The Kellis IP Weekly: Issue 10.1
BRAZIL
Patents
INPI Releases “My First Patent” Tools to Facilitate Application Formatting and Filing: The tools, which are intended to help national inventors and applicants prepare and file invention patent and utility model applications, include a list of different categories of protectable inventions (e.g., machine or equipment, object, composition, compound, kit, process, etc.) with corresponding instructions for conducting a prior art search and preparing a patent or utility model application; templates in Word for each section of the application, with instructions on what to include in each section; and a checklist for tracking relevant dates throughout the prosecution process. See https://www.gov.br/inpi/pt-br/assuntos/patentes/minha-primeira-patente (Portuguese); https://www.gov.br/inpi/pt-br/assuntos/patentes/minha-primeira-patente/que-ferramentas-sao-essas (Portuguese). #patents #patentprocedure #inclusiveIP
INPI Event to Focus on India’s Success with Generic Drugs: The October 10 event, sponsored by the INPI Academy as part of the “IP in Question” series, will address the theme “Factors facilitating India’s leading role in the pharmaceutical sector: public policies and intellectual property strategies.” Speakers include Carolina Salgado, a specialist in public health; Daniela Falcão, a specialist in Indian innovation and IP policy in the pharmaceutical sector; and Lorena Abbas, a specialist in industrial policy and innovation in the health sector. The event is open to the public and may be attended in-person or online. See https://monitormercantil.com.br/inpi-debate-protagonismo-indiano-no-setor-farmaceutico/ (Portuguese). #patents #pharmaceuticals #generics #IPpolicy
Trademarks
INPI Holds Trademark Users Meeting: In furtherance of INPI’s goal to become a model agency, the Institute held a meeting with trademark users featuring remarks from both INPI President Júlio César Moreira and Director of Trademarks, Industrial Designs, and GIs Schmuell Cantanhêde. Topics discussed at the event include: a 2025 project to proactively contact trademark applicants to provide guidance and answer questions; definition of regulations to determine whether a mark qualifies as famous; proposals to modify the industrial property law to accept oppositions only after the first examination, and to pay all fees in a single installment; the consideration of acquired distinctiveness during examination; and the acceptance of slogans as registerable trademarks (expected to begin this year). See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/para-aprimorar-sua-atuacao-inpi-promove-reuniao-com-usuarios-de-marcas (Portuguese). #trademarks #trademarkprocedure #famousmarks #slogans
STJ Requires INPI to Register Slogan: Although INPI has been working toward allowing the protection of slogans for some time, an August 2024 ruling by the STJ may speed up that process. After INPI denied trademark registration for the slogan “Harmony on the skin,” the STJ overturned that decision and ordered INPI to register the mark—albeit with a disclaimer that exclusivity does not apply to descriptive elements of the slogan. See https://mundodomarketing.com.br/stj-abre-precedente-para-uso-de-expressoes-publicitarias-em-marcas (Portuguese). #trademarks #slogans
Court Issues Preliminary Injunction Against Trademark Registration, Use: Judge Wanderley Sanan Dantas of the Second Specialized Panel of the Federal Regional Court (TRF) of the 2nd Region suspended the effects of the registration of the mark XANTIMAX and ordered its owner, EMIS Minas Distribuidora de Produtos Farmaceuticos Ltda., to cease use of the mark on penalty of a daily fine, after concluding that the mark is confusingly similar to União Química’s mark XANTINON. The latter mark was registered in 1943, in contrast to Xantimax’s recent registration, and both marks are used for pharmaceutical products intended for liver treatment. See https://www.migalhas.com.br/quentes/416465/trf-2-suspende-registro-da-marca-xantimax-por-semelhanca-com-xantinon (Portuguese). #trademarks #trademarklitigation
Appeals Court Affirms Decision Finding the Name “One More: A Podcast” Ineligible for Protection: After obtaining trademark protection for the name “One More: A Podcast,” the podcast’s creator sued a radio station that launched a podcast with the name “+1 Podcast.” The trial court ruled in the defendant’s favor and now the appellate court has affirmed, reasoning that the trademark lacks originality due to its use of a common expression, and therefore is entitled to only a very narrow scope of protection. Given distinctive differences between the visual appearances of the stylized podcast names, the appellate panel concluded that there would be no consumer confusion and that the marks can coexist. See https://www.tjdft.jus.br/institucional/imprensa/noticias/2024/setembro/podcast-com-nome-de-uso-comum-nao-tem-direito-a-exclusividade (Portuguese). #trademarks #trademarklitigation
New Developments in Fight between Apple and Gradiente over iPhone Mark: While tech giant Apple and Brazilian electric appliance manufacturer Gradiente await a ruling from the Supreme Court over whether either company enjoys exclusive rights to the name iPhone, the Second Specialized Panel of the TRF of the 2nd Region reached a decision in two related cases. In the first, Gradiente sought to invalidate Apple’s trademark registration for IPHONE, but the court ruled that the nominative and figurative elements of the brands are sufficiently distinct so as to not cause confusion, and rejected Gradiente’s request. In the second, Apple sought cancellation of Gradiente’s G GRADIENTE IPHONE registration for nonuse, but the court ordered the case to be reassigned to a different specialized intellectual property panel after concluding that the two cases should not be decided together. See https://oglobo.globo.com/blogs/ancelmo-gois/post/2024/10/marca-iphone-no-brasil-disputa-entre-gradiente-e-apple-tem-definicao-no-trf.ghtml (Portuguese). #trademarks #trademarklitigation
INPI – Dialogue with Trademark Users: Brazil’s INPI has launched a survey intended to help the agency better understand the necessities and expectations of users of the trademark system. The survey, which is only available in Portuguese, asks participants, for example, to rank items such as quality of examination, speed of examination, judicial certainty, access to information, etc. in order of importance; to list 5 themes about which the participant would like to receive more information or speak with INPI; etc. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-realiza-pesquisa-com-interessados-no-sistema-de-marcas (Portuguese). #IPpolicy #trademarks
Copyright
Bill Would Deny Copyright Protection to AI-Created Works: PL 3656/2024, authored by Leonardo Gadelha (Podemos/PB), would amend Brazil’s copyright law (Law 9,610/1998) to clarify that “originality,” a requirement for copyright protection, is only present in human work. As a result, the bill would bar works generated solely or primarily by AI from receiving copyright protection, and explicitly place such works within the public domain. According to Deputy Gadelha, however, copyright protection would be available for works created with the assistance of AI, as long as AI is not responsible for a majority of the work. See https://www.camara.leg.br/radio/programas/1098836-projeto-do-deputado-leonardo-gadelha-define-que-obras-produzidas-por-inteligencia-artificial-nao-terao-direito-autoral/ (Portuguese); https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=2478669&filename=PL%203656/2024 (Portuguese). #AI #copyright #IPpolicy
STJ Sides with Bar Owner in Copyright Dispute with Musician’s Heirs: Despite their recent success in obtaining a damages award against clothing brand Reserva for copyright infringement, the heirs of singer Tim Maia lost a separate court battle with the São Paulo bar “Do Leme ao Pontal.” In response to allegations that the name was copied from the lyrics of a famous Tim Maia song, and infringed a subsequently registered trademark, a São Paulo court ruled that the phrase has long been used as a reference to the coastal region of Rio de Janeiro, since well before Maia put the phrase to music. The STJ unanimously affirmed, concluding that neither copyright nor trademark rights can prevent the public’s use of that phrase. See https://www.conjur.com.br/2024-out-02/nomear-bar-como-do-leme-ao-pontal-nao-fere-direitos-de-tim-maia-diz-stj/ (Portuguese). #copyright #trademarks #copyrightlitigation #trademarklitigation
Trial Court Rules that Corinthians Soccer Club Can Continue Use of Team Anthem: After radio host Lauro D’Ávila composed the song “Champion of Champions” in 1952, the work became so popular that it replaced the Corinthians’ official song as the team anthem. Following D’Ávila’s death, however, his heirs licensed the inherited copyright rights to publishers Corisco and Musiclave, who eventually began to warn the team against unauthorized use of the song. In December 2022, the team filed suit against the publishers, seeking to clarify its rights to use the anthem. Now, Judge Marcella Restum has ruled in favor of the Corinthians, concluding that the team is entitled to continued use of the song due to a mutual concession of rights: the club allowed D’Ávila to use the team’s name and image in the musical work, and D’Ávila agreed to the club’s free use of the work. The publishers may still appeal. See https://www.meutimao.com.br/noticias-do-corinthians/488913/corinthians-vence-acao-contra-editoras-e-assegura-direito-sobre-o-hino-do-clube-saiba-tudo (Portuguese). #copyright #copyrightlitigation
Enforcement
Ten Thousand Liters of Counterfeit Wine Seized from Factory with Unsanitary Conditions: Eight hundred boxes of wine were seized from Campina Grande do Sul, Paraná (part of the Curitiba metropolitan area), in a joint operation between the Ministry of Agriculture and Livestock (MAPA), the Military Police, and the Civil Police of Paraná. The authorities found dyes, preservatives, flavorings, and sugar at the bottling site, all of which are prohibited in the production of wine and evidence adulteration of the product. Accumulated dirt was visible at the site, which smelled of feces. See https://www.gov.br/agricultura/pt-br/assuntos/noticias/mapa-apreende-10-mil-litros-de-vinho-falsificado-no-parana (Portuguese). #IPenforcement #counterfeits #wine
Receita Federal Seizes R$1 Million in Counterfeit Goods from São Paulo Neighborhood: The raid in the Liberdade neighborhood, carried out under the name Operation Tsuru, involved 30 officials from the agency and focused on combatting the trade of counterfeit foreign good that entered the country illegally. The goods in question included handbags, shoes, backpacks, and other accessories. See https://www.gov.br/receitafederal/pt-br/assuntos/noticias/2024/outubro/receita-federal-realiza-a-operacao-tsuru-no-bairro-da-liberdade-em-sao-paulo (Portuguese). #IPenforcement #counterfeits
Other
Brazil Ranks 50th in Global Innovation Index: WIPO’s 2024 Global Innovation Index lists Brazil one spot below its ranking last year, but the country still holds the top spot within Latin America and the Caribbean. Five years ago, Brazil was ranked at 66th, making it one of the top climbers since 2019. The country also performs above expectations given its level of development. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/brasil-esta-na-50a-posicao-do-indice-global-de-inovacao-2024 (Portuguese); https://www.wipo.int/web-publications/global-innovation-index-2024/en/gii-2024-results.html (English). #WIPO #GII #IPpolicy
Note: For an excellent deep-dive on the context behind Brazil’s GII ranking, see this article by Ana Carolina Cagnoni: https://www.jota.info/artigos/retrato-da-inovacao-no-brasil-o-que-revela-o-global-innovation-index-2024 (Portuguese).
INPI Provides Updates Regarding Industrial Design IT Systems: On October 1, INPI announced that it continues to work on correcting the absence of data and documents regarding industrial designs from the Buscaweb system, a task expected to be completed by the end of the year. The agency is also working to address similar problems specific to Hague Agreement applications within Buscaweb, an issue that INPI expects to resolve by the end of November. See https://revistas.inpi.gov.br/pdf/Comunicados2804.pdf (Portuguese). #industrialdesigns #IT
GIPI, ABPI Join Forces on Educational IP Video: The nearly 4-minute video, now available on ABPI’s YouTube channel, highlights the impact of IP on the Brazilian economy while also explaining what IP is and how it can help protect the rights of creators and inventors. See https://abpi.org.br/en/newsletter/abpi-and-gipi-launch-institutional-video/ (Portuguese). #IPeducation #publicawareness
Non-IP Topics of Interest
STF in the Process of Undoing What Remains of Lava Jato Investigation: The famous Brazilian anti-corruption investigation, Operation Lava Jato (Car Wash), led to 280 convictions, recovered $800 million, kicked off a wave of related investigations around the world, and implicated former presidents in Panama, Mexico, Ecuador, Peru, and—of course—Brazil. Lula, president of Brazil from 2003-2010, was convicted of corruption and money laundering, and sentenced to 12 years in prison. A few months shy of the two-year mark, however, Lula was released following a procedural ruling by the STF. That decision, which came amid revelations that the presiding judge in the Lava Jato case, Sérgio Moro, had colluded with prosecutors, kicked off a string of subsequent STF rulings in favor of those negatively affected by the Lavo Jato operation within Brazil. Beyond clearing Lula to make his third successful run for the presidency, the STF’s rulings have led to the release of convicted politicians and contractors, the nullifying of plea bargains and leniency agreements, and the cancellation of fines. See https://www.estadao.com.br/politica/eliane-cantanhede/stf-bombardeia-a-lava-jato-ate-nao-sobrar-um-tijolo-prisao-condenacao-e-multa/ (Portuguese); https://www.theguardian.com/world/2019/nov/08/lula-brazil-released-prison-supreme-court-ruling (English).
Scope of Contractual Forum Selection Clauses Limited in Brazil: In most instances in which the parties to a contract specify Brazilian courts as the appropriate forum in which to resolve their disputes, Law 14,879/2024 requires that the selected court be “related to the domicile or residence of one of the parties or the location of the obligation.” The law’s objective, per author Deputy Rafael Prudente (MDB/DF), is to protect parties doing business in specific jurisdictions in Brazil against those who seek to abuse jurisdiction clauses to gain unfair advantage. See https://www.mondaq.com/brazil/contracts-and-commercial-law/1523978/additional-limitations-on-forum-selection-clauses-in-contracts-subject-to-the-jurisdiction-of-the-brazilian-courts?email_access=on (English). #contracts #forumselection
ARGENTINA
Agribusiness Conference Highlights Need for Updated IP Laws: Agribusiness Conference 2024, sponsored by Argentina’s AmCham, brought together public and private sector representatives to discuss the need for a strong intellectual property framework that will enable Argentina to benefit from investment, innovation, and better products. While efforts to reform Argentina’s Seed Law have gone nowhere, the Secretary of Agriculture focused on work being done within existing frameworks to ensure respect for intellectual property. Additionally, the Ministry of Economy’s Secretary for Production Coordination referenced the Milei government’s (unsuccessful) efforts to join UPOV-91 earlier in the year, and acknowledged the link between being able to use cutting edge seeds on the one hand and competitiveness and productivity on the other. See https://www.lanacion.com.ar/economia/campo/propiedad-intelectual-empresarios-y-funcionarios-insistieron-en-impulsar-un-marco-regulatorio-para-nid01102024/ (Spanish). #seeds #UPOV
CHILE
Chile Ranked 51st in Global Innovation Index: The ranking is an improvement by one spot since 2023, and makes Chile the second highest ranked country in Latin America (after Brazil). Notably, the report ranks Chile 5th in the world for having a favorable business environment, with an average tariff rate of 0.3%. The country also ranks 18th in the world for domestic credit to the private sector, which in Chile is equivalent to 112.8% of GDP. On the other hand, Chile struggles in the areas of registration of industrial designs (ranked 111th), exports of ICT services (ranked 103rd), and in R&D spending, which in Chile is below global targets. See https://www.inapi.cl/sala-de-prensa/detalle-noticia/indice-global-de-innovacion-2024-chile-sube-al-puesto-51-y-se-destaca-en-america-latina (Spanish). #WIPO #GII #IPpolicy
PARAGUAY
DINAPI Promotes Copyright Education: Paraguay’s IP agency launched the Music Has Value 2.0 campaign with the goal of educating the public about copyright, the value of musical creations, and the rights that authors have over their creations. The agency is working to support national artists in creating and sharing their talent, as well as in receiving corresponding payment for the dissemination and exploitation of their works. Per DINAPI’s website, the campaign is “driven with the purpose of valuing the national creative and artistic process” and “promoting . . . the culture of respect for the work of artists, guaranteeing that they receive recognition and compensatory remuneration for the reproduction of their works.” See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=476 (Spanish). #copyright #remuneration
URUGUAY
Uruguay Set to Become 158th Contracting Party to the PCT: As previously reported, the National Directorate of Intellectual Property (DNPI) of Uruguay will deposit the country’s instrument of accession to the Patent Cooperation Treaty with WIPO on October 7. The treaty will enter into force within Uruguay on January 7, 2025. See https://www.clarkemodet.com/novedades-legislativas/uruguay-presentara-su-instrumento-de-adhesion-al-pct-el-proximo-7-de-octubre/ (Spanish). #patents #PCT
Uruguay Innovation Hub, DNPI Partner for Panel on Budapest Treaty Implementation: The panel, comprising DNPI Technical Director Santiago Martínez, Uruguay Innovation Hub Director Sabrina Sauksteliskis, and Head of Patents for DNPI Sandra Varela, discussed DNPI’s efforts to promote innovation by improving domestic regulation and achieving better international integration—including through adhesion to the PCT and the Budapest Treaty. The latter is expected to attract investments to Uruguay and facilitate international collaboration. Uruguay’s instrument of accession to the Budapest Treaty will be deposited at WIPO on October 7th, the same day as the instrument of accession for the PCT. See https://www.gub.uy/ministerio-industria-energia-mineria/comunicacion/noticias/incorporacion-uruguay-tratado-budapest-abrira-posibilidades-inversion-area (Spanish). #budapesttreaty #patents #investment
U.S. PUBLIC CONSULTATIONS AND NOTICES
Kellis IP is available to assist in drafting or reviewing written comments responsive to public consultations.
USPTO – Termination of AFCP 2.0 Program: The USPTO published a notice on October 1, 2024 indicating that in due to the significant costs of administering the “After Final Consideration Pilot Program 2.0,” and the public’s negative reaction to a prior USPTO proposal to require the payment of a fee to participate in the program, the USPTO will sunset that program this year. The final date to request consideration under AFCP 2.0 will be December 14, 2024. See https://www.federalregister.gov/documents/2024/10/01/2024-22481/extension-and-termination-of-the-after-final-consideration-pilot-program-20 (English). #patentprocedure #patents
USPTO – Final Director Review Rule: The USPTO has finalized the procedure for requesting Director Review of PTAB decisions, as published in a final rule that will take effect on October 31, 2024. Under the rule, parties to a PTAB proceeding may request Director Review of any (1) decision on institution; (2) final decision); (3) decision granting rehearing of a decision on institution or a final decision; or (4) other decision concluding an AIA proceeding. Additionally, the Director has the right to initiate review of any such decision sua sponte. See https://www.federalregister.gov/documents/2024/10/01/2024-22194/rules-governing-director-review-of-patent-trial-and-appeal-board-decisions (English). #PTAB #patentprocedure #patents
USTR - Request for Comments on Significant Foreign Trade Barriers for the 2025 National Trade Estimate Report: USTR prepares the NTE Report annually, addressing significant foreign barriers to U.S. exports of goods and services, including intellectual property. IP is one of 13 specified categories in which USTR seeks comments, and within South America Brazil, Argentina, Bolivia, Chile, Ecuador, Paraguay, Peru, and Uruguay are all identified as countries of interest for comments. Written comments due October 17, 2024. See https://www.govinfo.gov/content/pkg/FR-2024-09-03/pdf/2024-19694.pdf (English). #IPpolicy #tradebarriers #publicconsultations
USPTO - Request for Comments on 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence: USPTO published the updated examination guidance on July 17, 2024, and recently extended the comment period. Written comments now due October 16, 2024. See https://www.federalregister.gov/documents/2024/09/17/2024-21085/2024-guidance-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence (English). #IPpolicy #patentexamination #patents #AI #patenteligibility
USTR - Request for Comments on 2024 Review of Notorious Markets for Counterfeiting and Piracy: The United States Trade Representative has published a request for comments identifying online and physical markets to be considered for inclusion in the 2024 Review of Notorious Markets for Counterfeiting and Piracy (Notorious Markets List). The 2024 list’s “issue focus” will be online pharmacies and counterfeit medicine. The written comments deadline has passed. Rebuttal comments due October 16, 2024. See https://www.govinfo.gov/content/pkg/FR-2024-08-16/pdf/2024-18337.pdf (English). #IPenforcement #publicconsultations #counterfeits #piracy
UPCOMING IP EVENTS
^October 24-26, 2024: AIPLA 2024 Annual Meeting. National Harbor, Maryland. https://www.aipla.org/home/meetings-education/2024-annual-meeting (English).
*November 29, 2024: VIII Meeting on Development of Agroindustrial Processes. Online. Sponsored by the University of Uberaba (Uniube).
*January 22-24, 2025: World Intellectual Property Forum. Dubai. https://www.worldipforum.com/ (English).
March 20-23, 2025: XX ABAPISUL Regional Meeting. Foz do Iguaçu, Brazil. https://abapi2.org.br/ (Portuguese).
* Indicates events at which I will be speaking.
^ Indicates events I will be attending.
QUESTIONS OR CONCERNS
Kellis IP is available to provide consulting services to help you understand and respond to any of the developments highlighted in this newsletter, or any other IP issues in Brazil and the surrounding region.
