Brazil and the Madrid Protocol: What You Should Know
By Vivien Racy. Lawyer and Client Relationship Manager.
As soon as Brazil announced its intentions of joining the Madrid Protocol many questions arise. What would be the implication for Trademarks applicants and representatives?
One question and maybe the most important at this moment and which it is not yet definitely solved, concerns the obligation of a local representative, meaning a local registered lawyer, for the application. Despite the contradiction between the regulation of the Protocol to which Brazil is joining and the Brazilian Intellectual Property Law, this one added to the lobby of the Brazilian Bar Association and Intellectual Property Professionals, the matter is still to be decided.
Facing this impasse, it becomes vital to expedite and precise the Trademarks search before the application. Currently, the search through the system of the World Intellectual Property Organization (WIPO) is not accurate with respect to the Brazilian database and an effective and detailed search can only be carried out by qualified professionals in Brazil with complete access to the national database and information.
Once an exact search has been conducted it will be possible to guarantee the success of a new Trademark registration avoiding a costly and time-consuming subsequent procedure of …
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7th International IP Congress: Recent IP Developments in Europe
By Maria Sol Porro
Last June, 7th, the Seventh International Congress of Intellectual Property called ¨Recent IP Developments in Europe¨ was held at the University of Maastricht, Netherlands, organized by the Queen Mary University of London, the Autonomous University of Madrid and the host, the University of Maastricht.
Each year different speakers of the mentioned universities attend this event in order to make brief presentations about the most recent developments in the main areas of intellectual property law in Europe. In this way, new laws, legislative proposals, notable new resolutions or recent doctrines on trademark law, patents, copyright, geographical indications, designs, etc. are analyzed and exposed.
In summary, the topics addressed this year were the following:
1- Multimedia Trademarks
They are those represented by the presence of an audiovisual file that contains the combination of image and sound. These trademarks are starting to be taken into account within the European registers, although they are usually registered as services and not as goods. However, they have two problems: a- Having so many elements involved, often lack the distinctive character required for the trademarks and b- many of these brands are usually video games whose central themes often clash with morality …
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Brazilian Senate approves adhesion to the Madrid Protocol
By Marta Garcia, Patent Technical Advisor
On May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).
Created in 1989 and in force since 1996, the Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO) established to create a centralized system of trademark protection for all the signatory states.
Through the Madrid Protocol, applicants can protect their trademarks in all member countries by filing a single application in one of the member countries. Procedures are uniform and the application can be filed in one of the three official languages – English, French or Spanish. However, the examination of the application follows the national legislation of each country.
The main advantages of the system are: the reduction of filing and management costs, the higher predictability in response time, the simplification of the whole procedure and the permanent monitoring for trademark management in all the countries where the trademark is registered.
Currently, 104 contracting parties are signatory to the Madrid Protocol. In Latin …
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Betcha, Can’t Plant Nor Just One!
By Maria Sol Porro, Trademark Lawyer
The PepsiCo company, owner of well-known trademarks such as Pepsi, Lays, Gatorade and Doritos, filed a lawsuit against a group of Indian farmers for cultivating the same species of potatoes that the corporation produces, known as “CF5”, designed to contain less water than normal varieties and get the ideal physical properties that the final product demands.
In this context, PepsiCo is seeking compensation of 10 million rupees (USD 143,000.-) from each Farmer but it remarks that the farmers who are sued are not among the thousands who have authorized to grow the registered variety of potatoes. On the other hand, associations of farmers and activists in India request the Government of this country to intervene and take action against PepsiCo, based on the Indian agricultural law that allows to plant, grow and market any agricultural product (including seeds), provided that the registered trademark is not being used.
However, this conflict is not simply limited to the possibility of growing potatoes in western India, but the basis of the problem is related to an intellectual property right, perhaps less popular, known as “plant variety”. This right gives the owner the ¨ownership¨ and ¨protection¨ of the …
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Brazilian PTO Continues its efforts to Improve Performance Output
By Maria Belen Priore, Patents Department
We hereby inform the last news published by the Brazilian INPI’s official gazette in the past two weeks.
We would like to highlight two new rules, in where we found special interest that may benefit our clients.
The Official Gazette number 2515 launched a Resolution under number 236/19 that establishes the beginning of phase IV of the pilot project to accelerate examination for small and medium-sized Brazilian companies.
Official Gazette number 2516 publishes a normative instruction that aims to improve the Brazilian INPI’s performance, regarding the appeals submitted against rejections of trademarks and industrial designs, which are still pending of resolution, due to the backlog suffered.
The INPI launched this new normative instruction under number 101/19 which encourages the sectors that are responsible, to solve 31.000 pending resolutions in a year’s time.
This normative instruction establishes new transitory rules, including the issuance of a decree that will be dictated by the sectors DIRMA (Trademarks, Industrial Designs and Geographical Indications Direction) and CGREC (General Coordinator of Appeals and Administrative Proceedings of nullity). This decree will determine criteria to be applied in order to comply with this instruction, and shall be issued as soon as …
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Trade Names and Trademarks in South America: the Case of Brazil
By Moeller IP Advisors
In today’s competitive economy, business owners need to ensure adequate IP protection for their company by registering their trademark, patent, copyright and last but not least, trade name. It is particularly important to differentiate between trademarks and trade names: a trade name is the name that identifies a company after the registration into the commercial registry. While trademarks and trade names tend to match, their registration follows different procedures and entails different legal consequences.
In Brazil, problems arise when a company registers a trade name that is the same as an existing trademark: the trademark owner cannot directly oppose the registration in front of the commercial registry, even when the trademark is well-known.
The situation is complicated by the fact that each of the 26 Brazilian states has its own commercial registry. This can be particularly tricky for foreign companies: even if the trademark owner has a subsidiary registered at a state commercial registry, the registration will not be double-checked in the registries of other states. The commercial registry is likely to decline the registration if the commercial name of the applicant company is identical to an existing trade name in that particular state registry.
What …
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