INPI Brazil | Brazilian PTO Extends Suspension of Terms Determined by Ordinance No. 120 / 2020

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Brazilian PTO published this Tuesday (04/14), Ordinance No. 161/2020, which extends until April 30, 2020, the suspension of deadlines referred to in Ordinance No. 120 / 2020, due to administrative measures to prevent infection and the spread of COVID-19.Temporary work on teleworking for employees and employees of the Institute was also extended until the same date.

– The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.

– The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.

– The terms that start in this period will start counting after the end of the suspension.

– The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.

Source: http://www.inpi.gov.br/noticias/inpi-prorroga-suspensao-de-prazos-ate-30-de-abril/view

Top Argentine Trademark Professional by World Trademark Review

By Moeller IP.  

Moller IP offers the complete range of IP

“With over 90 years’ presence in the Argentine IP sphere, Moeller IP offers the complete range of IP and regulatory services throughout the entire Latin American region, with offices in São Paulo and Montevideo for Brazilian and Uruguayan patrons’ convenience. In line with its growth-focused strategy, the boutique has been expanding its data protection and enforcement branches, with the head of trademarks Victoria de Lasa Andrés supervising the latter. Combining excellent management skills with across-the-board knowledge of the IP industry, she excels at maneuvering complex IP cases and routinely leads the team to successful outcomes. By her side, the office’s commercial hand Mariano Municoy is a safe choice for trademark portfolio management, taking charge of the firm’s regional portfolios.”

Source: https://www.worldtrademarkreview.com/directories/wtr1000/rankings/argentina

Brazil and the Madrid Protocol: What You Should Know

By Vivien Racy. Lawyer and Client Relationship Manager.

Answers to Brazil and Madrid Protocol

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?

¿Local representative?

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. 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. Thus avoiding a costly and time-consuming subsequent procedure of oppositions.

To know more about Trademark Searches in Brazil regarding the Madrid Protocol please contact us.

 7th International IP Congress: Recent IP Developments in Europe

By Maria  Sol Porro

Seventh International Congress of Intellectual Property

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.

Topics addressed at the event 2019

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.

b- Many of these brands are usually video games whose central themes often clash with morality and good manners, preventing your registration as such.

2- Packaging and trademarks

Last May, the CJEU issued a new judgment (C-642/16 Junek Europ-Vertrieb of May 17, 2018) related to the interpretation of ¨the principle of exhaustion of trademark¨ in the case of parallel imports and repackaging of products, mainly in medicines and health products. 

In other words, what was analyzed is whether the owner of a trademark has the right to prevent the commercialization of a product that has his trademark, legally marketed in another EU State, when its original packaging has been modified. In the judgment, the CJEU was referred to other judicial decisions in which 5 requirements were established to consider when the exhaustion of the right of the owner of the mark takes place.

These requirements determine that the right of the owner of a mark is exhausted when the variation of the packaging does not affect the origin of the product in relation to the brand or does not cause any harm to consumers. In this case, it was considered that the owner´s right was exhausted and, therefore, the owner had no right to prevent that commercialization.

3- Artificial intelligence

The issue of Artificial intelligence has become the storm in a teacup of the patent area. Not only because it is an important point in the subject of patents, but it is a technology that involves more edges. In itself, the question arises of recognizing computers as a-inventions or b-legal entities under the law. While it is currently held that computers programmed to create objects could not be considered as “inventors”, this does not prevent the rules of the game from changing in the future.

4- Competition law, patents, and the pharmaceutical sector

In recent years, certain “questionable lawfulness” practices have become usual within the patent sector, specifically for generic drug companies, which are intended to extend the protection of these drugs and block the entry of new companies into the market.
Some of these practices aim to register small changes of the main patent before the generic one enters the market (product hopping), the indiscriminate registration of patents in order to protect a product and block competition (defensive patents), increase the protection of a patent with other minimum patents, applications which remains pending to be registered (divisional patent applications), among others.

It is against this panorama in which the European Commission emphasizes the importance of using the “Competition Law” in conjunction with the “Patent Law”.  The purpose is to avoid these covert monopolies within the field of patents. Likewise, it is important to note that while markets such as the United States generally prohibit these practices, some of them are allowed in the EU.  So it is substantial to determine when one is facing an allowed situation and when facing competition action unfair.

5- Online parodies and future of upload filters

The New (and controversial) article 13 of the Copyright Directive establishes a paradigm shift by determining that it will now be the platforms which will have to ensure that the content they host does not involve copyright violations. That is, services such as Facebook, Twitter or Google but also Wikipedia or GitHub will have to adopt measures and use content recognition techniques to block them directly. Therefore, it is expected that in order to avoid sanctions, platforms tend to block more content than they should.

Another controversial issue is online parodies, better known as memes. Although the exception of parody is treated differently in each country, in order to understand when we are within the limits of one it is important to consider 4 basis points:

– Who is the interlocutor.
– The type of expression.
– The context in which it is said.
– What is said.

It is clear that in the face of this scenario, certain difficulties will arise for the platforms when recognizing when they are facing a parody and when they are facing illicit content. On this point, even though the New Directive establishes the exception of mandatory parody in the EU, platforms are not encouraged to apply filters to differentiate parodies of illegal content, which will be a problem in the future.

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 America, only Colombia, Cuba and Mexico are part of the Protocol.

As previously explained in our blog, with Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles for a smooth integration into the Protocol requirements.

Firstly, as a rule of the Protocol, the examination of an application must be carried out within 18 months from the filing date. This was one of the main issues to be solved by the INPI, due to its known backlog problems.

However, as reported in our blog, according to the 2018 Activity Report, the INPI is already complying with this requirement, since the processing time from trademark filing was reduced from 48 months (in applications with opposition) and 24 months (in applications without opposition) in 2017 to 13 and 12 months in 2018, respectively (Figure 1). According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.

Figure 1: Trademark examination time (in months)

Secondly, the Draft Legislative Decree No. 98/2019 establishes Spanish and English as the possible languages for a trademark application filed through the Madrid System. Taking into account that the INPI’s working language is Portuguese and all applications are filed in this language, the INPI´s operational procedures will have to be changed, the IT systems updated and the staff trained.

Finally, the INPI will have to implement further relevant measures to align with the procedures of the Madrid Protocol, such as:

– the processing of a trademark registration in a multi-class system (e.g., the possibility of requesting the protection of more than one class of product or service in a single application), which is not an option under current INPI practices; and

– the registration under a co-ownership policy (e.g., the possibility of a trademark application/registration being held by more than one owner). Even though the Brazilian system already allows for multiple owners of a single trademark, the INPI has been reluctant to accept and implement this option, for administrative and organizational reasons.

Currently there are public consultations open regarding the implementation of the above measures. The consultation about multi-class registrations will close on June 13, 2019, whereas the one regarding co-ownership will be open until June 20, 2019.

Adhering the Madrid Protocol could boost exports and internationalization of national brands abroad, and make it easier for international companies to operate in Brazil. Moreover, Brazil’s adhesion to the treaty could even prompt other Latin American countries to join soon.

Source: http://www.inpi.gov.br

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 obtained plant variety, when certain requirements are fulfilled (novelty, distinction, homogeneity and stability), as well as ¨the power to exclude¨ third parties from the non -authorized use of it. Therefore, the underlying conflict is, in fact, about the limitations that this system establishes, in other words, the difficulty of differentiating between legitimate and non-legitimate uses, the complexity of persecuting users (and small producers) based on that and, finally, reasonable doubts about the usefulness of the system.

Returning to the main issue, on April 26th, the trial between PepsiCo and the associations of Farmer began, in which PepsiCo offered to withdraw the lawsuit if farmers agreed to sign an exclusive agreement with them or, otherwise, they should stop cultivating this variety of potatoes. Faced with this context, the defendant said that they will study the aforementioned offer, so that the outcome of the conflict will take place in June, when the trial will be resumed in order to reach a solution.

Source: www.edition.cnn.com

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 possible (after which the term of one year would begin).

Source:  http://www.inpi.gov.br/

Regional trademark surveillance

Domain Names

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 can the legitimate trademark owner do?

As said, filing a complaint to the commercial registry within the 10-day deadline after the registration of the trade name has been published in the Official Gazette, has little or no effect if the trademark owner did not register the trade name or if the trade name is registered in another state.

There seems to be a substantial legal and judicial agreement that, in this case, the trademark owner can resort to taking a court action.

In particular, the Brazilian Intellectual Property law seems to consider trade names and trademarks as worthy of similar protection, establishing at article 124, that “the reproduction or imitation of the characteristic or distinguishing element of a third party’s title of establishment or company name, liable to cause confusion or association with such distinctive signs” cannot be registered as a trademark.

The Brazilian courts have endorsed this interpretation. In the case in Otica Lunetterie Com Imp v The Gap Inc (2004) it was decided that “if there is conflict between a trademark and a trade name, the one that will prevail is determined by when they were registered at the commercial registry or PTO”. Following from that, a trademark owner could legitimately oppose the registration of the same trade name in the commercial registry, even if the trade name was not previously registered in that state.

Considering that the commercial registry will not take actions on its own for most of the time, it is important for companies to keep an eye on potential infringing companies. Legal actions should be taken as soon as possible. The statutory limitation for such actions is set to 10 years in Brazil.

Although going to court over this issue can be time-consuming, it is nonetheless possible to come out victorious especially in case of valid prior rights, considering there is a good legal framework which does protect trade names and there are already precedents.