Tag: #intellectualproperty

Brazil becomes part of the World Intellectual Property Organization’s (WIPO) Digital Access Service for Priority Documents (DAS) as an accessing office for industrial designs

Starting this week (August 1, 2023), Brazil will join the World Intellectual Property Organization’s (WIPO) Digital Access Service for Priority Documents (DAS) as an accessing office specifically for industrial designs.

As a result, the Brazilian National Institute of Industrial Property (INPI) will begin accepting WIPO-DAS codes to access official priority documents related to industrial design registrations.

Consequently, when making a registration request, applicants will need to provide the claimed priority number and its corresponding DAS code.

These documents should include the identification number, date of deposit, and visual representations of the industrial designs. Applicants will have a 90-day window from the deposit date to submit the WIPO-DAS code.

By submitting valid priority documentation through the WIPO-DAS code, it will be assumed that the application filed in Brazil is accurately reflected in the original document, eliminating the need for a simple translation of the priority document.

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Advogado(a) autor(a) do comentário: Juliana Kaomy Mikado

Fonte: [1] RPI n. 2742 – http://ld2.ldsoft.com.br/siteld/arq_avisos/Comunicados_2742.pdf

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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.

#DAS #intellectualproperty #RPI2742 #wipo

The rise of counterfeits in the midst of e-commerce development – guidelines for combating counterfeit in Brazil

E-commerce refers to a type of business that is completely conducted through the internet, meaning from the selection of the product, choice of delivery address and payment method [1]. Its first records can be traced back to the 1970s in the United States of America and the 1990s in Brazil [2].

However, despite already being a very popular and widely used type of business, it was during the pandemic, due to its social and economic impacts, that we faced a “BOOM” in the online market.

People, with the most diverse services and products, began to use this alternative and cheaper medium to reach consumers and thus achieve a certain income.

During this period, considerable amounts of capital were directed towards the development of online operating systems that better met this new demand, creating a faster and less bureaucratic space.

In response to this new movement, the Director General of the World Intellectual Property Organization, Mr. Daren Tang, in an interview with CNBC in 2022, declared that this scenario would bring many positive and negative points to industrial property rights [3].

In TANG’s opinion, the advancement of e-commerce would bring easier ways for people to trade counterfeit products, however, on the other hand, companies that manage these platforms should face the problem with counterfeits seriously, being in contact with national governments to monitor and deal with this situation.

Despite this, for TANG, what this wave still brings is the creation of new opportunities for entrepreneurs, which, for the Director General, is fantastic.

Going even more deeply into this issue, in 2019, the EUIPO – European Observatory on Infringements of Intellectual Property Rights, together with the OECD – Organisation for Economic Co-operation and Development, published a study entitled “Misuse of E-commerce for Trade in Counterfeits” [4].

In this scenario, the National Council for Combating Piracy in Brazil (CNCP) has a Guide [5] and Handbook [6] of good practices and guidance for combating piracy in e-commerce.

In the complete report of the study, these were some of the main conclusions:

In 2020, as a consequence of the restrictions caused by the Covid Pandemic, there was an increase of at least 20% in online commerce compared to the traditional market.
Statistics observed during the period from 2017 to 2019 showed that at least 50% of the detentions in the EU would be of counterfeit products, of which 90% would have been sent by mail to the country; and
Most of the counterfeit products sold through the online market belong to the categories of perfumery and cosmetics, pharmaceutical products, and optical products.

In the documents, in order to help companies that work with e-commerce platforms to create a safe and transparent environment, the CNCP advises:

Validating the Seller’s CPF or CNPJ, with their complete identification, as well as proving their existence through a bank account, digital wallet, or associated payment methods.
Reserving the right of the Platforms to demand fiscal documents related to the accessory obligations of the sale of their products or services, under penalty of exclusion of the Seller user who does not meet this requirement; and
Creating a specific notification channel for cases of illegal product sales, with permission for consumers and intellectual property rights holders to access it.

The CNCP also advises those who use e-commerce to take a proactive stance towards these measures, as well as to always remain vigilant, working together with government agencies for protection.

In addition to this, those who work with this new form of commerce can still count on various private organizations with expertise in dealing with intellectual property protection issues, which can assist in creating a Policy for the Use and Protection of rights, as well as providing all necessary support to hold infringers accountable.

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Author: Juliana Kaomy Mikado and Cesar Peduti Filho, Peduti Advogados.

Fonte:

[1] O QUE É E-COMMERCE E PARA QUE SERVE? In EXAME. Available at: https://exame.com/invest/guia/o-que-e-e-commerce-e-para-que-serve/ . Access on: Mar 18, 2023.

[2] Dr.E-coomerce consultoria em e-commerce. Available at: https://www.doutorecommerce.com.br/criando-um-e-commerce/aprenda-origem-e-o-que-e-e-commerce/#:~:text=O%20e%2Dcommerce%20nasceu%20em,1999%20com%20o%20site%20Submarino. Access on: Mar 17, 2023.

[3] RISE OF E-COMMERCE MAKES IT EASIER TO SELL COUNTERFEIT GOODS: WORLD INTELLECTUAL PROPERTY ORGANIZATION. In CNBC. Available at: https://www.msn.com/en-us/money/experts/rise-of-e-commerce-makes-it-easier-to-sell-counterfeit-goods-world-intellectual-property-organization/vi-AA11xPIS . Access on: Mar 17, 2023.

[4] OECD/EUIPO (2021), Misuse of E-Commerce for Trade in Counterfeits, Illicit Trade, OECD Publishing, Paris. Available at: https://doi.org/10.1787/1c04a64e-en . Access on: Mar 18, 2023.

[5] Guia: Boas práticas e orientações às plataformas de comércio eletrônico para a implementação de medidas de combate à venda de produtos piratas, contrabandeados ou, de qualquer modo, em violação à propriedade intelectual. Secretaria Nacional do Consumidor Conselho Nacional de Combate à Pirataria e aos Delitos Contra a Propriedade Intelectual Ministério da Justiça e Segurança Pública – Esplanada dos Ministérios 5º andar, sala 538, CEP 70064-900 – Brasília-DF. Available at: https://www.gov.br/mj/pt-br/assuntos/noticias/conselho-nacional-de-combate-a-pirataria-lanca-guia-de-boas-praticas-e-orientacoes-as-plataformas-de-comercio-eletronico/Guiaboaspraticaseorientacoesasplataformasdecomercioeletronico_compressed.pdf Access on: Mar 17, 2023.

[6] CARTILHA DE BOAS PRÁTICAS E-COMMERCE. Secretaria Nacional do Consumidor Conselho Nacional de Combate à Pirataria e aos Delitos Contra a Propriedade Intelectual Ministério da Justiça e Segurança Pública – Esplanada dos Ministérios 5º andar, sala 538, CEP 70064-900 – Brasília-DF. Available at: < file:///C:/Users/Juliana.kaomy/Desktop/Cartilha%20de%20Boas%20Pr%C3%A1ticas%20no%20e-commerce.pdf>. Access on: Mar 21, 2023.

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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.

#copyright #intellectualproperty

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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#apellationoforigin #geographicalindication #indicationofsource #industrialproperty #intellectualproperty

Here’s why Patents aren’t bad for innovation nor a threat to your company

Recently, Elon Musk made an appearance on CNBC’s “Jay Leno’s Garage” to host a tour around his SpaceX Star base facility in Texas [1].

Besides showing the amazing things Elon and his SpaceX crew have been building for their Mars Mission, when asked by Leno about “regulations and red tapes” regarding his inventions, Musk responded:

“Something that we should be worried about is that the rules and regulations get more and more every year. […] In the past, war has wiped away bad rules and regulations, but also, we prefer not to have war as the means of getting rid of rules and regulations. In the absence of that, what happens is there are more laws and more regulations every single year, and eventually we won’t be able to do anything. […] So, we do need to be cautious about overregulating and having too many rules and regulations basically stopping innovation and actually ultimately limiting the advance of civilization.” [SIC]

Moreover, when asked about the patents over his techniques to build his rockets, Elon said that he and his crew don’t patent things and don’t care about it either, opening source of all his “patents” so that anyone could use them.

Musk finished his statement by saying that “patents are for the weak”, “generally used as a blocking technique” and not actually helping advance things, but “stopping others from following you”.

It’s not the first time Musk shared his opinion regarding intellectual property rights, specifically patents. In 2014, “in the spirit of the open-source movement, for the advancement of electric vehicle technology” [2], Tesla announced that it would not initiate patent lawsuits against anyone who, in good faith, wanted to use its technology [3], stating that patents “serve merely to stifle progress, entrench the positions of giant corporations and enrich those in the legal profession, rather than the actual inventors”.

Without failing to recognize Musk’s successful trajectory, it’s important to respond to some of his statements.

1. Firstly, it’s important to highlight that a patent is a title of exclusivity of exploitation granted to the holder of the invention – a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem [4] – by the State.

In most countries [5], for an invention to achieve a title of patent, it must go through a rigid process of study by professionals who will examine requirements for novelty (the object under analyses must be different from anything seen before in the market), inventive step (it must also contribute to the advancement of the technique or technology of a new product or new process), and industrial application (it must contain proof of human intellect effort). Without any of these requirements, the title won’t be granted.

Which means, having a patent under your archive of creations is the same as attesting your ability to create something never seen before in the market with an extent of utility for society. Which cannot be misled as a curse for any business.

2. The purpose of an intellectual property system and its protection resides on the promotion of the stock of knowledge available to society, as well as its dissemination and use at the end of the exclusivity period.

About this purpose, the Brazilian IPO makes a good point [6]. In summary, the importance of a patent resides on the empowerment of the patent holder during the period of its validity. Which does not equal as a blockage of use of the invention, but as a form of knowledge over the market, giving the creator the ability to know what markets show interest in its invention, as well as the purpose of its exploitation – which meets Elon’s interests, as he makes some of his creations available to the public to encourage innovation, and by knowing the ones that are using his creations, he will be able to form an even better data to do so.

3. Besides that, it’s important to highlight that a patent’s protection is not perpetual. Thus, when its validity comes to an end, the information transferred to the database of the IPO system returns to the public domain. This means that the information does not go missing even after years of use. And even though Elon perceives as if his inventions won’t have any use in the future, there are no doubts that they will always carry a lot of useful information, which can be broken into pieces and studied even further [7].

4. The strategy used by Elon and his team does not apply to the common market. Entrepreneurs must have in mind that Elon’s beliefs rely on a market that does not have a considerable competition.

In this sense, having the control over an invention can be used as a market strategy. Imagine being Steve Jobs and creating the iPhone, while sharing space with companies such as Samsung or Motorola. Perhaps you have on your hand a competitive advantage worth the protection [8].

In the face of all these reasons, it’s not fair or clever to believe that patents are bad for innovation or a threat to your company, especially when viewed through the lens of a more palpable competitive market.

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Author: Juliana Kaomy Mikado, Junior Associate at Peduti Advogados.

Source:

[1] ELON MUSK SHOWS JAY LENO HIS SPACEX ROCKETS | Jay Leno’s Garage Full Episode. Directed by: Marcia Xinatris. Produced by: Marcia Xinatris. Youtube. 23 de set. de 2022. Duration: 44’26’’. Available at: <https://www.youtube.com/watch?v=goT5gW57Chc&t=329s> Access on September 28th, 2022.

[2] MUSK, Elon. All Our Patent Are Belong To You. Published on July 12th, 2014. Available at: <https://www.tesla.com/blog/all-our-patent-are-belong-you> . Access on September 28th, 2022.

[3] Patent Pledge. In Additional Resources. Published on November 7, 2014. Available at: <https://www.tesla.com/legal/additional-resources#open-source>. Access on: September 28th, 2022.

[4] Patents. In. Wipo.int. Disponível em: < https://www.wipo.int/patents/en/>. Access on: September 28th, 2022.

[5] To look for more information regarding the countries that contract under the Paris Convention, which rules over industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. Click here: https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/paris.pdf

[6] Instituto Nacional da Propriedade Industrial (Brasil). Patente: da importância e sua proteção: patente de invenção e modelo de utilidade. / Instituto Nacional da Propriedade Industrial; organização: Elizabeth Ferreira da Silva; autores: Elizabeth Ferreira da Silva [et al.]; revisão: Sérgio Bernardo. Rio de Janeiro: INPI, 2021. In free translation: “A patente outorgada pelo estado tem como condição a descrição do invento para que um técnico possa reproduzir a tecnologia ao término da vigência da proteção. A exclusividade do mercado, durante o tempo da vigência, empodera o titular da patente na comercialização do invento e no controle do mercado, de acordo com as suas estratégias. Portanto, o conhecimento tecnológico protegido é passível de troca entre os agentes econômicos. A proteção agrega valor ao estabelecer a exclusividade temporária sobre o conhecimento, impondo limite a sua comercialização, concedendo lhe valor de troca e solicitação de autorização prévia para fins comerciais, apoiados numa relação contratual entre as partes da contratação. Portanto, o contrato é o instrumento para o estabelecimento das condições da exploração do conhecimento protegido. Quando a proteção termina, a informação já revelada, retorna ao domínio público, ou seja, ao acesso de todos à comercialização, sem que seja necessária autorização prévia. O domínio público disponibiliza a sociedade o conhecimento para produção, comercialização e o ingresso de outros agentes econômicos no mercado, o que aumenta à concorrência e dinamiza o ambiente econômico, contribuindo para o crescimento econômico e a geração de empregos.”

[7] Instituto Nacional da Propriedade Industrial (Brasil). Patente: da importância e sua proteção: patente de invenção e modelo de utilidade. / Instituto Nacional da Propriedade Industrial; organização: Elizabeth Ferreira da Silva; autores: Elizabeth Ferreira da Silva [et al.]; revisão: Sérgio Bernardo. Rio de Janeiro: INPI, 2021. “O sistema de patente exige a descrição da invenção de forma a permitir a reprodução do invento tecnológico contribuindo para o aumento do nível do estoque de conhecimento à sociedade, evitando retrabalho e custos associados ao que já foi revelado. Portanto, a busca do conhecimento tecnológico na base de dados de patentes permite acompanhar a evolução tecnológica até as tecnologias mais pioneiras, na fronteira do conhecimento. Como o conhecimento é tornado público, pela publicação do conteúdo depositado nas bases dos Escritórios nacionais ou regionais de depósito, as comunidades acadêmicas- científica e empresarial se beneficiam do conhecimento revelado para promover o avanço das pesquisas e desenvolvimentos na geração de novos conhecimentos, a partir do que há de mais pioneiro no estado da técnica. Portanto, para fins de pesquisa o conhecimento protegido não impede o avanço científico e tecnológico.”

[8] Furthermore, alongside Elon’s opinion, in 2021 an article was published on the Harvard Business Review exploring ownership engineering strategies, which includes three market approaches: (i) Tolerating Theft (achieve consumers through aspiration and taste); (ii) forgoing ownership (“Being first is often reward enough, even without any additional ownership incentives”); and (iii) leaning into ambiguity (“It’s better to ask for forgiveness, than permission.”). Even though these are strategies followed by big companies as SpaceX, Microsoft and HBO, most inventions depend on a patent’s protection as they are part of a production process, for instance technologies related to sustainable agriculture, since this type of technology affects the final value of the product, but not the product itself. (HELLER, Michael. SALZMAN, James. Elon Musk Doesn’t Care About Patents. Should you? In. Harvard Business Review. Published on March 04th, 2021. Available at: < https://hbr.org/2021/03/elon-musk-doesnt-care-about-patents-should-you>. Access on: September 29, 2022.)

VEJA, Nicolas. Elon Musk says ‘patents are for the weak’ as he talks Starship rocket, tours SpaceX Starbase with Jay Leno. In CNBC MAKE IT. Available at:<https://www.cnbc.com/2022/09/21/why-elon-musk-says-patents-are-for-the-weak.html> Access on September 29, 2022.

FERREIRA, Ademir Antônio. GUIMARÃES, Edilson Rodrigues. CONTADOR, José Celso. Patente como Patente como instrumento competitivo e como fonte de informação tecnológica. Gest. Prod., São Carlos, v. 16, n. 2, p. 209-221, abr.-jun. 2009.

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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.”

#ellonmusk #intellectualproperty #patents #spacex

STJ decides that the term of validity of a patent granted by the mailbox system is 20 years

In a recent judgment, the Second Section of the Superior Court of Justice (STJ), in terms of repetitive resources, defined that the term of validity of a patent granted by the mailbox system is 20 years.

According to the opinion of Minister Nancy Andrighi, who presented the winning thesis in the repetitive trial, the term provided for in the sole paragraph of article 40 of the Industrial Property Law (LPI), do not apply to patents deposited in the manner stipulated by article 229, sole paragraph, of the said law.

In a certain part of the vote, the rapporteur stated:

In the case of patents exceptionally deposited by the mailbox system, the LPI, in its final and transitory provisions (article 229, sole paragraph), established an express rule ensuring protection limited only to a period of 20 years (or 15, for utility models) counted from the day of deposit (as stipulated by the aforementioned article 40, caput)”

The decision will reflect on the reduction of the patent’s right time.

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Author: Sheila de Souza Rodrigues, Senior Associate at Peduti Advogados.

Source: Prazo de vigência de patentes mailbox é de 20 anos contados da data do depósito do pedido pelo interessado

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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.”

#intellectualproperty #iplaw #patents

Brazilian Supreme Court will decide whether Apple can continue to use the iPhone brand in Brazil

The Supreme Federal Court (STF) decided that the dispute over the use of the “IPHONE” brand in Brazil has a constitutional character and recognized the existence of general repercussions.

The General Repercussion is a procedural instrument inserted in the Federal Constitution of the Federative Republic of Brazil of 1988.

The matter will be subject to the judgment of ARE No. 1.266.095, filed by IGB ELETRONICA S.A. The applicant wants to seek the judgment which dismissed the appeal and confirmed the sentence.

IGB ELETRONICA S.A maintains that the judgment under appeal violates the right to property and the principle of free competition. It states that it would have fulfilled the legal requirements to register the trademark and that, when the exclusive use of the term “IPHONE” was subtracted, there was a direct violation of art. 5, XXIX, of the Federal Constitution, according to which it provides:

“Article 5. All persons are equal before the law, without any distinction whatsoever, Brazilians and foreigners residing in the country being ensured of inviolability of the right to life, to liberty, to equality, to security and to property, on the following terms:

(…)

XXIX – the law shall ensure the authors of industrial inventions of a temporary privilege for their use, as well as protection of industrial creations, property of trademarks, names of companies and other distinctive signs, viewing the social interest and the technological and economic development of the country”

In 2018, the Superior Court of Justice (STJ) ruled that the Brazilian company did not have exclusivity over the term IPHONE in Brazil, which resulted in the filing of a Supreme appeal to the Federal Supreme Court.

Understand the case

This is a dispute that started in 2012, when IGB ELETRÔNICA (formerly called GRADIENTE) launched Android devices under the “IPHONE” brand and claimed to have rights to the name.

This is because the National Institute of Intellectual Property (INPI) granted the Brazilian company the G GRADIENTE IPHONE registration to identify cell phones – valid throughout in the territory of Brazil.

As a result, Apple Inc. filed a lawsuit against IGB Eletrônica S/A and the National Institute of Industrial Property – INPI, seeking the partial nullity of registration holding that the name “IPHONE” was already widely associated with it and could mislead consumers.

In the first instance, the lawsuit was upheld to declare the partial nullity of the trademark registration.

The INPI and Apple appealed to the to the Court of Second Instance (Federal Court of Appeal for the 2nd Region – TRF2). However, the Court did not reform the sentence.

Defendants filed a Special Appeal against this decision. In the judgment of Special Appeal number 1.688.243 – RJ, The Superior Court of Justice – STJ, the highest Brazilian court for standardizing the interpretation of federal law all over the country – by majority vote, confirmed the understanding of the Federal Court of Appeal for the 2nd Region and concluded that the isolated use of the term “iPhone” by any other company (other than Apple), to designate cell phones may have harmful consequences that the Industrial Property Law does not allow.

The development for the STF to judge the lawsuit between Apple and IGB Eletrônica S.A took place after both companies failed to reach an agreement in hearings on the true owner of the name “iPhone”.

Therefore, the dispute is heading towards its conclusion.

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Author: Sheila de Souza Rodrigues, Senior Associate at Peduti Advogados.

Source: STF julgará se a marca ‘iphone’ no Brasil deve ser exclusividade da Gradiente (STF will judge whether the ‘iphone’ brand in Brazil should be exclusive to Gradiente)

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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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#intellectualproperty #secondarymeaning Apple Iphone Trademark

Intellectual property rights in Brazil: Judgment about highly renowned trademark

In a recent judgment, the 3rd Panel of the Superior Court of Justice (STJ) has positioned itself in the sense that the famous brand without a high reputation does not prevent registration in a different segment based on protection against dilution.

The decision was rendered in reason of the special appeal filed against the decision of the Regional Federal Court of the 2nd Region, which dismissed the appeal filed in the course of action for nullity of an administrative act that rejected the registration request filed on 02/06/1996 to identify clothing and clothing accessories in common use.

The controversy revolved around the need to verify whether the owner of a famous trademark, which does not enjoy high-reputation status, is entitled to protection against dilution.

The appellants alleged, in addition to the jurisprudential agreement, the violation of article 125 of the Brazilian Industrial Property Law (Law nº. 9.279, of May 14, 1996), according to which it guaranteed to brands considered of high repute special protection in all fields of activity, that is, rejecting the application of the principle of specialty.

The Judging Panel considers the fact that at the time the appellants’ trademark was filed, 1996, the defendant had not yet achieved the status of high reputation for its brand, therefore, the recognition of high reputation would not retroact.

The judgment also highlighted that in the case there is no bad faith on the part of the appellants, considering that the brand “Perdigão” has been using for more than 30 years to designate shoes manufactured in the city of Perdigão, in the state of Minas Gerais.

Developments in the local court and instance of origin

In the first instance the action was filed by an individual businessman and a shoe manufacturer and trader – which have operated since 1993 – against the Brazilian Patent and Trademark Office (BPTO) and an important agribusiness company, with the aim of decreeing the nullity of the administrative act that rejected the registration application No. 819.164.119 for the mixed brand PERDIGÃO, in the former class 25:10, filed on June 1996.

The beginning of the authors’ activities took place in the municipality named PERDIGÃO, located in the State of Minas Gerais, and the authors managed to prove that they have used the sign PERDIGÃO as a brand to identify shoes since 1990.

The lower court handed down a judgment that dismissed the action as it understood that the INPI acted correctly in rejecting the trademark and that the case would fall under the modality of dilution called “obfuscation”, considering that, in fact, the use of the term PERDIGÃO to identify products from different sources, even if belonging to different market segments, could violate the material integrity of the consolidated brand, and widely known to the Defendant, especially if considering the degrees of distinctiveness and notoriety of its PERDIGÃO brand.

The Plaintiffs’ appeal had no effect before the Court, which dismissed the appeal and upheld the sentence immaculate, which triggered the filing of the special appeal at the Superior Court of Justice.

Upcoming developments

After the publication of the judgment, the company filed Motions for Clarification in order to provoke the Court’s debate on whether or not PERDIGÃO was a high renowned brand when examining the application for registration for the trademark by the INPI, under the argument that it was not. had the opportunity to prove that its brand had high reputed status as early as 1996, adding that the high reputed declaration was only regulated in 2004, by INPI resolution 110/04 which regulated the application of article 125 of the LPI.

The Motions for Clarification still demand judgment by the Third Panel of the Superior Court of Justice.

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Author: Sheila de Souza Rodrigues, Associate Lawyer at Peduti Advogados.

Source: Marca famosa sem alto renome não impede registro em segmento distinto com base na proteção contra diluição (Famous brand without a high reputation does not prevent registration in a distinct segment based on protection against dilution)

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#dilutiontheory #highlyrenownedtrademark #intellectualproperty Trademark

Unfair competition in the Fashion Industry

The 1st Reserved Chamber of Business Law of the São Paulo Court of Justice (TJ-SP) dismissed the appeal brought by one company of the Apparel Industry accused of copyright infringement.

Copyright infringement is a pinnacle problem in the fashion industry. It’s not new that the fashion design sector suffers with unfair competition, but there are legal mechanisms to restrict this practice.

The lawsuit was filed by two related companies against one Brazilian luxury clothing brand.

The plaintiffs companies complained that they had clothes that were being imitated by the defendant company.

Although the plaintiffs companies do not have industrial design registrations of their creations, the following rule provided by TRIPS Agreement is applicable:

Article 25 Requirements for Protection:

“2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.”

In the first instance, the judge interpreted that the act of the Defendant was a practice of parasitic competition, taking benefit from the goodwill and reputation of a Brazilian luxury clothing brand.

On appeal, the defendant maintained that the similarities come only from the observance of global trends.

However, the Court maintained the sentence, based on the understanding that the rules of the article 195 of Brazilian Industrial Property Law (Law nº. 9.279, of May 14, 1996) can be applied to the case at hand.

According to the rule laid down in article 195, items IV and V, of the IP Law:

“A crime of unfair competition is committed by the one whom:

uses another person’s advertising phrase or sign, or imitates it, in order to create confusion among the products or establishments
uses, improperly, another person’s trade name, title of establishment, or insignia, or sells, displays, offers for sale, or has in stock a product bearing these references;”

On June 02, The Justice Court of São Paulo, in a unanimous decision, dismissed the Appeal filed by Defendant. The Court maintained the position of the first instance in the sense that the Defendant, when imitating garments, parasitically took advantage of the plaintiff’s brand.

The unlawful conduct practiced by the defendant allows the presumption of damage to the plaintiff’s morals due to the violation of the industrial property right.

The Defendant can still appeal the decision but, according to the understanding of the majority jurisprudence, the chances of success are reduced.

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Author: Sheila de Souza Rodrigues, Associate Lawyer at Peduti Advogados.

Source: TJSP reconhece a contrafação de modelos de roupas como prática de concorrência desleal (TJSP recognizes the counterfeiting of clothing models as a practice of unfair competition)

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#copyright #fashionindustry #intellectualproperty #unfaircompetition Trademark

Unconstitutionality of the sole paragraph in article 40 of the Brazilian IP Law

Amid the global pandemic, the Brazilian Supreme Court’s (STF) judgment is very much expected about action for the declaration of unconstitutionality (ADI 5529) of paragraph of article 40 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”) filed by Attorney General of the Republic.

In short, the lawsuit seeks to force discussion about the validity of a patent counted from its grant date by BPTO.

According to the rule laid down in article 40, sole paragraph, of the IP Law:

“Article 40 – The term of a patent for an invention shall be 20 (twenty) years and for a utility model 15 (fifteen) years as from the filing date.

Sole Paragraph – The term shall not be less than 10 (ten) years for inventions and 7 (seven) years for utility models, as from the date of grant, except where INPI is prevented from carrying out the substantive examination of the application due to pending litigation or for reasons beyond its control.”

However, there is divided opinion regarding unconstitutional of paragraph of article 40 to the Brazilian Industrial Property Law among jurists and technology development enthusiasts.

While some argue that the declaration that the article is unconstitutional will be detrimental to various sectors of innovation and technology, mainly because the period of exclusivity warranted to the owner is one of the pillars of the patent system, others maintain that the rule violates devices of procedural celerity on the Brazilian Public Administration and disobeys different constitutional principles, such as freedom of competition and consumer protection, because the rule creates an indefinite term for patents and utility models.

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Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source: Global NGO asks govts to support India’s ‘landmark’ proposal seeking IP waiver on Covid-19 drugs

#intellectualproperty #iplaw #patents

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.”.

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

#intellectualproperty #patents BPTO INPI