agreement accepted in Brazil by the Brazilian Trademark Office?

When clients have a trademark rejected in Brazil or opposed by third parties, it is common to be questioned about the possibility to celebrate a coexistence agreement to overcome the rejection. 

We know that in certain jurisdictions the signature of a coexistence agreement allows the trademark granting. In Brazil, it is not always true.

In accordance with the Brazilian Trademark Office opinion and resolutions, a coexistence agreement will be used as an additional document to be considered to issue a decision regarding the trademark registrability. However, this is not the main point analyzed.  

The coexistence agreement is accepted to verify if the document is enough to prevent the consumers confusion related to the third-party trademark registered. If the examiners understand that the confusion between the trademarks will remain, even with the agreement, the trademark will be rejected, and the document will not be considered. 

 

Is a trademark coexistence agreement accepted in Brazil by the Brazilian Trademark Office?

 

If the examiner understands that the exclusion of an item of the list of goods/services will allow the coexistence between the trademarks, an office action can be issued and, if the owner agrees with the deletion, the trademark will be granted. 

However, if the trademark and the goods/services are too similar, the Brazilian Trademark Office will not consider the coexistence agreement and the trademark filed later will be rejected.

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Author: Laila Reis Araujo, Senior Associate & Head of The International Department at Peduti Advogados.

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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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The intellectual property protection in games

The intellectual property protection in games

In 2019, the digital games industry alone – without considering physical copies – generated $ 104,4 billion in revenue, revealed Statista, a company specialized in market data. After pandemic arrived, revenues increased by 23 percent year-on-year to $ 128,3 billion in 2020. By 2025 a value of $ 268,8 billion is expected to the game market. 

These numbers reflect the strength of an industry recognized for being very innovative and that grows exponentially each year. In such environment, it is normal for gaming companies to worry about protecting their ideas, inventions, and other creations through intellectual property mechanisms, including patents. 

In Brazil, patents cannot be used to protect the games themselves, their rules, conception, their visual presentation, etc.. In many cases, these aspects are protected through copyright or through the creation of a trademark related to the game.

Furthermore, the source code through which the game exists, runs, and is implemented (software), is not patentable. A software registration, which is equivalent to a copyright registration, may be used to protect source code.

Because of its ease of use and versatility, copyright (as defined in Brazilian Law n. 9,610/1998) is a significant protection for most game firms, as it is an adequate tool for protecting game ownership.

Copyright encompasses tales, characters, scenarios, music, graphics, and even the source code in the game world. Nevertheless, copyright protects the expression of ideas rather than the ideas themselves. 

 

The intellectual property protection in games

 

This has two ramifications: no game ideas are copyrighted until they are implemented in some form (like source code, or in a word file, i.e.). Second, similar concepts used in various games do not always infringe on third-party copyrights. If an FPS shooting game is registered, for example, there will be no infringement of the rights of the person who registered if another person registers a game with the same genre but different aspects.

Copyright also gives the owner the ability to prevent others from exploiting his work. Moreover, they are simple to enforce and independent of registration, as they exist from the minute the game is created, while patents and trademarks have complicated registration systems, and trade secrets necessitate specific actions to be taken within the organization, as well as continual monitoring to maintain the right. 

Even if registration is not required to invoke copyright, it is highly advised because it is a quick and easy approach to establish authorship and priority in the event of a dispute.

It is important to remark that although software (source code) cannot be patented in Brazil, it is possible to patent software by describing and defining it as methods, processes, and systems that solve a technical problem through a technical solution.

When these concepts are applied to the game industry, one can patent inventions such as digital signal processing (which includes image, graphics, lighting, textures, objects, rendering, and sounds), procedural data generation, handling a dropout situation in a network game, memory management, processing commands issued by a player, and so on.

Before filing a patent, it is necessary to check in Brazilian Patent and Trademark Office (BPTO) and other patent databases to see if a similar or identical invention has previously been registered. 

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

Source: Video game industry – Statistics & Facts 
Digital Video Games To Hit $146B In Revenue In 2021, A 40% Increase In Two Years

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