The growth in the number of patent applications in the world and the current position of Brazil

The World Intellectual Property Organization (WIPO) released last year’s statistics for the Patent Cooperation Treaty (PCT), the Madrid Agreement and the Hague System. 

According to the WIPOs publication, there has been a record increase in demand for protection of patentable products and processes in the last year, with a total of 278,100 new patent applications. The increase was 0.3% compared to the previous number.

Among all the countries that used the Patent Cooperation Treaty system, there was a 25% increase in applications filed in India, followed by South Korea, with the number of 6.2% more applications than in the previous year. 

According to WIPO, the number of designs included in international applications in the Hague System for the International Registration of Industrial Designs increased by 11.2% in 2022, with a total of 25,028 registrations. In this system, Germany ranks first (with 4,909 drawings registered), followed by China (2,558), Italy (2,414), United States (2,412) and Switzerland (2,178 drawings). 

 

 

Today, Brazil occupies the 61st position, having presented only one project in 2022. It should be noted that much of this increase is due to the fact that on February 2023, Brazil officially joined the Hague Convention for the International Registration of Industrial Designs. With its accession, Brazil will become the second Latin American country (after Mexico) and the 79th member to adhere to the Convention.

 

After all, what is the logical conclusion that we can reach with these numbers?

These numbers clearly demonstrates that even with the world economy facing a delicate moment, in which much is said about a globalized economic recession, what we saw in the last year is that more and more companies are concerned with protecting the products and processes resulting from their research and development.

If you are interested in protecting an invention as a patent, or extending the protection of your patent/industrial design application to other countries of interest, count with Peduti!

 

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Author: Bruno Arminio and Cesar Peduti Filho, Peduti Advogados.

Source: BRASIL OCUPA AS 30 PRIMEIRAS POSIÇÕES EM PEDIDOS DE PATENTES INTERNACIONAIS

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

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

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

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

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

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

 

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

 

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

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

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

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

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Administrative nullity proceedings of trademark in Brazil

Administrative nullity proceedings of trademark in Brazil

When a trademark of a third party is granted, and contrary to the Brazilian law you can file an administrative nullity request.

This procedure is the second opportunity to attack by the administrative procedure. If you file an administrative nullity request but even so the registration was maintained, the next step will be to file a judicial nullity proceeding.

Some of the arguments to request an administrative invalidation proceeding are:

  • Reproduction of the prior registration for trademark;
  • Reproduction of a business name;
  • The right of preference;
  • Possibility of confusion between the trademarks or undue association.

 

Administrative nullity proceedings of trademark in Brazil

 

This is just some examples but there are more possibilities of arguments.

The administrative nullity proceedings against third parties’ registrations may be requested by any person with legitimate interest, within a period of 180 days of the issue date of trademark registration is granted.

The nullity of a registration may be total or partial. And the declaration of nullity shall take effect from the filing date of the application.

For more information or advice about the trademark protection, send us a message.

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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.”

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The metaverse and trademarks

Recently the “metaverse” become the main topic of business. Many companies are protecting your trademarks to sell goods and services in the metaverse.

It is probably that people spend more time in the metaverso in the future. This is the reason why many companies are investing in this new way to do business.

In many metaverses like Minecraft or Fortnite, a person can buy and uses clothes, shoes, buy foods and others goods.

But do you have to protect your trademark in the metaverse?

 

The answer is not. According do the brazilian law, the trademark registration confer the exclusive use throughout the national territory. But if you already have a trademark registration, it is important to review the goods and services to verify if the description of the specification is related to the metaverse, for example:

  • Online retail services;
  • Online advertising on a computer network;
  • Online ordering services in the field of restaurant take-out and delivery;
  • Game services provided online from a computer network;
  • Online banking.

You just need to adapt the especification to metaverse. In this case, you will need to do a new trademark filing aplication with this new specification.

In the case of you do not have a trademark registration yet, you just need to do a trademark filing aplication in Brazil with a specification destined to metaverse.

For more information or advices about the trademark protection, send us a message.

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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.”

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Exercising Prior User Rights before Brazilian Courts

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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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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Position marks in Brazil

Position marks in Brazil

Nowadays, in Brazil it is only possible to protect trademarks composed by individual words, symbols or design, and a combination of these elements.

In some countries we can also protect colors, sounds and smells as trademark, called non-traditional marks.

A famous kind of non-traditional mark is the position mark. Position mark consists in the specific way in which the mark is placed on or affixed to the product, always in the same way, and able to identify the business source of goods and services. A position mark can be formed by many elements like words, letters, numbers, symbols, drawings, images, figures, colors, shapes, or the combination of these elements.

 

Position marks in Brazil

 

This peculiar way of positioning the mark on the product makes it distinctive. Some examples:

1) The stripes of Adidas;

2) The red bottoms of Louboutin’s shoes;

Some points require to be considered to recognize the position trademark, such as the description of the object; description of the signal applied to the object; the precise definition of signal placement and others.

Recently, the BPTO started a public consultation to discuss the topic. It is likely that we will be able to register position marks in Brazil soon.

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Author: Luciana Santos Fernandes, Junior Associate 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.”

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The use of a third-party trademark in sponsored links

Sponsored links are used to divulge products and services, in websites, social medias etc. This service is paid, for a single fee or per click. Many companies use this kind of marketing because it is a way to divert the customers of others.

How?

They use a third-party trademark like a key word, when the customers search for this key word, the sponsored link appear. If the customer clicks in this link, they think that is a page of a certain company with prestige and good reputation, but in fact it is a page of a competitor company. This practice constitutes unfair competition.

Unfair competition is any act or practice in industrial or commercial activities contrary to honest practices, for example, uses fraudulent means to divert, for his own or a third-party benefit, clients from a third party. 

In Brazil we have many judicial decisions published by the Courts determining competitors to cease the use of the third-party trademark in sponsored links.

The use of a third-party trademark in sponsored links

Besides, the judicial decisions determine to the competitors pay damages to the trademark owners.

Because of that, if you want to contract a sponsored link service, it is important to abide the local trademark laws, and do not infringe third party trademarks. Use available key words.

How to protect my trademark?

If you are a trademark owner concerned with the use of your trademark in sponsored links, we inform you that you have the right to protect your trademark from dilution and parasitism, as well as its prestige and reputation. It is possible to be compensated for the damages suffered, pursuing a legal action.

We emphasize that is important to be assisted by professionals specialized in intellectual property in these cases. Our office monitors your trademarks and possible violations. Contact us for more information.

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Author: Luciana Santos Fernandes, Junior Associate 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.”

IP for startups in Brazil

Intellectual property’s rights is for sure one of the concerns a startup needs to worry about, and it is important to identify when to protect your rights, and what are the priorities to be protected.

Initially, when there is a consensus on which trademark will be used for the products or services provided, it is recommended to file an application for a trademark registration as soon as possible, even if it is in the name of one of the founders, transferring the ownership in the future, when a legal entity is constituted.

A trademark registration is a preventive measure, since, if the startup decides to register the trademark only in the future, when it has already invested in advertising, or the trademark is already stamped on its products and materials, it is possible that the trademark will be already registered in the name of a third party, for the same market segment, so it will be necessary to change the name, giving rise to losses.

In this same sense, it is important to register the domain name (address of the company’s website) right away, in order to guarantee its availability of use, even for a future moment, when the startup will be, in fact, in activity.

Regarding patent protection, despite the possibility of the founders having a brilliant idea in their hands, it is not possible to protect an idea in Brazil, since a patent must meet the requirements: a) inventive step; b) novelty; and c) industrial application. The protection of this idea, however, may be carried out in the future, when it fulfills such requirements, as well as it is possible to sign a confidentiality term between the companies involved in the startup, in order to avoid greater risks.

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Lawyer Author of the Comment: DRM

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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Peduti in INTA 2019 Boston

Peduti Advogados @ INTA2019 Boston, the main event of the intellectual property area. Seeking for the improvement of knowledge and the exchange of experiences in study groups and the straitening of relationships with professionals from all over the world.

 

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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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Madrid Protocol implementation in BRAZIL

It is essential to ensure that adherence to the Madrid Protocol does not generate unwanted asymmetries between Brazilians and foreigners, which makes the application of the principle of non-discrimination an objective to be achieved by legislators.

In order to prepare the Brazilian system of registrations for the imminent adhesion, Bill 10.920/18  was drafted, with amendments to Law 9.279 / 96, aiming at maintaining isonomy between nationals and foreigners, without loss of competitiveness.

The main claim of the Bill is the inclusion of rules that will be followed by both Brazilians and foreigners who wish to register a trademark in Brazil. These rules are:

  1. Proof of activity compatible with the application for registration filed through the Protocol;
  2. Possibility of co-ownership of trademarks, which is currently prohibited by INPI;
  3. The possibility of filing in the “multi-class” system, in which a single application can be presented for different market segments;
  4. Publication of the application in Portuguese, for opposition purposes;
  5. Automatic approval of the application for registration if its regular examination is not completed within 18 (eighteen) months of the date of the filing;
  6. Also in requests made through the Protocol, the foreign holder must appoint a prosecutor with powers to receive court summons; and
  7. Need for declaration of use or justification of disuse during the sixth and during the last year of registration.

Currently the Bill is in the Committee on Economic Development, Industry, Commerce and Service, so that, if it deems necessary, amendments to the Project can be submitted before its judgment.

With or without the approval of Bill 10.920/18, adherence to the Madrid Protocol will generate important changes in the trademark registration process in Brazil. And our office will always be available to advise companies that wish to protect their assets in Brazil.

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Lawyer Author of the Comment: Vittória Cariatti Lazarini
Source
Headline: A adoção do Protocolo de Madri e o Projeto de Lei 10.920/18

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