The BPTO has reported a record number of trademark filings in Brazil in 2011. There were 152,735 new applications compared with 129,620 the previous year.

The increase in the number of new trademark applications reinforces the need to hire new examiners. In recent speeches, Jorge Avila, president of the BPTO, has said that he expects about 40 new examiners to be hired in the first six months of 2012.

The hiring of examiners and reducing the analysis time of trademark applications are also conditions for Brazil to join the Madrid Protocol, without it being to the detriment of domestic filers.

Still in the administrative field, the BPTO has released version 2.0 of the E-trademark system for the filing of applications and petitions through the Internet. New features for the system have been announced for 2012, among them the possibility of filing trademarks in a multiclass system. Dr. Vinícius Bogéa Câmera, director of trademarks at the BPTO, also announced the launch of a new system of trademark analysis based on the IPAS program, developed by the World Intellectual Property Organization.

We also highlight the discussions and reviews of the General World Cup Bill, which have increased with the proximity of the international games.

In the area of Intellectual Property, the draft law being considered in Congress provides a separate chapter providing for the recordal, by the PTO, of the highly reputed trademarks consisting of FIFA’s official symbols as well as well-known trademarks.
Also part of the project is a special procedure for applications for trademark registration submitted by FIFA aiming to accelerate the granting of registrations. The above measures are needed to combat so-called ambush marketing carried out by companies seeking to associate themselves unduly with the sporting events to the detriment of its official sponsors.

Rodrigo Borges Carneiro

As you can see, 2012 promises advances in the trademark areas in Brazil and we will be keeping a close eye on the daily developments.

1. The reformulation of the previous opinion of the Superior Court of Justice (Court of Appeals) in the case involving trademark VISA giving precedence to the view that the current law does not require the issuance of certificates for the grant of special protection for highly reputed trademarks . The decision was taken at the Interlocutory Appeal of Special Appeal No. 954.378- MG (2007/0110732-3), with its Judgement of April 14th, 2011.

The reporting judge, Justice João Otávio de Noronha, concluded that a trademark duly registered at the BPTO has special protection in all fields of activity once its high reputation and the possibility of confusion with another trademark has been proven, even if the companies concerned are engaged in distinct areas, have a specific clientele and their respective products are unrelated. The reporting judge’s position was accepted unanimously.

2. Decision of the Third Chamber of the Superior Court of Justice (STJ), on the judgment of Resp. No. 1,032,104,-RS, published on August 24th, 2011, clarifying theunderstanding to the effect that holders of applications for trademark registrations still under examination by the BPTO may file a lawsuit against a third party to protect their rights to exclusive use.

The decision is important because it clarifies that holders of applications for registration at the BPTO have protection and can prompt the judiciary to curb violations protected by Section III Article 130 of the Industrial Property Law.

Referring to the notorious delay in the examination of applications for registration by the BPTO, the Court recognized that holders of applications cannot be impaired by the slowness and backlog of work at the BPTO.

3. Decision of the Second Section of the Superior Court of Justice, by majority, at Divergence Appeal Resp. 964.780-SP clarified the matter concerning the effect of the lapse of a registered trademark. The decision determined that it should be effective from its declaration (ex nunc), rather than retroactively (ex tunc).

The Section found that the defining of the effect of the lapse for the future is the more appropriate for the purposes of trademark registration, since it provides greater legal certainty for economic agents and discourages counterfeiting.

The reporting judge, Justice Nancy Andrigui noted that ex tunc effects would be like a “sword of Damocles” over the heads of economic agents, being contrary to the spirit of the law and inspiring general distrust in the trademark system.

In the Judicial sphere an important development that occurred in 2011 was the creation by the Special Body of the Justice Court of São Paulo of the Business Reserved Chamber with jurisdiction over matters of Business Law – dealt with in Articles 966 to 1,195 of the Civil Code – of the Corporation Law (Law 6,404/76) and of the Industrial Property Law (Law 9,279/96).

The specialized panel, approved in February, has the following members: Justices Manoel de Queiroz Pereira Calças, Romeo Ricupero, José Reynaldo Peixoto de Souza, Ricardo José Negrão Nogueira and Enio Santarelli Zuliani. Trials are held on Tuesdays, from 9:30 am and are fortnightly.

The effects of the creation of the specialized panel have already begun to be felt in 2011, but by 2012 there should be a further decrease in the duration of appeals in the industrial property area.

Rodrigo Borges Carneiro

According to recent news, Brazil overtook United Kingdom’s Gross Domestic Product (GDP) and became the world’s sixth largest economy.

The expressive results of the economy has also fueled the number of trademark and patent applications filed in Brazil. According to the Brazilian Patent and Trademark Office, in 2011 local and foreign individuals and companies altogether filed 152.735 trademark applications, an increment of approximately 20% over 2010. In the same period, almost 32.000 new patent applications were filed, representing an increasing of approximately 14% over 2010.

These good news reflect the very auspicious moment Brazil has been going through, which is supported by other impressive numbers recently condensed by the prestigious local magazine EXAME:

a)    6,7% – This is the lowest unemployment rate over the last ten years. In fields like extraction, construction, real state, financial intermediation and fuel retail services said rate is even lower. In turn, this number shows the high strength of the Brazilian domestic market.

b)    353 billion dollars – These are the country’s international reserves in last August, representing almost 50% more than the available reserves during the 2008 crises.

c)    400 billion dollars – This is the country stock of liquidity, providing the Brazilian Central Bank with a strong weapon to control the economy and deal with speculation.

d)    29 million people – This is the number of persons that ascended to  the middle class from 2003 to 2009, craving for an  enormous variety of products and services.

e)    7 million people – Equivalent to almost the entire population of Switzerland, this is the number of people that climbed to the upper income class during the 2003-2009 period, opening big opportunities for the luxury industry.

In addition, Brazil has been preparing itself to host the 2014 World Cup and the 2016 Summer Olympic Games, which will certainly result in a big extra surge to the economy in different areas such as  urban transportation, security, energy, hotel accommodation & services, food and drinks, sporting goods, and civil construction & architecture.

Of course, these very encouraging numbers cannot overshadow the country’s difficulties in several fields reflected, for instance, by its still low ranking at the Human Development Index (HDI), high interest rates and infrastructure bottlenecks. However, the fundaments of the Brazilian economy and the size of the internal market show that the country has been going in the right direction with an enormous energy

Mauro Ivan C. Ribeiro dos Santos

In a nutshell, the legal question brought before the court was whether the owner of a pending application may assert trade mark rights against third parties or or whether, by contrast, the applicant should wait until registration was granted by the Brazilian Patent and Trademark Office (BPTO) before going to court.

On the one hand, under section129 of the Brazilian IP Law exclusive rights in a mark originate from a registration validly granted by the BPTO. On the other hand, section 130, III of same law entitles a trademark applicant to defend the material integrity or reputation of its mark, even before a registration is granted.

In the instant matter, the plaintiff had filed an infringement action based on its pending application for trademark “RALA BELA. The main goal of the suit brought by this plaintiff was to compel the defendant to cease the use of this mark in a similar field of activity. The plaintiff lost at the local court and at the Appellate Court of Rio Grande do Sul. Both decisions were based on the fact that the plaintiff had so far not obtained a registration for the trademark at issue.

In its decision, STJ recognizes that according to section 129 of the Brazilian IP law, the right of exclusive use of a mark is subject to a validly granted registration, however this does not mean that trademark application owners have their hands tied when it comes to the protection of their marks against infringers.

Making reference to the notorious delay in the examination of trademark applications in Brazil, the Court acknowledges that trademark applicants cannot be harmed by the backlog of work of the BPTO.

The court also recalls that the Brazilian IP law contemplates legal measures against acts of unfair competition which are not subject to the ownership of a valid registration granted by the BPTO.

In view of this, the court concludes that the provisions of section 130, III of the Brazilian IP law shall prevail, thus enabling trademark applicants to enforce their rights against infringers, even before the registration is granted by the BPTO.

This decision puts an end to dissenting opinions of some national Appellate Courts and confirms the understanding of the majority of the Brazilian jurisprudence and specialized doctrine.

It certainly represents an important step towards the effective enforcement of trademark rights before the Brazilian courts.

Felipe Dannemann Lundgren

Mr. Câmara has a sociology degree and has been working at the BPTO for seven years including as an assistant to the Trademark Director.

According to a press release published at the  the BPTO’s website, the new director goal is to focus on the user’s needs creating simple and readily comprehensible systems with foreseeable results and uniform procedures.
On this topic, the new director announced for 2011 a new version of the online trademark filing system  (e-Marcas 2.0) and a new system for trademark examination named IPAS.

We wish all the luck to Vinicius Bogéa Câmara and hope that he can achieve the promised goals as we are  all for  “simple and readily comprehensible systems with foreseeable results and uniform procedures.”

Rodrigo Borges Carneiro

The Reporter Judge, the honorable minister Della Giustina Vasco, decided that the name of a condo of apartments  does not infringe the intellectual property rights inherent in a trademark.

For the Reporter Judge, the names of buildings or condominiums are not marks or acts of commercial life, but acts of civil life, and cannot be classified as services or products:

“The fact that a company builds a condominium and to particularize the venture gives it a name does not render the act commercial” he explained. “The protection of a  trademark registration is restricted to commercial activities such as the rendering of services or commercialization of products and not reflecting on the naming of things,”

Will this decision give a free pass for companies to name condos using trademarks in Brazil?

In “regular” cases of similarity with trademarks I feel that this is exactly what will happen.

However, the incorporation of condos with very famous marks such as ROLEX, FERRARI may still be challenged under other grounds such as unjust enrichment.

There was a divergence among different panels of the Superior Court of Justice as to the correct venue with some decisions applying the general rule of section 94 of our Civil Procedure Code which demands that the court action be filed at the domicile of the defendant   and others which applied the rule of sole paragraph of section 100, of the Civil Procedure Code according to which the Plaintiff can choose the venue where to bring action.

The full bench of the Superior Court  of Justice decided that it is possible for Plaintiffs to elect the venue among the domicile of the defendant, the place where the infringement occurs and the Plaintiff’s own domicile.

The court also clarified that this is the case even if the infringement action is combined with a request for recovery of damages.

The case number 7893.280 is originally from the State of Rio Grande do Sul in the South region of Brazil.

This is an important decision as it will greatly benefit Plaintiffs who will be able to avoid litigating in courts in the interior of Brazil which are not familiar with intellectual property matters.

Rodrigo Borges Carneiro

The reporting judge Minister Nancy Andrigui considered that EBONY is an expression  commonly  related to Afro-descendants and agreed with the Federal court of Appeals which had already decided that it was not possible to give exclusivity to the use of words such as “white”, “black”, “yellow”, “brown” or “mulato” and that the PTO could not therefore use the  registration of a mark with one of these terms to deny registration to another.

The decision contains strong words  and even considers that the coexistence of the marks is not only possible but inevitable as “the judiciary  can not  recognize  to a  business enterprise the marketing indication of a whole economic sector – in fact, previously  marketed  by disregard and discredit – and allow a monopoly, now a that  black middle class is emerging in Brazil.   The initiative to obtain monopoly of a mark that identifies half of the consuming public in Brazil is an abuse of intellectual property rights and  an attitude of pure opportunism”.

Further it equated the situation to a patent misuse scenario which the Courts have a duty to curb or the abuse of the intellectual property rights will generate negative effects on the competition which can be forced to cease its lawful activities in a certain market segment.

With all due respect, I feel that the decision mixed the concepts of evocative and generic marks and that EBONY should deserve protection.

Also the strong position on abuse of intellectual property was not warranted by the facts of the case.

After all  EBONY has no  direct meaning regarding to deodorants and only an indirect meaning to the market segment and can not be equated with black or white.

The decision also troubles me in view of a passage which denies the possibility of weak or evocative marks acquiring secondary meaning.

The case can still be appealed to the Supreme Court of Justice based on Constitutional issues.

Rodrigo Borges Carneiro

The objective is to check the establishment of trade names and their complements to prevent health risks associated with confusion caused by similar names for different drugs. These criteria do not apply to generic or immunotherapeutic drugs, which are still required to use the common name of the active agent.

My colleague Mauro Ivan C. R. dos Santos has written an article discussing this important development which can be accessed here.

i.      identifying  points on the procedures of trademark analysis which need improvement;

ii.     checking permanently the level of satisfaction of users with the  Trademark system;

iii.     assuring  a continued education of all Trademark Office personnel  by identifying and proposing necessary training;

iv.    assuring the harmonization of decisions  with the  adoption of preventive measures to monitor the level of quality of the examination and a continuous improvement of the decisions;

v.      compiling and analyzing data relative to the compliance with the quality levels of the service.

Just check the graphic bellow for an idea of how “simple” the procedures at the Trademark Office are:

We hope that this plan will be enforced  leading at least to fast decisions and, if possible, to better decisions as well.

Rodrigo Borges Carneiro