Newsletter Edition 30 - November 2021


In effect for 25 years, Brazilian IP legislation needs review

Aspects related to trademarks and patents, such as visual signals, trademark expiry, advertising slogans, and other issues brought about by new digital technologies are subject to revision in the current Brazilian Industrial Property Law (IPL 9,279/96), pointed out on Tuesday, November 23rd, the speakers in the event promoted by ABPI celebrating the 25th anniversary of the Brazilian Industrial Property Law: Judge Márcia Nunes de Barros, from the 13th Federal Court of Rio de Janeiro, Judge Eduardo Azuma Nishi, from the First Reserved Chamber of Corporate Law of the Court of Justice of the State of São Paulo (TJ-SP), the current President of ABPI, Luiz Edgard Montaury Pimenta, and the president-elect (2022-2023), Gabriel Leonardos.

Among the items of the legislation that she deemed necessary to update, Judge Márcia Nunes de Barros highlighted the trademarks vetoed for being offensive to the moral and good customs, a provision backed by item II of art.124 of the Brazilian IPL. “It is a provision that needs to be brought into the 21st century’s reality and include crimes of racism, homophobia, transphobia, sexism, all these unacceptable practices in a society that claims to be democratic”, she stated. The Judge also pointed out the need for greater specialization of the judiciary and proposed the creation of a virtual court of justice specializing in intellectual property, with federal and state judges to judge appeals from across the country.

Judge Azuma Nishi addressed the use of keywords when contracting the internet search service. According to him, within the two specialized chambers in São Paulo, there is the predominant understanding that the use of the competitor’s name induces consumer confusion and, therefore, characterizes unfair competition. He admitted, however, that the divergent thesis maintains that, in this case, there would be no unfair competition or infringement; on the contrary, it improves the competition and offers alternatives to the consumer. Concerning unauthorized appropriation of content, he said: “It has been adjusted in the sense of not holding the website responsible for trademark counterfeiting, which only comes into existence from the moment the infringement is notified and not taken offline”.

In his speech, ABPI’s president addressed advertising slogans, which have been removed from the current Law but are still being registered as trademarks by the BPTO. “If there were a specific registration, it would make life easier for the judge in the case of infringement”, said Montaury Pimenta. He also addressed the issue of granted and expired patents after the STF (Federal Supreme Court) decision on the sole paragraph of art.40. “The patent holder pays the fees, the annuities, and the patent is granted, but it is already born dead. In this case, there is a great possibility that the BPTO will be sued in court for damages”.

For Leonardos, there are many changes to be made to the legislation. “But I dread opening this Pandora’s box…” he said. He pointed out the need to change the cancellation process for unused trademarks, or its expiry, provided for in art.142 of the Brazilian Industrial Property Law, suggesting a reduction from five to three years, the minimum allowed by TRIPs. “More than that, we should have the obligation, as in other countries, of periodical trademark proof of use audits”. According to Leonardos, there are millions of registered trademarks worldwide that are not used, do not fulfill a social role, and prevent entrepreneurs from finding available trademarks. “In Brazil, this year we are going to reach 350,000 trademark applications”, he said.