Edition: 194 | Month: January | February | Year: 2025
Summary
6
Editor note’s
By Laetitia d’Hanens, Maitê Cecilia Fabbri Moro e Ana Carolina Cagnoni
7
Strategies for Registering Non-traditional Trademarks in Japan
By Ayato Sakaki
This article outlines strategies for non-traditional trademarks in Japan. First, the non-traditional trademark system in Japan is included, covering its background, types of marks, and statistic data. Second, the key points in the Trademark Examination Guidelines are discussed. Finally, case studies of applications that were initially refused but ultimately registered are presented. This article is based on a presentation given at the ABPI Annual Meeting 2024.
Keywords: Trademark. Non-traditional trademark. Trademark System in Japan. Secondary meaning. Sound mark. Colour per se mark. Position mark. Motion mark. Hologram mark.
22
The practice of Parallel Import under Brazilian Trademark Law
(Part 1)
By Ana Luiza Castello Brigagão
This study is the first part of an analysis of the practice of parallel import in Brazil, with a focus on trademark law. In view of the doctrinal and jurisprudential controversies regarding the legality of this phenomenon, the aim was to unravel the doubt that hangs over the political choice of the infra-constitutional legislator regarding the legality of parallel imports, when related to the institute of trademarks. To this end, the study began with an analysis of the economic order adopted by the Brazilian Constitution of 1988, then moved on to a study of competition in the trademark field, the context in which this practice is inserted, and ended with an analysis of the interpretation of Brazilian courts in specific cases. This led to the conclusion that, in the Brazilian legal system, given the legislator’s adoption of the principle of national exhaustion, parallel importation is an illicit practice when carried out without the explicit or tacit consent of the trademark owner.
Keywords: Industrial Property. Parallel Import. Trademarks. Exhaustion Principle. Competition.
37
Famous trademarks: a study of evidence in the process of granting special status
By Priscila dos Santos Cappeletti, Erik Schüler and Kelly Lissandra Bruch
The article aims to explore the evidentiary means used in the process of obtaining Famous Trademarks, bearing in mind that INPI/PR Ordinance No. 08/2022 does not establish specific evidentiary specifications for obtaining this special protection. To this end, the study analyzed the procedure adopted by 29 different trademarks that sought this special status. From this analysis, the most recurring and relevant documents presented in Famous Trademark applications were identified. This study therefore intends to provide a series of relevant indicators to ensure greater legal security and promote the Famous Trademarks in Brazil, aiming for a more facilitated and assertive process for proving this condition within the legal scope.
Keywords: Intellectual Property. Brands. Famous Trademark. Trademark. Well-Known Trademark.
48
Addition of matter as initially disclosed in patent regulations of Brazil and the main countries/regions of the world: Comparative analysis in examination guidelines
By Jeferson Monteiro Rosa, Edi de Oliveira Braga Junior, and Genizia Islabão de Islabão
This study deals with the analysis of the addition of subject matter as initially disclosed in patent examination according to regulations of Brazil and major countries/regions. As is known, the addition of matter as initially disclosed in a patent application is not permitted. Many foreign patent examination guidelines show provisions regarding this criterion, such as technical provisions for specific modifications. However, in Brazil, there is less support about it. The aim of this work is to analyze and compare specific provisions related to the addition of matter as initially disclosed in Brazil and main countries/regions. There is a significant qualitative/quantitative difference about these provisions between Brazil and, mainly, China and Europe. This work proposes, through a comparative analysis of the provisions carried out in tables, to provide subsidies for an effective collaboration in future guidelines of Brazilian patent examination.
Keywords: Patent. Patent Examination. Amendments. Addition of Matter. Added Matter.
67
The impact of technological innovations in the luxury industry: protection of intellectual property, product authenticity, and customer engagement
By Lígia Soares Perry
This article investigated the impact of technological innovations, such as blockchain and NFTs, on the luxury industry, highlighting the creation of innovative experiences for customers, greater engagement, and protection against counterfeiting. Using the emblematic case between Hermès and Mason Rothschild, it explored how these technologies were applied to protect intellectual creations, ensure product authenticity, and promote more personalized interactions. The research also examined Brazilian and international legislation on intellectual property, highlighting the need for regulatory adaptations to deal with these new technologies. The results indicated that blockchain and NFTs have significant potential to transform the luxury industry, offering robust protection against counterfeiting and strengthening the certification of product authenticity. It concluded that, although there are regulatory bases, developing new regulations to protect intellectual property rights and foster innovation in the sector is essential.
Keywords: Technological Innovations. Intellectual Property. Luxury Industry. Product Authenticity. Marketing Strategies.
79
The last word of the Superior Court of Justice on incidental recognition of patent nullity as a defense argument in infringement lawsuits
By Gabriel Oliveira Guilherme
The first paragraph of Article 56 of Industrial Property Law innovated by allowing patent nullity to be raised as a defense argument at any time. Despite the clarity of the text, the jurisprudence of the Superior Court of Justice (STJ) oscillated in its application due to existing procedural obstacles. After 28 years, the unanimous judgment of EREsp No. 1,332,417/RS by the Second Section prioritized the right to a broad defense and standardized the understanding of the Third and Fourth Panels, allowing the assertion of nullity as a defense argument in patent infringement lawsuits. If recognized, this would have inter partes effects and would not exceed the jurisdiction of the state court, as the participation of the Brazilian Patent and Trademark Office (BRPTO) would be unnecessary, thus not attracting federal jurisdiction.
Keywords: Patent. Incidental Nullity. Infringement. Jurisprudence. Broad defense.
91
Brazilian audiovisual: updated tax incentives, revitalized business models, and new horizons for streaming
By Marcelo Goyanes and Beatriz Paci
The Brazilian audiovisual sector is undergoing a recovery period after years of weakening. The reestablishment of the Ministry of Culture in 2023 initiated a process of resurgence and spurred key measures such as the Screen Quota Law and the enactment of Provisional Measure No. 1,280/2024, which extended tax benefits and increased the funding limits for incentives under the Audiovisual Law. Streaming has become a consolidated source of financing, enabling new business models. The Audiovisual Sectorial Fund has also started financing productions intended for video-on-demand release. The article further highlights the importance of strengthening public policies to enhance the sector’s economic and cultural impact, making it more competitive internationally. The recent expansion of funding limits may allow Brazilian films to reach unprecedented budgets, increasing their global competitiveness and reinforcing the country’s soft power.
Keywords: Brazilian Audiovisual Production. Tax Incentives. Provisional Measure No. 1,280/2024. Streaming. Business Models.