Tag: Trademark

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.

The use of trademarks in keyword advertising in Brazil

Updated May 31, 2023.

Keyword advertising has gained popularity worldwide. However, the use of competitors’ trademarks in keyword advertising has sparked conflicts between companies, and Courts from different jurisdictions have adopted varied interpretations of this practice.

In Brazil, although there is no specific law forbidding the use of third-party trademarks in keyword advertising, the Superior Court of Justice has ruled on several cases, establishing a consistent understanding that this behavior constitutes unfair competition. This is in line with Article 195, III of the Brazilian Intellectual Property Law, which states:

Article 195 – A crime of unfair competition is committed by anyone who uses fraudulent means to divert another’s clientele for their own or a third party’s benefit.

In these cases, the Courts have ordered the immediate cessation of the unauthorized use of keywords and have awarded compensation for both moral and material damages to the trademark owners. Typically, these compensations amount to no more than BRL 20,000. However, in some instances, depending on the size of the companies involved, the compensations have exceeded BRL 50,000.

In view of the scenario above, it is highly advisable to refrain from using third-party trademarks in keyword advertising in Brazil, even though there is no specific prohibition on this matter.

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Author: Carollina Souza Marfará, Cesar Peduti and Thaís de Kássia Almeida Penteado, Peduti Advogados.

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industrial property intelectual property keyword advertising Trademark unfair competition

NFT Creator infringes trademark registration of the italian football team Juventus

An Italian court handed Juventus FC a win in the most recent round of a legal scuffle over non-fungible tokens (“NFTs”). The Rome Court of First Instance, on 20 July 2022, ruled that the unauthorised minting, advertising and sale of NFTs1 can infringe the trade mark rights of the relevant owner.

The Rome Court of First Instance granted the Turin-based football club’s bid for a preliminary injunction, barring Binance-hosted Blockeras s.r.l. from offering up NFTs that make use of the Italian club’s trademarks, including the Juventus and “Juve” word marks, as well as the design of its two-star-bearing black-and-white jersey.

Juventus filed proceedings against Blockeras accusing them of infringing the club’s registered marks in relation to the Blockeras NFTs which were linked to trading cards featuring former Juventus striker Christian “Bobo” Vieri.

The player’s image was not questioned, as Bobo Vieri granted image use permission to the creator of the NFTs. However, he failed to obtain authorization to use the Juventus trademark, which was also featured in the creation.

Furthermore, the Italian Court understood that NFTs have legal autonomy compared to the images or data associated with them. As a practical consequence, the Court specifies that the injunction granted concerns both digital content, including the player’s image with Juventus trademarks, and the NFTs themselves.

The case is a significant ruling in relation to trade mark rights and NFTs. It is the first known judgment by a European court to determine that NFTs which reproduce a third party’s trade marks without authorization from the rights owner, amount to trade mark infringement and may warrant an injunction.

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Author: Bruno Arminio, Associate Lawyer at Peduti Advogados.

Source: Juventus sues NFT-based fantasy soccer hosted on Binance; Old Lady Shows Her Youth with Win in Significant Trade Mark Ruling Concerning NFTS

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Italian Court Juventus nft Trademark

Intellectual property enforcement policy: what is it and its importance

Protection and enforcement of intellectual property rights (IPR) is a set of legal tools made available by the legal system. IPR’s sole purpose is to provide effective judicial protection and solve trademark conflicts. Trademark enforcement tools are divided into three different types, which are: infringement actions, nullity proceedings, and extrajudicial resolutions.

Trademark infringement actions include indemnification and inhibitory clauses. It usually entails an injunction directing the infringer to stop using the trademark material; redress claim for material damage, given the reduced value of a business’ brand and the negative impact on its sales; and claim of indemnity for moral damage, which are presumed once a trademark infringement is proven, categorizing what is called moral damage in re ipsa (REsp 1.327.773 – MG, STJ 4ª Turma, Rel Min. Luís Felipe Salomão, j. 02/15/2018).

The trademark and the alleged “inhibitor” are then analyzed using a certain criteria to identify the likelihood of confusion.

The procedure of nullity or revocation of a trademark is discussed according to the brand validity pertaining to the legal requirements included in the Law of Industrial Property. As a declaratory judgment, it refers to a proceeding which seeks the nullity of the administrative decision that confirmed the trademark, written by the competent autarchy, the INPI – Instituto Nacional da Propriedade Industrial.

In addition to the harmonization capability of the nullity proceedings, which determines if the brand meets the trademark registration requirements, they also act as procedural defense against the “inhibitor.” The respondent may try to avoid being convicted for material and moral damage through the trademark revocation that it is actively violating.

Extrajudicial resolutions, in turn, legitimize the use of the trademark policies enforcement since they strive for an amicable resolution before the trademark petition is filed. They also serve as a procedural advantage should the other party come forward with one of its defense arguments.

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Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.

Source: https://esaj.tjsp.jus.br/cjsg/consultaCompleta.do?gateway=true

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CLAI EXTRAJUDICIAL RESOLUTION POLICIES ENFORCEMENT Trademark

Post Sale Confusion

As it is known, among the most important financial assets of a company are the intangible assets (e.g. brands and patents). Brands, on the one hand, have numerous functions of great importance in market society. It has distinctive functions: it designates certain products on the market before others; It serves as an investment protector, because, when a relationship is established between a product and its producer, the brand relates this recognition to its product success; It also increases competition and acts as a means of communication between the merchant and the public.

Genericide and consumer confusion phenomenons have negative effects on these important functions listed above. The first phenomenon, which happens when brand names are used as generic terms, hinder the brand from exercising its distinctive features and investment protection. The latter is a direct threat to merchant investment since demand is diverted, contributing in some cases to loss of brand distinctiveness.

In addition to the known consumer confusion types that may occur, defined by case-law and legal writings, there is an unusual category, which has different causes and consequences, called “post sale confusion.”

Under this category, which happens frequently in the luxury market, the buyer knows exactly the origin of a certain product; the confusion happens among third parties. It is called “post sale” because the purchase is made consciously, and, once it happens, the product circulation and utilization are similar to those of famous brands, turning exclusive features into something common.

The practice of selling luxury products with similar features to others is not capable – and does not intend – to mislead the consumer. However, it can diminish brand value, through the blurring or tarnishment of the famous brand, because it allows other companies to deliver items with the same design/features for a fraction of the price, depleting brand exclusivity and lessening demand.

It was recognized by the Court of Justice of Sao Paulo as follows: INDUSTRIAL PROPERTY, IMPROPER REPRODUCTION OF INDUSTRIAL DESIGN. MOTORCYCLES, UNFAIR COMPETITION, INDEMNITY FOR MORAL AND MATERIAL DAMAGES, PROHIBITORY INJUNCTIONS. (…) The defendants argued that there was no reproduction of the plaintiff’s industrial design, as the model follows a “market trend” and, because of that there are visual similaritites. (…) Therefore, there was no excuse for the defendants to reproduct the trade-dress of your products based on those initially manufactured by the plantiffs, inexisting said “market trend”. (…) Is that the trademarks’s design was put in not adequate enviroment for it’s owner desired and practiced standard, devaluating the sign in front of the consumers. (Apelação Cível nº 0068141-85.2012.8.26.0100, Relator Carlos Alberto Garbi, São Paulo, 2ª Câmara Reservada de Direito Empresarial, julgado em 31/10/2016, publicado em 03/11/2016)

Therefore, is not about the buyer’s effective confusion, with potential to directly divert the costumer, but of posterior association by the public that has not yet adquired the product.

Is this case, the effect is the very loss of the trademark’s distinctiveness, as the unique feature of the product comes to caracterize a product segment instead of the specific product of an specific manufacturer, as a “market trend”. This hypothesis of confusion, even though indirect, can generate financial liability to the manufacturer that intends to “take a ride” in the appreciation and prestige adquired by a third parties’s trademark.

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Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.

Source: Apelação Cível nº 0068141-85.2012.8.26.0100, Relator Carlos Alberto Garbi, São Paulo, 2ª Câmara Reservada de Direito Empresarial, julgado em 31/10/2016, publicado em 03/11/2016

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Confusion Consumer Requisites Trademark

TM exclusive rights of use: exceptions according to Brazillian law

As we know, the biggest advantage to obtain a trademark is the exclusive right of its use to identify services and/or goods as spcified by the respective register. Even thought, it isn’t an absolut right and may be flexibilized depending of some specifique situations previowsly indicated in brazillian law.
Some of them are preserved by article 132 of brazillian industrial property law, which says:

1 – Distribution Agreements

A trademark owner won’t have the right to prevent distributor to use it’s trademarks, since this use is related to the promotion and/or sales of trademark owner goods itself.

2 – Free Circulation of Goods

A trademark owner won’t have the right to prevent the free offer of a product placed on the internal market, by itself or by others with its consent, except as provided in cases of abuse of rights.

3 – Accessories Manufacturer

A trademark owner won’t have the right to prevent accessories manufacturer of its goods, to use the trademark to identify the destination of this manufactered accessories.

4 – Non Commercial Use

A trademark owner won’t have the right to prevent the citation of its trademark in speech, scientific or literary work or any other publication, provided that it has no commercial connotation and without prejudice to its distinctive character.

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Author: Lorena Garrido Borges, Senior Associate at Peduti Advogados.

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brazillian law exclusiverightofuse intellenctual property 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.

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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BPTO intellectual property REVOCATION Trademark

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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#intellectualproperty #secondarymeaning Apple Iphone Trademark

Registration Certificates for Madrid Protocol trademark applications are now available in the Brazilian PTO

The Brazilian Industrial Property Office (BPTO) recently published the availability of registration certificates for trademark applications filed in Brazil using the Madrid Protocol.

The certificates will be available in weekly batches published on the same date of the publication of the BPTO Official Gazette. The issuance of the certificates will follow a chronological order based on the date of the granting of the trademark registration.

After the BPTO issues all the pending registration certificates for applications made using the Madrid Protocol, these applications will follow the regular BPTO rule for issuance of trademarks certificates, that is, sixty days after the publication of the granting of the trademark.

The first certificates were made available on march 22, 2022.

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

Source: INPI disponibiliza certificados de registro das designações de Madri

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Brazilian PTO Madrid Protocol Registration Certificate Trademark

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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#brand #industrialproperty #intelectualproperty #trademarks Brazil precedence Trademark