Edition: 198 | Month: September | October | Year: 2025
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Editor note’s
Por Laetitia d’Hanens, Maitê Cecilia Fabbri Moro e Ana Carolina Cagnoni
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The protection conferred by the granted industrial design certificate, whether or not, subject to the substantive examination provided for in Article 111 of the Industrial Property Law
By Patricia Pereira Peralta and Eduardo Ribeiro Augusto
This article aims to analyze decisions made by State Courts to determine whether the holder of a design registration certificate validly granted by the National Institute of Industrial Property (INPI), but without the substantive examination provided for in Article 111 of the Industrial Property Law (LPI), could oppose the use of an identical or similar object by third parties. Or if, for this purpose, only the design certificate successfully submitted to the substantive examination conducted by INPI would be valid. Based on the results of the research conducted, the importance given by State Courts particularly the São Paulo Court of Justice – to the substantive examination has become evident. In interlocutory appeals, this importance reaches 73% (seventy-three percent), whereas in appeals on the merits, it decreases to 50% (fifty percent).
Keywords: Industrial design. Case law. Protection. Substantive examination.
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Trademark Dilution Theory: a comparative analysis of the doctrine in the European Union and Brazil – towards definition and limitation (Part 2)
By Leonardo Pontes
This is the second part of an article which provides a comparative analysis of the trademark dilution doctrine in the European Union and Brazil, revealing significant disparities in evidentiary standards, emphasis on consumer protection, and the interpretation of the “mental link” concept (association). The analysis highlights the importance of considering the legal context and values of each system in applying this doctrine. Furthermore, the article reflects on the impact of these variations on global trade and the protection of intellectual property rights, proposing the harmonization of certain aspects to promote greater legal certainty. The increasing digitalization of commerce and the need to balance trademark protection with innovation and free competition are discussed, emphasizing the importance of continuous dialogue between jurisdictions and a critical analysis of existing practices.
Keywords: Trademark dilution. Comparative trademark law. European Union. Brazil. Free competition.
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The stance of the BPTO on champagne: a designation of origin or a sparkling wine?
By Larissa Nunes Pietoso
This article analyses the position of the Brazilian Patent and Trademark Office (BPTO) regarding the protection of the designation of origin “Champagne” in Brazil, aiming to answer the following question: “How will the BPTO position itself? Is “Champagne” a designation of origin or a type of wine (sparkling wine)?”, as discussed in the article by Kelly Lisandra Bruch, Use and protection of foreign geographical indications in Brazil: a case study applied to “Champagne”. Based on a legislative review, as well as administrative and judicial jurisprudence, the study investigated the BPTO’s position before and after the recognition of “Champagne” as a geographical indication. It was found that the BPTO’s position has been to treat “Champagne” as a designation of origin, and not as a generic term for sparkling wines.
Keywords: Intellectual property. Geographical indications. BPTO. Champagne. Designation of origin.
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Technology transfer and public procurement of innovation: a path to strengthening the innovation ecosystem in the public sector
By Leticia Roberta Pozzobon and Bruno Henrique Morais de Oliveira
Public procurement of innovation has emerged as a strategic instrument to foster national technological development. By leveraging the State’s purchasing power to contract solutions not yet available on the market, the public sector stimulates research, development, and the diffusion of innovations. This article analyzes the articulation between such procurement and technology transfer (TT) agreements, with a focus on strengthening the public innovation ecosystem. Based on a qualitative and exploratory approach, the study examines the main TT contractual modalities, as well as their legal foundations, operational challenges, and replication potential. The findings show that integrating public procurement and TT expands the lifecycle of contracted innovative solutions, enhances knowledge management within the public sector, and contributes to national technological sovereignty. It concludes that institutional, normative, and operational capabilities must be consolidated for this arrangement to fulfill its transformative role within the Brazilian State.
Keywords: Public procurement of innovation. Technology transfer. Public innovation management. Technology contracts.
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Unified Patent Court of the European Union and its lessons in the context of Mercosur
By Stéphanie Luíse Pagel Scharf Mette
In 2023 the Unified Patent Court in the European Union came into operation. It is a jurisdictional body with the function of deciding issues relating to patents in the European block. With its own procedural rules, the Court brings legal certainty by avoiding discrepant decisions by the Courts of different nations on similar issues. In Brazil, the responsible for the matter is the National Institute of Intellectual Property (INPI), which, unlike the European Court, does not have a jurisdictional function, but only an administrative one. In Uruguay, the responsibility is the National Directorate of Industrial Property of Uruguay (DNPI), also with administrative and consultative functions, but not jurisdictional. Discussing the process of integration of Latin American countries in the scope of Mercosur and explaining the main provisions of international Conventions about the subject, this article questions if it is possible to create a system similar to the European in the Mercosur zone.
Keywords: Unified Patent Court. Intellectual property. Mercosur. INPI. DNPI.
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How much is the public registration of a trademark worth? The difficulty of calculating the value of the claim in actions for nullity or granting of trademark registration
By Raineri Ramos Ramalho de Castro
Among many questions that arise from judicial intervention in the protection of trademarks, there is no concrete answer for the definition of the value of the claim in actions for granting or nullifying trademark registration. Through analytical-qualitative research, using theoretical-bibliographic methodology, this article investigates the concrete criteria for defining the value of the claim in actions for granting or nullifying trademark registration. It is concluded that establishing an exact value for the right of exclusive use of the trademark, or for the financial return that a trademark would fail to generate in the event of impediment to use, is a task that involves a series of variables that are difficult to understand. Even with the subjectivities that exist in its analysis, the income based method guarantees the necessary breadth in the evaluation of the relevant criteria, as well as adapting to the specific elements of the legal action in question.
Keywords: Judiciary. Industrial property. Value of the claim. Trademarks. Nullity.
