Brazil. Brazilian Trademark Oppositions/Cancellations Bad Faith Filings and Issues. Luiz Edgard Montaury Pimenta

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1 Brazil Brazilian Trademark Oppositions/Cancellations Bad Faith Filings and Issues Luiz Edgard Montaury Pimenta IPO Annual Meeting 2013

What constitutes bad faith in relation to Trademarks in Brazil Section 124, XXIII of Brazilian IP Law states that: shall not be registered as trademarks a sign that imitates or reproduces, either

2 What constitutes bad faith in relation to Trademarks in Brazil Section 124, XXIII of Brazilian IP Law states that: shall not be registered as trademarks a sign that imitates or reproduces, either wholly or in part, a trademark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment if the markis intended to identify identical, similar or related products or services liable to cause confusion or association with the other person s mark.

3 Consequences of bad faith Trademark filings and registrations: Subject of Opposition or Administrative Cancellation Proceedings; Subject of Trademark Infringement lawsuits (Damages and Preliminary Injunctions); Subject of Judicial Cancellation Action with no Statue Limitations to file the lawsuit; As a result, could lose ability to register/own the trademark in question.

4 Possible scenarios are described in Section 124, XXIII of Brazilian IP Law: Identical mark / identical products or services; Identical mark / services or products liable to cause consumer confusion; Similar mark / identical products or services; Similar mark / services or products liable to cause consumer confusion.

5 Besides the general provision of Section 124, XXIII, Brazilian IP Law protects well-known and Highly Reputed Trademarks without prior registration/application in Brazil. The undisputable fame of a trademark, though, may not be enough to support bad faith arguments that shall be based on evidence that the Trademark Applicant/Owner could NOT FAIL to have knowledge of the legitimate Trademark.

6 Bad faith evidences cannot be listed, neither is it possible to indicate the required elements to attest bad faith in Brazil, since Brazilian legal system considers all proper evidence: Documentary ( s, letters, contracts, eg.) Testimonial, Expert evidence; eg.

7 Some judicial cases in Brazil: (i) TELEFLEX MEDICAL - In Re Teleflex Inc. vs. Globomedical Produtos and the BPTO Appeal nr Registration nr cancelled. Decision published on May, (ii) COACH - Coach Inc. vs. BPTO and Fasolo Artefatos de Couto Ltda. Appeal nr Registrations nrs and suspended. Decision published on Feb. 27, (iii) SHARP - In Re Sharp Corp vs. BPTO and Sharp S/A Equipamentos Eletrônicos. Appeal nr Registration nr awarded by the Plaintiff. Decision published on August 2nd, (iv) TROUSSEAUD YATCHING, In Re Trousseaud Ind. e Com. Ltda. vs. BPTO and Romaria Empreendimentos Ltda. Appeal nr Registration nr cancelled. Decision published on Dec. 06, (v) OAKLEY - in Re Oakley Inc. vs BPTO and Mecanótica; Registration cancelled by Federal Court of Appeals decision on 2004.

8 Most common reasons behind bad faith Trademark Applicants/Owners Business Relations with trademark owner in better conditions (Distribution Agreement, Partnership) Local competitors Foreign competitors Blackmailing

9 Although the Brazilian Trademark Office, as a Federal Agency, could reverse its own decisions whenever attested any nullity/invalidity on its acts, experience has shown that recognition of bad faith is very limited at the Administrative level. Unless there is an indisputable evidence about the knowledge of the prior mark (registered or not in Brazil), the bad faith analysis, in most cases, will need to be submitted to a judicial level, on the grounds of a Federal lawsuit proceeding. In such case no Statue of Limitation is applicable, so the Lawsuit can be filed at any time (Paris Convention, article 6bis).

10 Strategies for successful Oppositions/Cancellation Actions Collection of Evidence; Cease and Desist Letters with confirmation of receipt; Filings of all suitable administrative proceedings (not a condition); Structured legal brief.

11 Most of Brazilian bad faith filings are a consequence of business or distribution contractual terminations, as the once authorized licensed company takes advantage of the original trademark owner s lack of protection in Brazil.

12 Any license/distribution agreement must have a provision stating that licensee or local distributor recognizes that licensor or supplier is the legitimate owner of the trademark rights related to the licensed mark, and that it is agreed that licensee/local distributor will not file the licensed mark for registration in Brazil in its own name, and not file nonuse cancellation actions against the corresponding registration(s).

13 Thank you!!

THE PEOPLE S REPUBLIC OF CHINA TRADEMARK LAW

THE PEOPLE S REPUBLIC OF CHINA TRADEMARK LAW Effective from May 1, 2014 CHINA TRADEMARK LAW Effective from May 1 st, 2014 Adopted at the 24th Session of the Standing Committee of the Fifth National People