Tag: Trademark

The importance of the evidence in a claim of trademark distinctiveness

Priority examination for patent applications in Brazil

In a recent decision, the Norwegian Board of Appeals confirmed the rejection decision issued by the Norwegian Industrial Property Office (NIPO) and declined Facebook’s claim to register the WhatsApp Logo for a variety of products and services, such as software and telecommunication services. This decision is surprising, not just based on the insertion of this logo as a mark in the world’s routine, but also because it may be the result of failure of the evidence submitted to support the trademark distinctiveness.

The Norwegian Board of Appeals sustained that the trademark was unable to function as a “symbol of commercial origin”, and that its level of distinctiveness was deemed insufficient to be registered as a trademark, confirming the NIPO’s rejection decision.

It is unthinkable that Facebook would have a hard time proving the distinctiveness of the WhatsApp’s logo, since we as consumers immediately connect this symbol to its products and services as soon as we see it anywhere. Therefore, what comes to our mind is that the gathering of evidence in this case was not as careful as the circumstances required.

Therefore, this situation clearly shows that the investment in marketing, publicity and sales should not be the only focus a company should have to build a strong and valuable trademark, it is likewise of great importance to care about all legal aspects that involve the protection of that mark.

The owner of a trademark that has its distinctiveness challenged shall not rely only on the supposed fame and large recognition of the sign, instead sufficient time and effort should also be devoted to gather evidence of the dissemination of the sign in the relevant market. The proof of distinctiveness can be, in some cases, as important as the distinctiveness itself.

The failure of proving a mark is registrable and has – or has acquired by virtue of extensive use – sufficient distinctiveness could be, in the end, disastrous to the business results as a whole, especially if the company has already put a lot of effort and money to establish the sign in the market and to connect to its products and/or services.

In the worst-case scenario, all the investment already made in a mark might be in vain if the necessary legal care is not taken properly.

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Lawyer Author of the Comment: Gabriela Miranda

Source

Headline: Bad news for WhatsApp as Norwegian Board of Appeal refuses to register logo

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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INTELLECTUAL PROPERTY RIGHTS IN BRAZIL: JUDGMENT ABOUT RIGHT OF PRECEDENCE IN REGISTRATION

An important company specializing in feminine hygiene filed a nullity action of a trademark registration granted by the National Institute of Industrial Property (INPI) to a competing firm
based on Article 6 bis (3) of the Paris Convention (CUP).

According to the special rule laid down in article 6 bis (3) of the Paris Convention (CUP) “No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith (l).”

The monocratic decision welcomed the request formulated by the plaintiff, but the Federal Court of Appeal for the 2nd Region (TRF2) reformed the sentence and concluded that the trademark “Sempre Livre” coexisted peacefully with similar trademarks that identifies and identify and distinguishes the same products composed of the word “Livre” in the market; additionally, that the opposing party has not acted in bad faith when filing the trademark registrations. Thus, the Court has rejected the claim of the right of precedence in registration.

intellectual property rights in brazil judgment about right of precedence in registration

In August of this year, in the judgment of Special Appeal under Specific Court Regulations nº 1.741.532, 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 Brazil there are a handful of exceptions to this general rule in the Brazilian Industrial Property Law (Law nº. 9.279, of May 14, 1996), including a “right of precedence in registration” set out in Article 129, Paragraph 1, which establishes that “any person who in good faith had been using an identical or similar mark for at least six months in Brazil to distinguish or certify a product or service that is identical, similar or akin, will have preferential right to registration”.

If your business is using a symbol, word, frase, or combination thereof to identify its goods or services, you should take steps to prevent your competitors from using that distinctive signs in the same way. Your trademark represents the reputation of your business.

It is always advisable to consult a specialist Intellectual Property lawyer to prevent losses and conflicts of interest with other companies.

Do you have any questions about Brazilian intellectual property rights? Contact us.

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Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source

Headline: Fabricante de Sempre Livre não consegue anular marca concorrente

#intellectualproperty Trademark

Case study: the importance of registering your trademark abroad

Although international agreements and treaties such as the Paris Convention for the Protection of Industrial Property (1883) sets the principles and rules for intellectual property regulation on State members, each country has its sovereignty to legislate on intellectual property among its borders. Therefore, to protect its intellectual property on a specific country an applicant must file a request in this country.

Some countries, such as Brazil, adopt an “attributive” system for trademark protection, which means that a trademark is only protected when registered (with feel exceptions), following a “first to file” rule, that is the register is granted for the applicant who have first filed the request.

In that sense, trademarks which intent to be used worldwide or even used to commercialize goods and services with other countries should file a request in other countries to assure intellectual property protection, or even to ensure that a third party file a conflicting trademark.

A case study of the conflicts that may arouse from the lack of register on other countries has recently started on Brazil. When the internationally famous reality show MASTERCHEF came to Brazil in 2014 its trademark was rejected because an Argentinian company had already filed a request for MASTER CHEF trademark for cuisine presential and online courses.

The Argentinian company recently had filed an infringement lawsuit against the producers and the television responsible for MASTERCHEF reality show. PEDUTI ADVOGADOS is currently working on this case to defend the television channel. No final decision has been issued so far, however this case already highlights the importance of registering trademark on other countries to avoid situations like that.

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Lawyer Author of the Comment: Pedro Eurico de Souza Cruz Teixeira

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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#internationaltrademark #internationaltrademarkregister #trademarkregister Trademark

How to register a trademark in Brazil?

It is important to start saying that Brazil is a first to file country, which means that the rights over your trademark are acquired upon registration.

The recommendation is always to register a trademark at the earliest stage possible, to not risk the exclusivity of using the intended term.

Besides that, there is another relevant point about the trademark registration – the fact that Brazil had an enormous backlog of work at the BPTO. Nowadays, the BPTO has improved its performance. A registration should take around one year and four months without oppositions or rejection decision.

It is strongly recommended that before filing the trademark a full search on the BPRO base is done.

Brazil classifies trademarks in the following way:

Scope of protection: Product or service
object of protection: Collective or certification
According to its graphical representation: nominative, mixed, figurative or three-dimensional.

How to register a trademark in Brazil?

The following information are needed to file a trademark:

general information about your trademark and business application form
Official fee payment receipt
digital image (if applicable)
power of attorney (if applicable)
regulation on use and other documents to support your application

A trademark can only be registered if it is directly relevant to the business’ nature or activities. For foreign entities, it is necessary to have a legal representative in Brazil to undertake the trademark registration process. The trademark is valid per 10 years.

However, a registration becomes vulnerable to cancellation based on the non-use after 05 years. This cancellation may occur when a legitimate third-party files the cancelation action, for example when this party have had the trademark rejected based on this trademark.

Brazil is a country that has become more attractive to investment after its economy began to gain speed and cannot be a discarded country to have you trademark registered.

Furthermore, Brazil recently joined the Madrid Protocol, which makes it possible to file a single application with the World Intellectual Property Organization (“WIPO”), which will forward to the offices of the countries designated by the holder, among the signatories to the protocol, for examination of the application based on national law and subsequent registration and protection.

It will no longer be necessary to register the trademark in Brazil and separately in the other countries in which the holder wishes to obtain protection.

We have explained the whole Brazilian trademark system in Chambers magazine, you can find here:

https://practiceguides.chambers.com/practice-guides/trade-marks-2020/brazil

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Lawyer Author of the Comment: Laís Iamauchi de Araujo

Brazil register Trademark

Trademark Generification

The trademark generification occurs when, after the protection is recognized, the trademark content loses its distinctiveness, falling into the common domain. The trademark becomes so powerful that the sign, instead of distinguishing the trademark becomes confused with the product. Xerox, Gillete and Pyrex are some obvious cases.

It occurs in two main hypotheses: due to the excess fame of the trademark, and by the excess of the uniqueness of the trademark. In general, the more famous the trademark, the more sensitive to the loss of distinctiveness due to excess of meaning.

trademark generification

To decrease the risk of a trademark becoming generic due to its fame, the owner of this trademark must choose an arbitrary or fancy name to designate the product, avoiding, whenever possible, the use of juxtaposition or agglutination of known affixes or words. For a greater protection of a trademark against its genification. it is prudent for a trademark to name more than one product, as it is easier to generate a trademark that identifies a single product than a brand that distinguishes one series of products.

When trademark owner become aware that their trademarks are being used by competitors in an improper manner, as referring to the trademark as being the product itself, the owner must immediately take steps to avoid improper use of the brand. Even after the eventual generification, there may be a recovery of distinctiveness, through secondary meaning.

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Source: Trademark Generification

Lawyer Author of the Comment:Laís Iamauchi de Araujo

#generification Trademark

Trademark Dilution

Trademark dilution refers to acts that weaken the uniqueness of a famous trademark, typically as a result of blurring or tarnishment of the famous trademark. Unlike trademark infringement, trademark dilution involves use of a trademark in connection with goods or services that do not compete with those connected to the famous trademark. Trademark dilution therefore stands for the proposition that some trademarks are so well known that they deserve protection beyond the standard likelihood-of-confusion analysis for determining trademark infringement.

The elements of a trademark dilution are:

Fame —A trademark must be famous for dilution purposes to allege a claim of trademark dilution;
Protects the Strength of a trademark for the Owner —Instead of protecting consumers from confusing the source of (a) competing, (b) similar, or (c) related goods or services because of the similarity of the trademarks, trademark dilution protects the owner of a famous trademark from any entity that would weaken the ability to identify and distinguish the goods or services of the genuine trademark;
Necessary Showing —The owner of a famous trademark need only show that there is a likelihood of dilution, rather than the actual existence of dilution, to be awarded relief.

Trademark Dilution

In Brazil, Dilution is not foreseen by law. We use, by extension, the article 130, III of the Brazilian IP Law which says: “Art. 130. The trademark owner or the depositor is also guaranteed the right to: III – ensure their material integrity or reputation.”

Also, here in Brazil, there are three types of Dilution:

Tarnishment: association with less valuable products or services.
Blurring: weakening of a strong sign by using it in other contexts.
Adulteration: adulteration of the brand, modifying its basic characteristics

The dilution theory is widely recognized by Brazilian courts, even though it is not clearly provided in the Brazilian IP Law.

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Lawyer Author of the Comment: Laís Iamauchi de Araujo
Source
Headline: Trademark Dilution – Brazilian Courts

#dilution Trademark

Secondary Meaning

It is important to understand the concept of the Spectrum of Distinctiveness to understand the concept of secondary meaning. The Spectrum of Distinctiveness describe the strength of the trademarks. They can be categorized on the Spectrum of Distinctiveness as following

a. Fanciful trademarks consist of made up terms that have no relation to the goods being described;

b. Arbitrary trademarks consist of existing terms that contribute no meaning to the goods being described;

c. Suggestive trademarks consist of terms that suggest meaning or relation but that do not describe the goods themselves;

d. Descriptive trademarks consist of terms that describe either the goods or a characteristic of the goods. Often it is very difficult to enforce trademark rights for descriptive trademarks unless the trademark has acquired a secondary meaning;

e. Generic Terms consist of terms that are the accepted and recognized description of a class of goods or services. Generic terms cannot be protected;

A descriptive trademark may be protected only where the descriptive trademark has acquired secondary meaning and when the word taken as a trademark already has a meaning in its language. However, a generic trademark, would be unregistrable when the meaning has to do with the product or service itself.

The Brazilian Courts see secondary meaning as a semantic process in which the characteristic feature of certain trademark acquires a meaning not previously settled by the society. And, unlike some countries, in Brazil it is up to the judiciary to analyze and decide on the recognition of a sign with secondary meaning.

Basically, when a weak trademark is recognized with a meaning beyond the direct and original meaning (a second meaning – secondary meaning), it can become a strong trademark. This occurs with the continuous and massive use of a certain expression by a certain producer or service provider.

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Lawyer Author of the Comment: Laís Iamauchi de Araujo
Source 1 , Source 2

Headline: Secondary Meaning

#secondarymeaning Trademark

APPLE was allowed to use the trademark IPHONE

The Superior Court of Justice has issued a decision regarding the use of the trademark IPHONE in Brazil. The Brazilian company Gradient has registered the trademark in Brazil 06 years before Apple.

For this reason the Brazilian Trademark Office has rejected the trademark IPHONE for Apple in 2013. After that, both companies have started a lawsuit in order to discuss the use of the trademark IPHONE in Brazil.

Although Gradient has filed the trademark in Brazil before Apple request in any other country, the Superior Court of Justice has decided that both companies can use the trademark. Mainly, because nowadays Iphone is a well known trademark of Apple.

Lawyer Author of the Comment: Laila dos Reis Araujo

Source

“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.”

Apple Gradient Iphone Trademark