Trademark Enforcement and Prosecution in Brazil. IP Leaders in Spanish and Portuguese speaking countries. Clara Pombo, LLM

Transcription

1 Trademar Enforcement and Prosecution in Brazil Clara Pombo, LLM IP Leaders in Spanish and Portuguese speaing countries Líderes en Propiedad Industrial e Intelectual en países de habla Hispana y Portuguesa 2012 Clare, Modet & Cº

2 Agenda 1. Prosecution and Enforcement in Brazil: General Overview (including Courts) 2. Border Measures (including paralell imports) 3. Well-nown and highly-renowned mars 4. Ambush Mareting and strategy to protect the mars 2012 Clare, Modet & Cº

3 TM Applications Trademar applications , , , Clare, Modet & Cº

4 TM Applications Country of Origin Applications filed Country of Origin Applications filed Country of Origin Applications filed BR 94,263 BR 103,871 BR 101,970 US 5,290 US 6,755 US 7,787 DE 1,787 DE 2,209 DE 2,473 FR 1,285 CH 1,492 FR 1,910 CH 1,163 FR 1,474 CH 1,594 IT 780 IT 1,031 GB 1,324 JP 667 JP 910 JP 1,110 ES 587 GB 871 IT 1,081 GB 566 ES 719 ES 938 NL 546 CN 716 CN Clare, Modet & Cº

5 Latin America Venezuela (Withdrew in 2006) Central American Common Maret Ecuador Peru Colombia Southern Common Maret Brazil Bolivia Paraguay The Andean Community Uruguay Argentina 2012 Clare, Modet & Cº

6 Prosecution Registration Procedure Common Phases in Trademar Prosecution i. Filing of an application before the local P&TO ii. Examination of Formal requirements iii. Publication iv. Opposition v. Substantial Examination vi. Registration 2012 Clare, Modet & Cº

7 Prosecution Key points when filing in Brazil Granting Time: how long does it tae to obtain a trademar? 2-3 years from filing to registration, assuming no obstacles (oppositions, official actions, etc.) arise Clare, Modet & Cº

8 Prosecution Things to do (tips to expedite examination) To always (or whenever possible) conduct previous trademar searches To file applications electronically, by using the heading (goods/services) of the NICE Classification (whenever possible Things to avoid To file trademar applications of descriptive mars or without distinctive elements. To use ambiguous description of goods/services, avoiding legal requirements. Late filing of documents (Power of Attorney. Priority Document, etc.) Clare, Modet & Cº

9 Prosecution Event Time Limit from Publication Length (from the filing) Publication - 2 months Opposition (if any) 60 days 2-3 years Allowance or rejection - 2 years Appeal (if any) 60 days 2 years Payment of final fees 60 days - Grant of the registration - 2 months (from the final fees) Issuance of Certificate - 6 months (from the final fees) 2012 Clare, Modet & Cº

10 Prosecution International Classification of goods and Services (Nice Agreement-10 th Edition) One-class trademar applications system Priority under Paris Convention First-to-file system No need of information on use (intention to use, date of first use, etc.) Single examination Brazilian Law does not have any provisions on Letters of Consent or Coexistence Agreements ; its acceptation depends of the PTO s criteria 2012 Clare, Modet & Cº

11 Prosecution Registration Cancellation action for non-use 5 years Requirement of use after registration Partial cancellation A registration is vulnerable to a cancellation action upon request of a legitimate party if: i. the use of the mar in Brazil has not begun after 5 (five) years from the grant; or ii. iii. the use of the mar has been interrupted for more than 5 (five) consecutive years; or the mar has been used with significant differences than appearing in the Certificate of Registration for more than 5 (five) consecutive years. Proof of use: 5 (five) years bac, counted from the filing of the cancellation request. Declaration of use : Not accepted. Use must be effective Clare, Modet & Cº

12 Prosecution Well-nown and famous trademars Well nown mars Special protection on the mar s specific field of activity, whether or not it has been previously filed or registered in Brazil The owner of the mar must prove that it is well-nown in Brazil If the well-nown mar is not filed, its owner is required to file an application in Brazil and also to prove in the opposition procedure that the application has been filed 2012 Clare, Modet & Cº

13 Prosecution Well-nown and famous trademars Famous mars The mar is protected in all fields of activity The Brazilian PTO is required to reject ex officio future trademars based on the mar considered as "highlyrenowned The trademar must be registered in Brazil The declaration is applied for by filing an opposition or Administrative Nullity Proceedings against third party's application/registration by submitting evidence on the renown of the mar The declaration is valid for 5 (five) years and it can be renewed, following the above conditions 2012 Clare, Modet & Cº

14 Prosecution The main advantages to obtain the well-nown or highly-renowned declarations: Well-nown declaration Protection in its specific field of activity Protection against dilution and/or decrease of distinctiveness Increase of value of the mar Highly renowned declaration Protection in all fields of activity Increase of indemnification of damages and criminal penalties Protection against registration of domain names comprised of the mar declared as highly-renowned Significant increase of the value of the mar 2012 Clare, Modet & Cº

15 Enforcement Best practice: warning letter to infringer - non-compliance - filing a civil court action; Things to avoid: criminal prosecution - taes years to be concluded - results are not satisfactory; Infringement mechanism: civil court action with a request for a preliminary injunction; Damages: mostly ordered by the Judges based on the evidence; Preliminary measures: ex part preliminary injunction (prior to the Defendant s hearing) 2012 Clare, Modet & Cº

16 Enforcement Best Practice Auditing process of all trademar portfolios in Brazil, in order to have the control and duly maintenance of trademars Creation method, through the analysis and design of distinctive, non-descriptive, international and positive signs Exploitation process, through license or franchise agreements and duly mareting Trademar valuation Analysis of the possibility to obtain the Mexican declaration of well-nown and famous trademars, which increase the protection and valuation of Brazilian trademars 2012 Clare, Modet & Cº

17 Enforcement Brazilian law provides a wide range of precautionary measures: seizure of products, suspension of the infringement activities, suspension of business Registrant must prove that it is the holder of an Industrial Property Right or that there is at least a ris of violation to its rights The Judge may order the deposit of a bond by the Plaintiff (in case it is a foreign company) necessary to compensate possible damages that the precautionary measures may cause to the alleged infringer. Damages are awarded but generally low Penal proceedings not recommended. Settling out of court highly recommended 2012 Clare, Modet & Cº

18 Enforcement Damages The owner of the IP right is generally required to prove: that the damage indeed occurred; and the extension of such a damage. No "formula" to calculate damages: specific amount requested by the owner of the IP right; or determined by the Judge Amounts are usually low (determined on a case-by-case basis) 2012 Clare, Modet & Cº

19 Enforcement Key points when filing and enforcing in Brazil Things to avoid To await too long for taing measures (decrease chances to obtain injunctions) To file lawsuits on wrong venues/jurisdictions To file lawsuits without conducting searches on the maret and/or collecting evidence of the infringement The disuse of the mar for periods longer than 5 years 2012 Clare, Modet & Cº

20 Enforcement Recommended Strategy Timing Upon nowledge of the infringement Where to start State Courts - where the infringer is seated or where the infringement is occurring Procedures Civil, Criminal and Administrative (Customs) Cost savings method Settling with infringer prior/during court action 2012 Clare, Modet & Cº

21 Enforcement Civil Court Procedural in Brazil Unsuccessful Infringement s Knowledge Cease and Desist Letter Successful Filing of a Lawsuit at Civil State Court Written Undertaing (**) In general, a TM infringement lawsuit taes approximately 2-3 years before a first instance decision is rendered. As in most countries, first instance decisions are appealed and the time for an appeal to be decided depends on the State in which it is filed Granting of Preliminary Injunction Search and Seizure (*) Defendant s Answer Expert s Evidence Lower Court Decision (*) Decision can be appealed by the Defendant No appeals: the Lower Court becomes final Appeals before higher Courts Final decision 2012 Clare, Modet & Cº

22 Case Studies BR famous mar in Brazil (oil, gas stations, etc) belonging to Petrobras (Brazilian Oil Company) 13R gas station infringing the trademar and the trade dress 2012 Clare, Modet & Cº

23 Case Studies ROYAL famous mar in Brazil to identify baing powder REAL label infringing the trademar and the trade dress 2012 Clare, Modet & Cº

24 Customs Brazilian Customs Law provides border measures BUT no Customs Registration is allowed; Customs Officer usually notifies the owner of the mar or its attorney in Brazil informing on a suspicious cargo. Timeframe to file a formal complaint: 10 days counted from the notification, extendable for another 10-day term; In general, Customs do not inform relevant data of the importer - a writ of mandamus with the Civil Court in order to obtain the importer s information is required before being able to proceed with additional measures; The Brazilian Council to Combat Piracy ("CNPC") has created a National Trademar Database for Use by Law Enforcement Officers. The formal procedure has not yet been officially in execution; 2012 Clare, Modet & Cº

25 Parallel Imports Parallel Imports not allowed The owner of a mar shall not prevent free circulation of products placed on the internal maret, by the owner or with his consent Superior Court of Justice Decision allowing parallel imports the law grants protection to the trademars and not to the channels of distribution 2012 Clare, Modet & Cº

26 Frequent Questions Are Courts specialized in IP? Yes Is there any political bias in Court against foreign plaintiffs? No Are conciliation hearings mandatory? Yes. No mediations Is it advisable to send cease and desist letters? In general yes, but it depends on the case Are there formalities? Yes Certified and legalized foreign documents; Documents translated into Portuguese(sworn); Statute of Limitations: 3 years for recover of damages and 5 years for cessation of the infringement 2012 Clare, Modet & Cº

27 Best Practices To improve an IP portfolio management and enforcement In order to avoid Unfair competition and/or Piracy or reduce its negative impact, it is necessary to obtain the trademar registration in Brazil of all important mars of the multinational clients Performing trademar searches before filing the applications in order to now/avoid/prevent possible future hazards Creation method, through the analysis and design of distinctive, non-descriptive, international and positive signs Updating the protection of the trademars in Brazil, in order to have protected the mars that are being or are to be used in Brazil 2012 Clare, Modet & Cº

28 Best Practices To improve an IP portfolio management Recording the changes in the ownership, in order to the rights are allways enforceable Filing the POA granted to the new agent; otherwise all official resolutions are notified to the former one Use of the mar by registrant, or though license or franchise agreements (preferrably recorded with the Brazilian PTO) Always use the mar into the Brazilian maret, in order to discourage third parties to initiate a cancellation action on the grounds of non-use 2012 Clare, Modet & Cº

29 Best Practices To improve an IP portfolio management Auditing process of all trademar portfolios in Brazil, in order to have the control and duly maintenance of trademars Trademar valuation. Analysis of the possibility to obtain the declaration of highly-renowned trademars, which increases the protection and value of Brazilian trademars 2012 Clare, Modet & Cº

30 Major Events Ambush Mareting FIFA CONFEDERATIONS CUP 2013 FIFA WORLD CUP 2014 Guarantees provided by Brazilian government to FIFA: a specific Law covering several topics, including Intellectual Property Rights Benefits for FIFA s protection of its trademars and official signs in Brazil, including declaration of FIFA s official signs as highly renowned mars (protection granted to all products and services) Discussions to avoid Ambush Mareting : all the mareting inside the stadiums and within 2 ilometers around them must refer exclusively to trademars owned by the sponsors 2012 Clare, Modet & Cº

31 Major Events Ambush Mareting FIFA CONFEDERATIONS CUP 2013 FIFA WORLD CUP 2014 During the event, FIFA will have absolute powers to control (with the assistance of local police, if necessary) ambush mareting around the stadiums and also during the called fan-fests (outdoor places with access control) The control of such places as well as the current existing mareting of non-sponsors trademars are being discussed by FIFA and Brazilian authorities 2012 Clare, Modet & Cº

32 FIFA Partners FIFA World Cup Sponsors 2012 Clare, Modet & Cº

33 Argentina - Brazil - Chile - Colombia - Mexico - Peru - Portugal Spain - Uruguay - Venezuela 2012 Clare, Modet & Cº. All rights reserved. Clare, Modet & Co. refers to the networ of subsidiaries of Clare, Modet y Compañía S.L. each of which is a separate and independent 2012 legal Clare, entity Modet & Cº