The Kellis IP Weekly: Issue 10.4
BRAZIL
Patents
Courts Prevent Retroactive Application of New Patent Appeal Guidelines: Decisions from the 9th, 12th, and 25th Federal Courts of Rio de Janeiro have all concluded that INPI’s new patent appeal guidelines, which went into force on April 2, cannot be applied retroactively. In the 9th Federal Court decision, Judge Ana Amélia Silveira Moreira Antoun Netto based her decision on the principles of non-retroactivity of law, legal certainty, and the protection of legitimate expectations. See https://diblasiparente.com.br/en/recent-federal-court-decisions-confirm-the-non-retroactivity-of-bptos-new-patent-guidelines/ (Portuguese). #patents #patentappeals
Grupo FarmaBrasil Publishes List of Medicine Patents Subject to Term Extension Litigation: Multiple news outlets have published stories about efforts to extend the term of drug patents through the courts in Brazil after generics industry association Grupo FarmaBrasil assembled and published a list of the patents—and their corresponding medicines—currently subject to such efforts. Among the medicines listed are Novo Nordisk’s Ozempic, Johnson & Johnson’s Stelara, Bristol-Myers Squibb and Pfizer’s Eliquis, and Celgene’s Revlimid. Of the 62 suits filed thus far, 19 have received a first instance decision denying the request for a term adjustment. See https://www.estadao.com.br/economia/negocios/medicamentos-extensao-patentes-veja-quais/ (Portuguese); https://mnegreiros.com/farmaceuticas-brigam-por-extensao-de-62-patentes-de-medicamentos-apos-decisao-do-stf/ (Portuguese); https://panoramafarmaceutico.com.br/patentes-da-industria-farmaceutica/ (Portuguese); https://www.estadao.com.br/economia/negocios/farmaceuticas-disputa-justica-patentes/. (Portuguese). #PTA #pharmaceuticals #patents
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
BRIDGESTONE Recognized as Famous Mark: The decision issued by INPI entitles Bridgestone to exclusive use of the mark across all market segments throughout Brazil for an initial, renewable period of 10 years. See https://veja.abril.com.br/coluna/radar-economico/bridgestone-e-reconhecida-como-marca-de-alto-renome-no-brasil (Portuguese). #trademarks #famousmarks
Media Conglomerate Globo Loses ANJO DE HAMBURGO (“Angel of Hamburg”) Mark: Globo’s plans to use the mark ANJO DE HAMBURG in a miniseries about Aracy Moebius de Carvalho Guimarães Rosa, a Brazilian consulate employee in Nazi Germany who helped Jews escape to Brazil and thus earned the nickname “Angel of Hamburg,” were upended in a ruling by 9th Federal Court of Rio de Janeiro Judge Ana Amélia Silveira Moreira Antoun Netto. Judge Netto ruled in favor of the estate of Ms. Rosa’s son, concluding that Globo did not have the right to register the mark with INPI in light of Article 124, XVI of Brazil’s Industrial Property Law, which protects famous pseudonyms and nicknames. Although INPI granted the registration in 2020, the agency joined the estate’s lawsuit seeking the mark’s cancellation. See https://www.migalhas.com.br/quentes/418040/anjo-de-hamburgo-globo-perde-direito-a-marca-que-nomearia-minisserie (Portuguese). #trademarks #trademarkcancellation
Court Determines that INPI Merits Exception to Standard 60-day Period for Administrative Action: The 2nd Specialized Panel of the Federal Regional Court of the 2nd Region affirmed a decision below in holding that in the absence of an explicit deadline in Brazil’s industrial property law for concluding administrative procedures, the standard 60-day deadline for a state agency to conclude an administrative process does not apply to IP-related cases, including the review of a trademark application. Accordingly, the court will no longer grant injunctions when INPI takes more than 60 days to issue an opinion on a pending trademark application. The court further reasoned that 60 days is an unreasonably short time period in which to expect agency action, given the large volume of pending applications and limited resources of INPI. To support its conclusion, the court pointed to the USPTO’s trademark pendency of 14 months, noting that USPTO has a budget 50 times higher than INPI’s. See https://www.conjur.com.br/2024-out-22/trf-2-nega-liminar-para-registro-de-marca-apos-60-dias-sem-parecer-do-inpi/ (Portuguese). #trademarks #trademarklitigation #trademarkprocedure
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
Prison Sentence for Convicted Copyright Infringer: Cassiano Jackson Souza da Silva was sentenced to two years in prison after being convicted of copyright infringement related to his website, G1 Novelas. Through the site, da Silva streamed, without authorization, soap operas, TV series, and reality shows from the streaming platform Globoplay. The site’s traffic reached as high as 146,000 or more hits per month, and was in operation from 2013 to 2020. Although copyright infringement claims would normally fall under state court jurisdiction, the case against da Silva was heard by the Federal Court of Paraná, given that the website was accessible throughout the world and therefore the crimes in question were considered transnational. See https://g1.globo.com/pr/parana/noticia/2024/10/17/site-pirata-novelas-condenacao-violacao-de-direito-autoral.ghtml (Portuguese). #copyright #copyrightinfringement
Manifesto Seeks Prohibition on Unauthorized AI-Generated Music: Eight collective management organizations in Brazil, including ECAD, signed a manifesto against the unauthorized use of artistic, literary, and scientific works for training AI systems, and further accused users of AI-generated sound effects of copyright infringement given the unauthorized use of copyrighted works to train those AI systems. The manifesto further advocated for the preservation of the copyright system in the context of AI to protect human creators and prevent AI from being treated as an author. See https://br.cointelegraph.com/news/copyright-associations-launch-manifesto-against-ai-powered-music-creation-without-authorization-in-brazil (Portuguese); https://www4.ecad.org.br/noticias/gestao-coletiva-da-musica-lanca-manifesto-em-defesa-dos-direitos-autorais-e-conexos-frente-ao-desenvolvimento-da-inteligencia-artificial/ (Portuguese). #AI #copyright
Enforcement
No enforcement-related developments to report.
Other
Counterfeit Ozempic Sends One to Hospital: After a hospitalized 46-year-old woman was found to have been using counterfeit Ozempic, Brazil’s health regulatory agency, ANVISA, confirmed three previous resolutions warning about the sale of the counterfeit drug. The batch of drugs used by the woman was known to be counterfeit, as evidenced by a different concentration than the original product and packaging in Spanish. ANVISA has banned the sale of all batches of Ozempic and other medicines sold on the website www.manual.com.br due to lack of health registration and unknown origin. See https://oglobo.globo.com/saude/noticia/2024/10/22/ozempic-falsificado-anvisa-diz-monitorar-caso-para-avaliar-necessidade-de-medidas-adicionais-e-orienta-como-identificar-remedios-suspeitos.ghtml (Portuguese). #counterfeitmedicines #counterfeits #publichealth
INPI Closed for Public Servant’s Day: The agency will be closed on October 28 in honor of the holiday. As electronic filings will still be available, no deadlines will be adjusted. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-nao-ira-funcionar-no-dia-28-de-outubro (Portuguese). #IPoffice
INPI Signs MOU with Singapore, Launches Business Guides: The MOU sets forth two main objectives: the sharing of information regarding the valuation of IP, and generating opportunities for internationalization of the INPI Academy. Additionally, INPI will publish Portuguese translations of fifteen IP Office of Singapore Business Guides on its website. The first, already published, addresses the topic “Protecting your competitive advantage.” See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/brasil-e-singapura-assinam-memorando-de-entendimento-em-pi-e-lancam-guias-de-negocios (Portuguese). #IPoffice #internationalcooperation
Non-IP Topics of Interest
Supreme Court to Consider Changes to Big Tech Liability on November 27: With the National Congress having failed to pass the Fake News bill or any alternative update to Brazil’s Internet Civil Rights Framework, the Supreme Court is moving forward with a long-threatened action to address needed changes through judicial decisions. The court will rule on three lawsuits that raise issues regarding the responsibility of digital platforms for content posted thereon, and could result in greater responsibility being placed on platforms to moderate user-created content. See https://www.cnnbrasil.com.br/politica/stf-julga-em-27-de-novembro-acoes-sobre-big-techs-e-marco-civil-da-internet/ (Portuguese). #fakenews #digitalplatforms #socialmedia #internetliability
EMS Makes Offer for Competitor Hypera: The cash and stock merger proposal byBrazilian pharmaceutical giant EMS would cement EMS’s status as the largest pharmaceutical conglomerate in Brazil, with both companies having revenue just shy of R$8 billion in 2023. EMS does not believe that the proposed merger would trigger any antitrust concerns, as Hypera focuses on over-the-counter drugs while EMS is Brazil’s largest producer of generics. See https://g1.globo.com/economia/negocios/noticia/2024/10/21/ems-faz-oferta-a-hypera-para-criar-maior-laboratorio-farmaceutico-do-brasil.ghtml(Portuguese); https://veja.abril.com.br/economia/fusao-entre-ems-e-hypera-pode-criar-maior-empresa-farmaceutica-do-brasil/(Portuguese). #pharmaceuticals #M&A
PARAGUAY
DINAPI Holds Third Meeting with Patent Agents: The latest encounter in the meeting series, which aims to optimize and strengthen the Paraguayan IP system, included a presentation from DINAPI National Director Claudia Franco Quevedo regarding the importance of collaboration between the office and patent agents, as well as a presentation from acting General Director of IP Pamela Cristaldo regarding DINAPI’s progress during the third quarter. Additionally, DINAPI’s IT Director discussed the Public Consultation System project, which will allow consultations regarding pending applications, and will eventually allow agents to access the projects they manage. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=486 (Spanish). #IPoffice #IT
PERU
IPKey Latin America Publishes Studies on Common Trademark System, Industrial Designs: The EUIPO-funded IPKey presented, on Oct. 22, the results of two studies if IP in the Andean Community. The first evaluated the feasibility of implementing a common trademark system for the Andean Community, modeled after the EU’s trademark system. Such a system would allow a single trademark registration valid across all Andean Community countries. The second study analyzed differing practices regarding the registration of industrial designs in Bolivia, Colombia, Ecuador, and Peru, despite a common regulatory framework. The study provides a roadmap for standardization of the criteria for industrial design examination and registration throughout the Andean Community. See https://ipkey.eu/en/latin-america/news/lima-was-venue-presentation-studies-carried-out-euipo-intellectual-property (English). #internationalcooperation #trademarks #industrialdesigns
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 17-19, 2025: XXIV ASPI Intellectual Property Congress. Sao Paulo, Brazil. https://congresso.aspi.org.br/ (Portuguese).
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.
