The Kellis IP Weekly: Issue 9.4
BRAZIL
Patents
New Regulations for Patent Applications Take Effect in October: The two ordinances published in INPI’s Official Gazette earlier this month will soon take effect, with Ordinance No. 14/2024 coming into force on Oct. 3 and Ordinance No. 20/2024 on Oct. 17. The first ordinance focuses more on standards for the form and content of patent applications, while the second addresses transfers of ownership and changes in company names, in addition to eliminating the requirement for a sworn translation of foreign documents. Going forward, a simple translation of such documents will be sufficient. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/novas-portarias-sobre-procedimentos-de-patentes-entram-em-vigor-em-outubro (Portuguese). #patents #patentprocedure #IPoffice
INPI Again Requests Re-filing of Certain Patent Documents: Two weeks after publishing a similar notice, INPI published in the September 24 Official Gazette a list of patent applications in which certain documents are missing, and notified applicants that they have thirty days to re-file the missing documents together with a petition and a code that will make the filing free. Types of documents missing include pages containing claims, pages containing drawings, entire petitions, etc. See https://revistas.inpi.gov.br/pdf/Comunicados2803.pdf (Portuguese). #patents #IPoffice
Trademarks
Former Band Members Win Right to Continued Use of Charlie Brown Jr. Name: After lead singer Chorão, a founding member of the band Charlie Brown Jr., died of a drug overdose in 2013, his son Alexandre Ferreira inherited the Charle Brown Jr. trademark. More recently, Mr. Ferreira sued former band members Thiago Castanho and Marco Brito to prevent them from using the band’s name in shows and performances. The 2nd Business and Arbitration Court of São Paulo ruled against Mr. Ferreira, however, accepting both of the defendants’ arguments: first, that Mr. Ferreira had contractually granted them the right to use the name Charlie Brown Jr. together with their own names, and never in isolation, a restriction with which the defendants had complied; and second, that as band members who had helped develop the Charlie Brown Jr. brand, the defendants’ personality rights outweighed Mr. Ferreira’s trademark rights. The court relied on a former STJ decision involving a similar dispute over former Urban Legend band members’ right to use the name of that band, the trademark for which was owned by a separate company. In that case, the STJ held that the band name was part of the musicians’ respective identities, and that to prevent their use of the name would constitute an abuse of rights. Notably, Peanuts Worldwide filed a request to cancel the Charlie Brown Jr. trademark in February 2023. See https://www.em.com.br/colunistas/direito-e-inovacao/2024/09/6950946-charlie-brown-jr-e-as-disputas-legais-envolvendo-uso-de-marca.html (Portuguese); https://www.bnews.com.br/noticias/entretenimento/ex-integrantes-do-charlie-brown-jr-acusam-filho-de-chorao-de-fraudar-assinatura.html (Portuguese). #trademarks #trademarklitigation #personalityrights
Artists Must Pay Damages to Santander Bank for Unauthorized Use of Marks: The 1st Business Law Chamber of the São Paulo Court of Justice ordered MCs Kapela and Keké to pay Santander Bank R$20,000 in moral damages and a to-be-determined amount in material damages for infringing the bank’s trademark rights. The court also ordered seven of the artists’ songs to be removed from all digital platforms. Judge Alexandre Lazzarini held that the singers “exceeded the limits of artistic freedom” when they used “the name, related terms and symbols linked to the institution’s brand in a derogatory and repeated manner,” including in content that encouraged criminal activity and with sexual connotations. See https://www.migalhas.com.br/quentes/415997/mcs-kapela-e-keke-indenizarao-banco-por-uso-de-marca-em-musica-e-clipe (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. In addition to the written survey (which does not have a published closing date), INPI will hold a meeting with trademark users in Rio de Janeiro on September 25th. 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
New AI Bill Text Expected: Since the most recent version of PL 2338/23 was released on July 4, 2024, legislators have submitted an additional 15 proposed amendments to that bill and received input and feedback from dozens of entities. Rapporteur Eduardo Gomes is expected to soon release an updated version of the text, which will reveal whether and to what extent the various lobbies for and against key provisions of the bill—including provisions regarding copyright protection—have been successful. On September 11, the Senate plenary approved a fourth request from the Temporary Internal Committee on Artificial Intelligence in Brazil for a 60-day extension of the committee’s mandate, giving the body until mid-November to deliver an AI bill to the full Senate. See https://www.correiobraziliense.com.br/direito-e-justica/2024/09/6950907-visao-de-direito-o-debate-da-regulacao-da-inteligencia-artificial-no-senado-federal.html (Portuguese); https://www25.senado.leg.br/web/atividade/materias/-/materia/157233 (Portuguese); https://www12.senado.leg.br/noticias/materias/2024/09/11/comissao-sobre-inteligencia-artificial-ganha-60-dias-para-concluir-trabalhos (Portuguese). #AI #IPpolicy #legislation #copyright
Royalty Distributions Surpass R$1 Billion, With 4 Months Remaining in 2024: The Central Office of Collections and Distribution (ECAD) announced that it surpassed the R$1 billion mark in August, making 2024 the fourth year to reach that milestone (previous distributions of R$1 billion or more were made in 2017, 2022, and 2023). Total distributions for 2024 are on track to reach R$1.5 billion. Distributions to the radio, broadcast television, and video streaming segments accounted for 47% of the total distributions to date. See https://oglobo.globo.com/blogs/capital/post/2024/09/mercado-musical-brasileiro-bate-r-1-bilhao-em-direitos-autorais-distribuidos-no-ano.ghtml (Portuguese). #copyright #royalties #CMOs
Enforcement
Looking Back: Operation 404’s Success: The numbers Operation 404 has racked up over the course of its seven separate phases are impressive: 2040 websites blocked, 1,377 illicit streaming apps disabled, and 55 people arrested. In addition to blocking illegal content, the authorities behind Operation 404 also de-index pirated content from search engines and execute search and seizure warrants to confiscate equipment used to commit the crimes in question. Perhaps most importantly, Operation 404 has demonstrated the benefits of cross-agency, public/private, and international coordination: in each phase, industry associations, law enforcement agencies throughout Brazil, and enforcement authorities from partner countries work together to identify targets, gather evidence, obtain necessary warrants, and finally execute the warrants and take appropriate steps to remove pirated content from the stream of commerce. See https://www.msnoticias.com.br/policia/operacao-404-ja-derrubou-mais-de-2-mil-sites-e-prendeu-55-pessoas/148812/ (Portuguese). #IPenforcement #piracy #copyright #Operation404
Receita Federal Raids Counterfeit Toy Market, Luxury Goods Store: Operation “This Is Not a Toy” involved the search for and seizure of counterfeit toys at a market in São Paulo known for selling imported counterfeit toys. The September 24 operation involved around 3 tons of toys valued at R$3 million, and was carried out in conjunction with the Metropolitan Civil Guard of São Paulo. See https://www.gov.br/receitafederal/pt-br/assuntos/noticias/2024/setembro/receita-federal-em-sao-paulo-realiza-a-operacao-201cisso-nao-e-brinquedo201d (Portuguese). Separately, Receita Federal agents in Porto Alegre seized bags, accessories, and branded clothing from a luxury goods store on suspicion of the goods being counterfeit. The operation resulted from complaints from rightsholders that the store’s products, sold for as much as R$20,000, were not original. See https://www.gov.br/receitafederal/pt-br/assuntos/noticias/2024/setembro/operacao-da-receita-federal-apreende-artigos-de-luxo-em-loja-de-bairro-nobre-de-porto-alegre (Portuguese). #IPenforcement #counterfeits
Note that the article reporting on the luxury goods operation includes information about how rightsholders can contact Brazilian authorities to collaborate on anti-counterfeiting efforts.
ANCINE Proposed Pilot Site-Blocking Project: In a September 17th meeting with the Ministry of Justice, ANCINE proposed a pilot project under which Internet sites providing access to pirated content could be blocked without a court order. The project envisions that the Federal Police and the Ministry of Justice would remain involved in efforts to combat piracy, but that site-blocking could occur without their specific involvement. See https://www.metropoles.com/colunas/guilherme-amado/ancine-estuda-derrubar-sites-piratas-sem-decisao-judicial (Portuguese). #IPenforcement #piracy #siteblocking
Other
Lula Proposes Signing EU-Mercosur Agreement at G20 Summit: After meeting with EU Commission President Ursula von der Leyen and other European leaders at the UN this week, President Lula expressed unprecedented optimism for the EU-Mercosur agreement. The leader told reporters that Brazil is ready to sign the agreement and that he had suggested a signing ceremony during the November G20 Summit in Rio. Perhaps signaling that Brazil’s patience for concluding the agreement would not last forever, he further noted that “[w]e have many other agreements to make,” citing a need to focus on strategic agreements with India, China, and within Latin America. See https://www.gov.br/planalto/pt-br/acompanhe-o-planalto/noticias/2024/09/201cnunca-estive-tao-otimista-com-o-acordo-uniao-europeia-mercosul201d-diz-lula-apos-agenda-em-nova-york (Portuguese). #EUMercosurAgreement #GIs
INPI President, GIPI General Coordinator Speak at ANPEI IP Committee Meeting: INPI President Júlio César Moreira spoke at the National Association of Research and Development of Innovative Companies’ IP Committee meeting on September 19, highlighting INPI’s continued efforts to secure some measure of financial autonomy, the recent onboarding and ongoing training of newly hired examiners, and the huge number of trademark filings in Brazil. He noted that INPI’s expected budget for 2025 is higher than this year but still insufficient to meet expected financial obligations; that without an improvement in employee salaries and benefits, up to 25% of INPI’s new employees could leave the agency within 4 years; and that Brazil is the 6th largest recipient of trademark filings in the world—which accentuates the challenges of chronic understaffing. GIPI General Coordinator Miguel Carvalho also spoke, focusing on GIPI’s work to move forward the National IP Strategy. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-participa-de-evento-sobre-estrategias-inovadoras-e-melhores-praticas-de-pi (Portuguese). #IPoffice #financialautonomy #trademarks
Brazil Assumes Vice-Presidency of WIPO Committee on Standards: A September election resulted in Brazil’s placement in the leadership of the Committee on Standards, which discusses and approves standards and guidelines that regulate the exchange of data and information between IP offices around the world. The spot, which will be filled by INPI’s general coordinator of Studies, Projects, and Dissemination of Technological Information Alexandre Gomes Ciancio, will allow Brazil to focus on the use of technology to improve the efficiency and transparency of IP systems. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/brasil-e-eleito-para-a-vice-presidencia-do-comite-de-padroes-da-ompi (Portuguese). #IPoffice #IPgovernance #WIPO
INTA Supports Restructuring of INPI Career Plan: The International Trademark Association threw its weight behind INPI’s effort to improve the salaries and benefits of its employees. In a letter dated September 3, the organization encouraged the Ministry of Management and Innovation in Public Services and the Ministry of Development, Industry, Commerce, and Services to move forward with previously proposed revisions to INPI’s career plan, noting that the changes are “essential for the Institute to meet the growing demands of users of the Brazilian Intellectual Property system.” See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inta-envia-carta-ao-mdic-e-ao-mgi-apoiando-carreira-do-instituto (Portuguese). #IPoffice #IPcareers
INPI Identifies Holiday Scheduling Adjustments: The office will close at 2:00 pm on December 24 and December 31. As December 31 is a bank holiday (Dec. 24 is not), all deadlines falling on Dec. 31 will be extended until January 2, 2025. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/expediente-do-inpi-nos-dias-24-e-31-12 (Portuguese). #IPoffice #patentprocedure #trademarkprocedure
Non-IP Topics of Interest
Terms of Use Violations Justify Takedowns by Digital Platforms, per STJ: A late August decision by the Superior Court of Justice concluded that Brazil’s Internet Bill of Rights does not prevent digital platforms from enforcing their own terms of use, provided those terms of use comply with Brazilian law. The case in question was brought by a physician who posted a YouTube video advocating the use of hydroxychloroquine to treat Covid-19. After Google removed the video and limited his account privileges, the doctor sued sued, alleging a violation of Article 19 of Law No. 12, 965. The court found that by agreeing to the terms of use when joining the platform, the plaintiff had voluntarily agreed to limits on his freedom of expression, such that the takedown did not violate his constitutional right of speech. See https://www.lexology.com/library/detail.aspx?g=60656d3a-7a1f-44ab-8c5b-61fcbe0da5fb (English). #digitalplatforms #takedowns
X Backs Down, Appoints Legal Representative in Brazil: Before the company’s operations in Brazil are again permitted, however, the company still needs to do that which led Elon Musk to lock horns with the STF: remove the profiles of individuals identified by the STF as spreading fake news and hate speech. The company also still needs to pay the fines resulting from X switching to new IP addresses and therefore rendering Brazil’s efforts to block X ineffective. The company hopes to resume Brazilian operations as early as next week. See https://noticias.uol.com.br/colunas/carolina-brigido/2024/09/20/x-nao-voltara-ao-ar-so-com-representante-no-brasil-entenda-as-exigencias.htm(Portuguese); https://www.reuters.com/technology/social-media-platform-x-set-request-restoration-service-brazil-sources-say-2024-09-25/ (English).
ARGENTINA
Alianza Scores Big Win Against Magis TV: In a lawsuit brought by Alianza seeking the blocking of 70 domains related to pirated content purveyor Magis TV, the court has ordered Google to use “necessary technical means” to “immediately uninstall” Magis TV-related apps from all Android devices in Argentina—even though the apps are not available on or installed through Google Play, the company’s app store. See https://www.tecmundo.com.br/software/289977-justica-argentina-ordena-google-apague-software-iptv-celulares-android.htm (Portuguese). #IPenforcement #piracy
COLOMBIA
Coca-Cola Trademark Challenged: Coca Nasa, a company run by indigenous peoples in Colombia that produces coca products, has asked the Superintendency of Industry and Commerce to cancel the Coca Cola trademark in Colombia, on the basis that the mark violates the rights of indigenous communities, who view the coca leaf as sacred. The request follows Coca-Cola’s demand that Coca Nasa cease sales of a canned beverage under the name “Coca Pola.” Juan David Piñacue, a spokesman for the Colombian company, explained that the lawsuit “is more an act of dignity, that beyond the result of decision of the Superintendency, we are talking about the first time that a people in a free, autonomous and sovereign manner, dares to point out and sue this company, which has usurped the name and uses of a plant with the complicit silence of the world.” See https://www.infobae.com/colombia/2024/09/18/vocero-de-coca-nasa-explico-por-que-demandaron-a-coca-cola-un-acto-de-dignidad/ (Spanish); https://digital.estadao.com.br/o-estado-de-s-paulo/20240921/281797109392176/textview (Portuguese); https://www.washingtonpost.com/world/2024/09/15/coca-nasa-cola-columbia-indigenous/ (English). #trademarks #IPpolicy #indigenousrights
PARAGUAY
Asunción Convergente Event Focuses on Anti-Piracy Efforts and Judicial Training: DINAPI’s acting enforcement director, Diego Pérez Bernal, spoke at the event about DINAPI’s efforts to combat piracy through training and public awareness programs, and also highlighted DINAPI’s participation, for the first time, in the recently conducted 7th phase of Brazil-led Operation 404. Also at the event, DINAPI signed a cooperation agreement with the Center for Studies for the Development of Telecommunications and Access to the Information Society in Latin America (CERTAL), under which DINAPI and CERTAL will help each other with capacity-building. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=472 (Portuguese) #piracy #IPenforcmenet #copyright #IPoffice
PERU
INDECOPI Blocks 400 Websites: INDECOPI’s Copyright Commission ordered more than 400 websites to be blocked throughout Peru due to their use in disseminating pirated content. Of the websites blocked, about 25 were blocked as part of Operation 404’s 7th phase, in which Peru participated. Those websites were related to three mobile applications that provided stream-ripping services. See https://www.gob.pe/institucion/indecopi/noticias/1024965-el-indecopi-bloquea-mas-de-400-sitios-webs-que-pirateaban-peliculas-series-y-musica (Spanish). #IPenforcement #piracy #Operation404
U.S. PUBLIC CONSULTATIONS
Kellis IP is available to assist in drafting or reviewing written comments responsive to public consultations.
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
*Closes Soon* 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. Written comments due October 2, 2024; 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 1-2, 2024: IIPLA USA 2024. Palo Alto, California. https://iipla.org/events/USA/ (English).
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.
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.
