The Kellis IP Weekly: Issue 10.3
BRAZIL
Patents
INPI Publishes September Patent Pendency Numbers: According to the agency, patent pendency in September, from filing to a technical examination decision, averaged 4.4 years (with specific technical area averages ranging from 3.3 years in the metallurgy and materials space to 5.7 years in the biopharmaceutical space), or 3.2 years counted from the filing of the request for examination (with specific technical area averages ranging from 2.1 years in the polymers and related products space to 4.6 years in the biopharmaceutical space). Both numbers fall within INPI’s respective current pendency goals of 4.5 years from filing and 3.5 years from request for examination. Actual examination time (i.e., from the start of technical examination to a decision) ranged from 52 days in the civil engineering space to 208 days in the biotechnology space. Additionally, INPI’s accelerated examination programs averaged a technical decision with 9.8 months from the filing of the accelerated examination petition, just over INPI’s goal of 9 months. While most pending applications at INPI were filed in 2015 or beyond, INPI still has pending applications from 2005 (1), 2008 (2), 2009 (1), 2010 (1 or 2), 2011 (8), 2012 (8), 2013 (15), and 2014 (27). See https://www.gov.br/inpi/pt-br/governanca/planejamento-estrategico/central-de-monitoramento (Portuguese); https://www.gov.br/inpi/pt-br/servicos/patentes/relatorios-gerenciais/relatorios/tempodecisao_trimestr_jul24_set24-1.pdf. #patents #patentpendency
INPI – Dialogue with Patent Users: The Directorate of Patents, Computer Programs and Topographies of Integrated Circuits of Brazil’s INPI will host a user meeting on Nov. 22, in Rio de Janeiro. The event is the second in a “Permanent Dialogue with Interested Parties” project, with the first event being a trademark users meeting in September 2024. Registration for the Nov. 22 meeting, for which a location has not yet been defined, will be possible through Nov. 8 by taking a survey regarding the patent system at the following link. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/usuarios-de-patentes-essa-e-a-oportunidade-de-expor-sua-opiniao (Portuguese). #IPpolicy #patents
Trademarks
INPI Publishes September Trademark Pendency Numbers: For September, INPI achieved an average time to decision of 17 months for trademark applications without any filed opposition, and 25 months for opposed applications—compared to goals of 18 months and 27 months, respectively. Technical examination of geographical indication applications averaged 17.3 months in September, also within INPI’s goal of 19 months. See https://www.gov.br/inpi/pt-br/governanca/planejamento-estrategico/central-de-monitoramento (Portuguese). #trademarks #trademarkpendency
Goiás Appellate Court Overrules Lower Court, Grants Preliminary Injunction: Judge Aureliano Albuquerque Amorim of the Tenth Civil Chamber of the Court of Justice of Goiás overturned the decision below in concluding that appellant Sombrear Indústria Metalúrgica satisfied both the probability of right and risk of harm prongs of the preliminary injunction analysis in its trademark infringement suit against Sombrear Coberturas, and granted the requested injunction. The plaintiff owns a mixed trademark registration for SOMBREAR, leading the judge to conclude that the defendant’s use of that mark would confuse the public and harm the plaintiff, especially given that both parties operate in the metal roofing industry. The court gave Sombrear Coberturas 30 days to remove the name “Sombrear” from its websites and other materials, and will face a R$5,000 fine per day for non-compliance. See https://www.rotajuridica.com.br/tj-de-goias-proibe-uso-da-marca-sombrear-por-concorrente-por-violacao-de-registro-no-inpi/ (Portuguese); https://www.migalhas.com.br/quentes/417175/tj-go-proibe-uso-da-marca-sombrear-por-violacao-de-registro (Portuguese). #trademarklitigation #preliminaryinjunctions
Amazonas Appellate Court Upholds Preliminary Injunction: During the Festival of Parintins in the state of Amazonas, two teams—one represented by “Boi Bumbá Garantido” (the “guaranteed” bull, standing for tradition and certainty) and the other represented by “Boi Bumbá Caprichoso” (the “capricious” bull, standing for creativity and imagination)—present competing versions of a legend through parades, music, costumes, and theater. When retailer Casas Bahia arrived in Manaus, Amazonas, the company launched an advertising campaign that used, among other traditional characters from the region and without authorization, the Boi Bumbá Garantido and the Boi Bumbá Caprichoso. Thereafter, the Boi Bumbá Garantido Folklore Association and the Boi Bumbá Caprichoso Cultural Association, owners of the trademark registrations for the two characters, sued for trademark infringement and obtained a preliminary injunction against Casas Bahia’s further use of the marks. Now, Judge Airton Gentil of the Third Civil Chamber of the Court of Justice of Manaus has upheld that decision, agreeing with the court below that an exclusive license granted by the associations in return for the licensee’s sponsorship of the Festival of Parintins constitutes evidence of risk of harm, and that the trademark registrations themselves establish that the plaintiffs own the marks. See https://www.portaldoholanda.com.br/amazonas/justica-mantem-decisao-que-proibe-casas-bahia-de-usar-marca-de-bumbas-em-propaganda (Portuguese); https://www.migalhas.com.br/quentes/416873/tj-am-mantem-casas-bahia-proibida-de-usar-marca-dos-bois-bumbas (Portuguese). # trademarklitigation #preliminaryinjunctions
INPI Secures Preliminary Injunction against Consulting Company: Brazil’s IP office successfully persuaded Judge Germano Alberton Júnior of the First Court of Criciúma in Santa Catarina to issue a preliminary injunction ordering a consulting company to remove INPI’s acronym and logo from its websites, social networks, and advertisements. The court based its decision on the Civil Code and the industrial property law, and further noted that the company’s use of INPI’s mark may constitute a crime under the Penal Code. However, the court declined to order a complete takedown of the company’s website, reasoning that removing INPI’s mark from the site would address any harm. See https://www.migalhas.com.br/quentes/417036/trf-4-assessoria-empresarial-deve-retirar-referencias-ao-inpi-de-site (Portuguese). # trademarklitigation #preliminaryinjunctions
Famous Mark Entitles Owner to Prospective, but Not Retrospective, Relief: Vogue Hotel Ltda. was founded in 1969 and has used the name “Vogue Hotel” for over 50 years—since well before plaintiff Condé Nast Brasil Holding Ltda.’s Vogue Magazine became widely known in Brazil, and also well before INPI’s 2019 decision recognizing VOGUE as a famous mark. In light of these facts, Judge Ricardo Negrão of the Second Reserved Chamber of Business Law of the Court of Justice of São Paulo ordered the defendant hotelier to cease use of the Vogue name going forward, but declined to award money damages for past use due to the good faith nature of that use. Notably, the famousness of the plaintiff’s VOGUE mark would not have precluded the defendant’s use of the Vogue name for accommodation services had the defendant registered that mark. See https://www.migalhas.com.br/quentes/417375/hotel-deve-deixar-de-usar-vogue-devido-a-marca-de-revista-de-moda (Portuguese); https://www.migalhas.com.br/arquivos/2024/10/A87D2B6E363566_doc_164087262.pdf (Portuguese). #famousmarks # trademarklitigation
INPI Schedules Meeting to Discuss Registration of Slogans as Trademarks: The meeting will be held at 2 pm on Oct. 30th in the INPI Auditorium. Interested parties must register beforehand at the following link. Proposed text for updates to the Trademark Manual, which will be discussed at the meeting, is also available at the following link. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-promove-encontro-com-usuarios-sobre-registro-de-slogans-como-marca (Portuguese). #trademarks #slogans #trademarkprocedure
Copyright
New Bill Modifies Copyright Law to Ensure that Authors Are Always Humans: Deputy Jonas Donizette (PSB-SP) introduced PL 2721/24, which amends Brazil’s copyright law to provide that regardless of the degree of autonomy of an AI system used to create a given work, the author of the work will always be a natural person. According to Deputy Donizette, “[t]he project recognizes the central role of human beings in the creative process, even in a world increasingly influenced by artificial intelligence systems.” See https://www.camara.leg.br/noticias/1097441-projeto-assegura-a-humanos-titularidade-de-obras-geradas-com-inteligencia-artificial/ (Portuguese). #copyright #copyrightreform #AI
Enforcement
Mercado Livre’s Anti-Counterfeiting Efforts Win Praise: Since being considered a villain by the IP enforcement community in 2019, Mercado Livre’s (Mercado Libre outside of Brazil) efforts to intensify its anti-counterfeiting efforts and become a safe and reliable environment for consumers have paid off. Today, the company’s machine learning and artificial intelligence algorithms remove approximately 9 suspect listings for every post removed due to an actual complaint submitted through the company’s Brand Protection Program, and approximately 25 suspect listings for every post removed under the more in-depth Mercado Libre Anti-Counterfeiting program. The company’s efforts also facilitate criminal referrals, as cooperation with brands allows Mercado Livre to send more detailed information to the public prosecutor’s office and thus speed up investigations. See https://www.cnnbrasil.com.br/economia/negocios/mercado-livre-passa-de-vilao-a-aliado-do-mp-no-combate-a-pirataria/ (Portuguese). #counterfeits #ecommerce
EUIPO Event Focuses on Combatting Counterfeit Goods Sales Online: The Oct. 3 event, held in São Paulo, brought together e-commerce platforms, public authorities, and business representatives to share best practices regarding intellectual property right protection. The Executive Secretary of Brazil’s National Counsel to Combat Piracy, Andrey Correia, discussed joint initiatives between CNCP and e-commerce platforms with the twin goals of protecting consumers and protecting the rights of intellectual property owners. See https://ipkey.eu/en/latin-america/news/event-sao-paulo-addresses-fight-against-sale-counterfeit-goods-internet (English). #ecommerce #internationalcooperation
Other
INPI Budget Continues to Fall Short: According to INPI’s recently published September numbers, the agency’s budget remains at R$58 million, where it has been since July, which leaves the agency short almost R$14.5 million to satisfy its 2024 financial obligations. Of that total, approximately R$600,000 relates to needed projects that were left out of the spending plan altogether due to budget shortfalls, while the rest relates to projects that are underway but not fully funded. See https://www.gov.br/inpi/pt-br/governanca/planejamento-estrategico/central-de-monitoramento (Portuguese). #IPoffice #budgetshortfall
INPI Fines Two Companies for Fraudulent Practices: On October 15th, INPI published a decision fining CIPE Assessoria e Consultoria – Ltda. in the amount of R$6,478.03, and another decision fining Santos Neves Registro de Marcas e Patentes Ltda. in the amount of R$6,000. CIPE was first fined by INPI on April 19, 2023, at which time INPI noted that it was considering filing a reparation action against the company (which had impersonated INPI in charging fees to a trademark applicant) and that it had 46 more complaints pending against the company. In January 2024, the Brazilian IP Agents Association (ABAPI) secured a preliminary injunction against the same company from the Tenth Civil Court of the District of Rio de Janeiro, prohibiting the company from sending undue charges to consumers for unsolicited or non-existent services. See https://revistas.inpi.gov.br/pdf/Comunicados2806.pdf (Portuguese); https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/empresas-que-cometem-golpes-contra-usuarios-do-inpi-estao-sujeitas-a-multa-de-ate-r-60-milhoes (Portuguese); https://abapi.org.br/abapi-ganha-liminar-contra-a-cobranca-indevida/ (Portuguese). #combattingfraud #IPoffice
Non-IP Topics of Interest
Brazil Launches FDI Platform, Released FDI Data. InvestVis, a new publicly accessible platform launched by the Ministry of Development, Industry, Commerce, and Services, tracks FDI flows around the world using data from a variety of sources, including the Central Bank of Brazil, the International Trade Center, and the United Nations Conference on Trade and Development. According to the platform, Brazil was in the top 5 countries receiving FDI in 2023, with most of that investment (67.1%) destined for the services sector. Of the total received FDI, the U.S. accounted for 25.8%. Brazil ranked 14th for investments abroad in 2023; 20.2% of its total $29.9 billion in overseas investments went to the U.S. See https://www.gov.br/mdic/pt-br/assuntos/noticias/2024/outubro/mdic-lanca-plataforma-inedita-de-consulta-de-investimentos-estrangeiros-diretos-em-todo-o-mundo (Portuguese).
ARGENTINA
INPI Joins Entrepreneurial Training for Teachers: At an event hosted by the National Institute of Technological Education in collaboration with the Secretariat of Small and Medium Enterprises, Entrepreneurs and Knowledge Economy and the non-governmental organization Junio Achievement Argentina, INPI President Carlos Gallo discussed the value of brands, industrial designs, and utility models. See https://www.argentina.gob.ar/noticias/jornada-de-capacitacion-para-mejorar-el-emprendedurismo-en-la-escuela-tecnica-0 (Spanish). #IPeducation #SMEs
PARAGUY
DINAPI Leads Reinvigorated Effort to Protect Cultural Heritage: As the coordinating entity of the Promotion Team of the National Policy for the Protection of Traditional Knowledge, DINAPI called a plenary session to restart discussions regarding a legislative proposal for protecting Paraguay’s intangible cultural heritage. The session was used to establish a framework for the team’s continued work, as well as for securing the participation of indigenous peoples and local communities. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=480 (Spanish). #traditionalknowledge
URUGUAY
DNPI – EUIPO Study Recommends Creation of a Professional Tech Transfer Training Program: A joint study commissioned by DNPI and the EUIPO’s AL-INVEST Green Project concluded that the role of “technology linkers” should be valued, that Uruguay currently lacks professionals working as technology managers, and that a training program in this area is needed. Uruguay’s government plans to continue analyzing the results of the study. See https://www.gub.uy/ministerio-industria-energia-mineria/comunicacion/noticias/gobierno-analiza-establecer-programa-capacitacion-para-vinculadores (English). #techtransfer #IPeducation
U.S. PUBLIC CONSULTATIONS AND NOTICES
Kellis IP is available to assist in drafting or reviewing written comments responsive to public consultations.
No public consultations or notice to report.
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).
* January 27-28, 2025: International Intellectual Property Lawyers Association Conference. Dubai. https://iipla.org/events/dubai/ (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.
