The Kellis IP Weekly: Issue 11.3
BRAZIL
Patents
Modified Bill on AI Inventorship Moves Forward: As originally introduced, PL 303/2024 would have amended Brazil’s IP law to allow the patenting of inventions created solely by AI. Now, the rapporteur of the Chamber of Deputies’ Science, Technology, and Innovation Committee has recommended approval of a modified version of the bill. Deputy Leonardo Gadelha’s (PODE-PB) substitute language would require patent applicants to specify, at the time of filing, the level of assistance provided by AI in the development of the invention: no assistance, partial assistance, predominant assistance, or fully autonomous assistance. The term of protection afforded any resulting patent would vary based on the level of AI assistance utilized: a full 20 years for inventions developed with no or partial AI assistance, five years for inventions developed with predominant AI assistance, and three years for those developed autonomously by AI. For utility models, the same disclosure would be required, with utility models covering inventions generated predominantly by AI receiving three years of protection and those generated solely by AI receiving one year of protection. In all cases, the patent or utility model would be granted to the human author of the invention—although the bill does not specify who would be the human author of inventions generated entirely by AI, or how to distinguish between partial and predominant AI assistance. See https://www.jota.info/artigos/patentes-projeto-de-lei-sobre-invencoes-geradas-por-ia-avanca (Portuguese). #patents #AI #inventorship #legislation
Trademarks
Dentist Loses Bid to Enforce Mixed Trademark with Generic Name: A dentist who registered a mixed trademark with INPI that includes the word “otomodelação” (in English, otomodeling) asserted that trademark against a competitor for using the word in advertising content and on social media. Although successful in the first instance, the appellate court reversed, concluding that otomodeling describes a widely known aesthetic technique and that the defendant’s use of the term, which did not include the graphic and stylistic elements of the plaintiff’s trademark, did not constitute infringement. The court also reasoned that restricting use of the term would prevent others from promoting, performing, or teaching the technique. See https://www.migalhas.com.br/quentes/419994/dentista-nao-tem-direito-de-uso-exclusivo-de-marca-com-nome-generico (Portuguese). #trademarks #trademarklitigation #genericmarks
INPI to Begin Accepting Slogans for Trademark Registration: INPI’s new interpretation of item VII of Article 124 of the Industrial Property Law (9,279/1996) will be reflected in an update to the Trademark Manual that will be effective on November 27, allowing the registration of trademark slogans at the initial examination stage. Registration of slogans will be denied based on this item only if the exclusive purpose of the mark is for advertising and the mark lacks a distinctive function. See https://www.mondaq.com/brazil/trademark/1547738/inpi-expands-interpretation-and-will-begin-accepting-trademark-registrations-with-slogans (English). #trademarks #slogans #trademarkprocedure
INPI Publishes New Madrid Protocol Page: The page, developed in collaboration with WIPO, is intended to help the general public achieve a better understanding of the Madrid Protocol, and increase usage of the treaty by the Brazilian public. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-lanca-nova-pagina-sobre-o-sistema-de-madri (Portuguese). #IPeducation #IPoffice #trademarks
Court Overturns INPI Trademark Rejection of THE COFFEE: Reasoning that a mixed trademark combining figurative elements with descriptive terms is eligible for trademark protection, the Specialized Panel of the Regional Federal Court of the 2nd Region ruled in favor of Café Fratelli Franqueadora Ltda, d/b/a The Coffee, in the company’s challenge to INPI’s rejection of its trademark registration. The mark in question combines the words THE COFFEE in English with their Japanese translation, and the court concluded that this combination of a descriptive and a figurative element was sufficiently distinctive to be eligible for registration. Following the ruling, the applicant’s attorney noted that the mark has also been successfully registered elsewhere, including in the UK and Puerto Rico. See https://www.jota.info/justica/trf2-marca-the-coffee-pode-ser-registrada-por-combinar-termos-com-elementos-figurativos (Portuguese). #trademarks #IPoffice #administrativeaction
Public Consultation – 90-Day Comment Period on Acquired Distinctiveness Act and Guidelines: Until late January, INPI will be accepting comments regarding drafts of the normative act and guidelines that will provide for the consideration of acquired distinctiveness during trademark examination. Both drafts are available for review on INPI’s website. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-abre-consulta-publica-sobre-distintividade-adquirida-de-marcas(Portuguese). #trademarks #acquireddistinctiveness #publicconsultations
Copyright
BRF, Marketing Agencies Lose Copyright Battle over Jingle: A panel of judges ruled against food giant BRF and two marketing agencies who developed an ad campaign for BRF’s Sadia brand in a copyright infringement case. Composer Alexandre Leão sued the three entities for copyright infringement after they used a jingle he wrote for an ad campaign in 2017 celebrating Sadia’s 73rd anniversary. Leão originally wrote the jingle in 2004 for Sadia’s 60th anniversary, but at the time only licensed it to the company for one year. While the defendants accused Leão of embarking on a “true legal adventure, bordering on bad faith,” the judges did not agree, ordering the defendants to pay R$50,000 in damages—an amount that will increase once interest and costs are calculated. The defendants still have an opportunity to appeal. See https://www1.folha.uol.com.br/colunas/painelsa/2024/11/justica-condena-sadia-por-uso-indevido-de-jingle-em-campanha.shtml (Portuguese). #copyright #copyrightinfringement #copyrightlitigation
Enforcement
INPI Participates in Operation Fake Brand: On November 13, representatives of INPI joined the Civil Police in the anti-counterfeiting operation, during which six search warrants were executed at three commercial establishments, and more than 20,000 counterfeit items bearing 24 different trademarks were seized. The seized goods included clothes, perfumes, glasses, and watches. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-promove-a-protecao-de-igs-e-participa-de-operacao-de-combate-a-pirataria-em-sc (Portuguese). #counterfeits #IPenforcement #interagencycooperation
Other
Bill to Allow Free Multiplication, Exchange, and Commercialization of Seeds, Seedlings Advances: PL 2190/2023, authored by Deputy Tadeu Veneri, passed the Chamber of Deputies’ Committee on Agriculture, Livestock, Supply, and Rural Development in substitute form. As amended, the bill would permit the multiplication of seeds and seedlings of local, traditional, or creole cultivars for personal use (defined to include the multiplication of seeds or seedlings carried out by associations, organizations, and cooperatives of family farmers), as well as the exchange and commercialization of seeds and seedlings of local, traditional, or creole cultivars among family farmers and agrarian reform settlers. The revised bill would also prohibit certain restrictions, such as the restriction on the transportation and mailing of seeds and seedlings of local, traditional, or creole cultivars in distribution, supply, exchange, or commercialization operations authorized by the bill. See https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=2413688&filename=Parecer-CAPADR-2024-04-23 (Portuguese). #IPpolicy #seeds #agriculturalIP #legislation
G20 Final Declaration Includes Three Mentions of IP, Calls for More Cooperation on Copyright: The final declaration of the G20 Leaders Summit, which took place in Rio de Janeiro this week, mentions intellectual property three times, and copyright specifically twice. Paragraph 28, which addresses culture, calls for increased international cooperation and dialogue “in accordance with intellectual property rights frameworks” to improve fair remuneration and dignified working conditions, and also calls for “strengthened and effective global engagement in the debate on copyright and related rights in the digital environment and the impacts of artificial intelligence on copyright holders.” Paragraph 29, which discusses digital and emerging technologies, observes that transparency, explainability, algorithms, and content moderation “that respect intellectual property rights . . . can be fundamental to building healthy information ecosystems.” And paragraph 78, which focuses on AI and other emerging technologies, calls for the prioritization of “ensuring fair respect for intellectual property,” among other items, “[a]s AI and other technologies continue to evolve.” See https://www.gov.br/cultura/pt-br/assuntos/noticias/declaracao-final-do-g20-destaca-cultura-como-uma-das-pautas-prioritarias/G20RiodeJaneiroLeadersDeclarationPT3.pdf (Portuguese); https://www.consilium.europa.eu/media/l11hh2mb/g20-rio-de-janeiro-leaders-declaration-final.pdf (English). #IPpolicy #internationalcooperation #copyright
Non-IP Topics of Interest
Brazilian Team Competes for XPrize Rainforest: As the sole representative of the global South in the competition, the Brazilian team hopes to beat out three U.S. teams and two European teams in the race to develop technology that can completely map the biodiversity of a 100-hectare area within 24 hours—a task that would take humans at least six months to complete. Complicating matters further, only technology—drones, robots, etc.—is permitted within the studied area; no humans may enter. The winner of the competition will receive a US$5 million prize. See https://exame.com/esg/cientistas-brasileiros-concorrem-a-premio-de-us-5-milhoes-sobre-tecnologia-e-biodiversidade/ (Portuguese). #biodiversity
Supreme Court Minister Calls for Regulation of Social Media, End of “Impunity” for Hate Crimes: Minister Alexandre de Moraes argued that the only way to return to “democratic normality” is to regulate social media and put an end to impunity for deliberate actions that stoke hate. Minister de Moraes stated that there has never been an unregulated sector that affected so much of humanity, and pointed to evidence that platform algorithms have been deliberately used to direct economic and political interests. The comments were made just days before the STF will begin, on November 27, to decide six cases related to social media. The cases raise questions such as whether platforms can be held liable for criminal content published by third parties; whether platforms may be blocked by court order; and the viability of content moderation on the networks. A previous effort to regulate social media in the National Congress, the Fake News bill, failed in the face of strong opposition by Big Tech. See https://www.trf1.jus.br/sjgo/publicacoes-de-interesse-publico/moraes-diz-que-regulacao-das-redes-e-necessaria-para-volta-da-normalidade-democratica(Portuguese). #socialmedia #legislation
Federal Police Indict Bolsonaro: Brazil’s federal police indicted twelve individuals, including former president Jair Bolsonaro, on November 21. The charges against Mr. Bolsonaro include embezzlement, money laundering, and criminal association. The others indicted include Bolsonaro’s former Minister of Mines and Energy, former head of Receita Federal, two lawyers, and multiple aides and advisors. See https://www.estadao.com.br/politica/blog-do-fausto-macedo/pf-indicia-bolsonaro-no-inquerito-das-joias-sauditas/ (Portuguese).
PARAGUAY
DINAPI Enforcement Efforts Lead to Seizure of Video Game Controllers: An investigation by DINAPI’s Anti-Piracy and Counterfeiting Directorate led to the identification and seizure of over 18,000 units of controls and components for PlayStation videogames in 180 boxes depicting different models and colors. The product packaging included telltale signs of counterfeiting, which facilitated the obtaining of a court order to seize the goods. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=498 (Spanish). #counterfeits #IPenforcement
DINAPI Works with Interagency to Shut Down Piracy Operation: DINAPI’s General Directorate of Enforcement joined with the Public Prosecutor’s Office and the National Police in obtaining and then executing a search warrant for a luxury home in Alto Paraná. During the raid, authorities found dozens of decoders for well-known television channels as well as computer equipment, servers, and other items, all of which were seized, leading to the cessation of operations of the pirated content service operated from the home. The service was believed to have 20,000 users within Paraguay. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=497 (Spanish). #piracy #IPenforcement
UPCOMING IP EVENTS
*November 22, 2024: VIII Meeting on Development of Agroindustrial Processes. Online. https://uniube.br/eventos/edepa/ (Portuguese).
November 28-29, 2024: VI International Event on Geographical Indications and Collective Marks - Brazilian Origins. São Paulo. https://www.sympla.com.br/evento/origens-brasileiras-vi-evento-internacional-de-indicacoes-geograficas-e-marcas-coletivas/2679460?referrer=www.gov.br&referrer=agenciasebrae.com.br (Portuguese).
December 9, 2024: XV International Seminar on Patents, Innovation, and Development: The challenges of intellectual property and the New Brazilian Industry (NIB). Rio de Janeiro. https://abifina.org.br/eventos/xv-sipid-os-desafios-da-propriedade-intelectual-e-a-nova-industria-brasil-nib/ (Portuguese).
*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.
