Tag: Trademark

Cancellation for nonuse of trademarks in Brazil

After obtaining the trademark registration, it is important to continue using the trademark as the one requested within the application. If you’ve had a trademark for more than five years and you start using a different mark, with another words, colors, or designs, you can lose your trademark registration in Brazil.

According to the Brazilian law, “after five (5) years of its granting, on the date of the application, the registration, upon request of any person with legitimate interest, shall expire if:

I – the trademark has not been used in Brazil; or

II – the trademark has ceased to be used for more than five (5) consecutive years or, within the same term, the trademark has been used in a different manner, causing its original distinctive nature to be changed, as provided for in the certificate of registration”.

So, if you cease the use of your trademark or do any change you can lose your trademark.

Sometimes, the registrant wants to promote changes in the trademark, in this case, if any detail is modified in the trademark, you must file a new trademark application.

On the other hand, if you want to register a mark and you find a previous mark of third party that is not in use, you can request the cancellation of this trademark registration, as long as you prove the legitimate interest. If the request of cancellation for nonuse is accepted by the BPTO, your trademark application has a better chance of being granted.

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Author: Luciana Santos Fernandes, 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.”

#nonuse cancellation 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

The Brazilian Trademark Office has published a resolution with rules to examination of position trademark

There is no disposition in Brazilian law prohibiting non-traditional trademarks, however the Brazilian Trademark office (BPTO) does not accepts it.

In Brazil, only word marks, device marks and three-dimensional marks are allowed by BPTO.

Even so, in June, the BPTO published a consultation regarding the registration of position trademarks. After discussions a resolution was published in September 21.

From October 2021, it will be possible to file for position trademarks in Brazil.

The resolution states rules regarding the application and the trademark distinctiveness. For example, if the position of the trademark in the product is common for that product the trademark will be rejected. Also the position of the trademark in the object have to be fixed.

The list of good should be limited to the product/service where the trademark is positioned.

Finally, it is important to mention that the signal inserted in this certain position of the object can be a word, symbols, colors, numbers.

If you have any question regarding to trademark position and the rules in Brazil feel free to send your questions to inter@peduti.com.br.

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

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marcas Trademark

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

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

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

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

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

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

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

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

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

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

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

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Brazil cancellation rayssa leal Trademark

My trademark is being infringed. What should I do?

The Industrial Property Law guarantees to the owner of the trademark registration ownership rights and exclusivity of use over the trademark, throughout the national territory. Those rights include the right to ensure the material integrity, positive reputation and image of the trademarks under its ownership.

However, what can the owner do if a third party is improperly using its trademark?

Initially, it is recommended to send an out-of-court notification or a judicial notification to the infringer, with an explanation of the facts and legal arguments that support the application for immediate abstention from use.

In general, prior notification of the infringer has positive effects and is a way of resolving the issue in a friendly manner.

However, if the infringer refuses to refrain from using the trademark, it is recommended that a lawsuit be filed, which may be done independently of out-of-court or judicial notification.

The lawsuit may contain a claim for compensation, because Brazilian law provides that the owner of the trademark is due moral and material damages in case of infringement of its exclusivity right.

So, if your trademark is being infringed, look for an expert. Peduti Advogados is a law firm located in São Paulo, Brazil, specialized in Intellectual Property, with more than 40 years of tradition in the field, offering all services related to the areas of Copyright, Trademarks, Patents, Industrial Designs, Software, Technology transfer and Entertainment Law.

In our team we have lawyers, engineers and technicians specialized in Intellectual Property who are qualified to give a swift and clear answer to our client needs, be they related to advisory or litigation.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

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#brand #infringment 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

Facebook team up with Gucci in counterfeit lawsuit fight in the US.

On April 26th, Facebook and Gucci America Inc. filed a lawsuit against the head of an international counterfeiting business in the United States District Court for the Northern District of California – against a woman called Natalia Kokhtenko for counterfeiting and for supposedly sell counterfeit Gucci products and other brands imitating the original via Facebook and Instagram.

In their complaint, the companies alleged that at least since April 2020 the defendant “has operated an international online business trafficking in illegal counterfeit goods”. The companies also said that Natalia “used Facebook and Instagram to promote her websites selling counterfeit products, including counterfeit Gucci-branded handbags, shoes, clothing, and accessories, in violation of Facebook and Instagram’s terms and policies.”

Additionally, the companies alleged that the defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products. This practice helped the counterfeiter escape from Facebook’s and Instagram’s enforcement actions.

Facebook’s first action was disabling the defendant’s account and removed various posts promoting the sale of the counterfeit products alleging that the posts and account violated Facebook’s and Instagram’s terms and policies which doesn’t allow users from “doing anything ‘unlawful, misleading…or fraudulent”; infringing or violating the intellectual property rights of others; or breaching its terms of service, community standards or other terms and policies. Facebook added that it offers various measures to protect intellectual property rights.

Regardless of Facebooks actions, the defendant has continued to use Facebook and Instagram to promote her sales of counterfeit Gucci products with the “unauthorized use of several of Gucci’s registered trademarks, including its house mark GUCCI, a number of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature Webbing.”

The defendant purportedly has “used these spurious marks in connection with a wide array of products, including jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks, handbags, backpacks, watches, sunglasses and bedding.” However, these were not genuine Gucci products, according to the plaintiffs. An example of an infringing product is shown below:

Gucci alleged in the complaint that it spends millions of dollars promoting its trademarks, thus, there is a high level of consumer recognition, so the consumers recognize Gucci as the source of these products and confirmed that after purchasing the defendant’s products, confirmed that they were not original.

The causes of the action are counterfeiting, trademark infringement, federal unfair competition, unfair competition in violation of California Business and Professional Code, common law unfair competition and breach of contract under California Law.

The Plantiffs seek to stop the defendant from continuing selling counterfeit products and from continuing to violate Facebooks and Instagram’s terms and policies.

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

Source: Luxury fashion brand Gucci has partnered with Facebook to file a joint lawsuit against the sale of counterfeit products. The companies alleged that the unidentified defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products.

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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.”

#falseproducts #gucci FACEBOOK Trademark

The opposition procedure on international trademark applications in Brazil

Accounting on a tablet computer and laptop, close-up

When a trademark application is filed in Brazil, the Brazilian and Trademark and Patent Office (BPTO) publishes the application so that third parties can file opposition within 60 days.

Afterwards, the opposition is published on the Brazilian Trademark Gazette and the owner has 60 days to respond to it.

Finally, the BPTO analyzes the opposition and the trademark application. At this point, the BPTO can issue office actions or issue a decision approving or rejecting the application.

Differently of from other countries, like USA, China and European Union, where the formal and substantive examination are conducted before the opposition period, in Brazil the BPTO firstly performs the formal examination and then publishes for opposition purposes. After this procedure, the Office conducts the substantive examination, followed by the final decision.

It is important to be aware of this information, mainly, when filing a trademark application through the Madrid Protocol. The BPTO notifies the owner through WIPO when an office action or a final decision is issued. However, oppositions are not included in WIPO’s notification system, and applicants will be only notified through the National Gazette.

So, in case the trademark owner does not have a local agent, he may not be informed about the opposition and, consequently, may not have the opportunity to respond to it. Therefore, the trademark application will be examined – and maybe rejected – based only on the opposition arguments.

If the owner is interested in having a trademark registered in Brazil through Madrid Protocol, hiring a local agent to monitor the application shall be taken into consideration.

If you have any question regarding oppositions procedures in Brazil, feel free to contact Peduti Advogados.

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Author: Laila dos Reis Araujo, Senior Associate & Head of The International Department 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.”

#MadridProtocol #oppositions #TrademarkinBrazil Trademark

The definition of “generic”, “necessary”, “common”, “vulgar” and “descriptive” signs and why are they not registrable as a trademark in Brazil.

Businessman stamping with approved stamp on document at meeting.

In Brazil, the Industrial Property Law (L. 9.279 / 96) prohibits, by means of its article 124, VI, the registration of trademarks that consist of signs of a generic, necessary, common, vulgar or descriptive character in relation to products or services they want to distinguish.

The principle of distinctiveness is a fundamental condition for a trademark, that is, the assessment by the BRPTO (INPI) takes into account the distinctive capacity of the expression under examination. The prohibition on registering expressions considered as non-distinctive is for the simple reason that such elements will not be seen as a trademark by the consumer. In addition, allowing owners to have trademarks composed of a common sign to exist would generate an unfair monopoly.

The trademark manual (created by the BPTO) defines the types of non-registerable signs:

Generic sign is a “term or nominative expression or its graphic representation that (without being necessary in relation to the product or service or indicative of nature, nationality, weight, value, quality and time of production or service provision) designates the category, the species or the genre to which a given product or service belongs, and cannot individualize it, under penalty of violating the right of competitors.” As an example, “FOOD” to indicate food products;

Necessary sign is a “term or nominative expression or the indispensable figurative element to designate or represent the product or service, or even its inputs.” As an example, “OLIVE OIL” to indicate olive oils;

Common character sign is a “term or nominative expression or figurative element that, although it does not correspond to the name or representation by which the product or service was originally identified, has been enshrined, for current use, for this purpose, integrating, thus, the commercial language.” As an example, “CAR” to indicate cars;
Vulgar sign is composed of a “Slang, popular or family names that also identify a product or service.”

However, there is an exception regarding the registration of generic, common, vulgar or descriptive trademarks:

Art. 124. The following cannot be registered as a trademark:

VI – a sign of a generic, necessary, common, vulgar or simply descriptive character, when related to the product or service to be distinguished, or that commonly used to designate a characteristic of the product or service, as to its nature, nationality, weight, value, quality and time of production or service provision, unless they are sufficiently distinctive.

Such a reservation allows generic, necessary, common, vulgar or descriptive terms to be registered in case they are sufficiently distinctive. That is, these non-distinctive terms can be registered if they are accompanied, for example, by a sufficiently distinctive logo.

Thus, art. 124, VI serves to prohibit a holder from preventing his competitors from using terms directly related to products and services. However, it still allows owners who use these types of expressions, accompanied by a sufficiently distinctive logo to have the trademark registered.

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

Source: Manual de Marcas

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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.”

#common #generic #vulgar Distinctiveness Trademark

The importance of trademark registration in Brazil

Trademark registration protects the interests of the company. Its brands are among the most important assets of a company. When well cared for, a brand can generate a constant inflow of profits through direct or indirect exploitation, as it is the main link between the business and the customer.

Through trademark registration, the following rights are granted: (i) exclusive use throughout the national territory, in its market segment and (ii) the right to prevent unauthorized third parties from making use of the same or similar expressions.

In addition, if the trademark is used without being registered, at any time the company can be forced to stop using by others who were more cautious and registered the mark in the first place.

The trademark also brings credibility to the establishment.

The importance of trademark registration in Brazil

In addition, the trademark allows its owner to license or franchise its business, increasing its income without ceasing to be the owner of the brand.

In Brazil, the registration of trademark takes place before the Brazilian Patent and Trademark Office (BPTO).

The trademark registration must be requested from the BPTO by filling out a specific form, which must be delivered along with the image file.

The procedures may seem simple, but they are not. From the initial research to the chosen categories, the whole process requires extensive practical and theoretical knowledge, which is why Peduti Advogados Associados provides services for depositing and monitoring brands through a highly qualified team.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Attorney at law, Senior Associate & Head of Litigation at Peduti Advogados.

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#brand Trademark