Newsletter ABPI - Edition 56 - March 2024
In a three-part series, the ABPI Diversity and Inclusion Committee and the ASPI (São Paulo Association of Intellectual Property) produced “IP Through Women’s Eyes” to commemorate International Women’s Day. The events focused on Brands: Signal Availability, Patent Nullity, Trademark Infringement, Trade Dress, and Parasitic Exploitation.
Comments on the Brazilian Industrial Property Law
Co-authoring a 15-page article on Brazilian trademark availability legislation for the book “Comments on the Industrial Property Law – An Exclusive Analysis by Women,” was a significant challenge for lawyers Flavia Murad and Amanda de Almeida. Their article production process was the topic of the Brands: Signal Availability webinar, moderated by lawyer Tania Aoki Carneiro.
Flavia Murad found the demand for the book, which compiles articles from female lawyers, judges, professors, and researchers in the field of intellectual property, to be a Herculean yet satisfying challenge. The task was to concisely summarize the 11 clauses of Article 124 of the Brazilian IPL (Law 9.279/96). Ultimately, the joint effort was a learning experience for both authors, who, incidentally, have only met virtually. “The project helped to expand and honor women’s intellectual work,” Flavia assessed. For her, the research process for the article highlighted the BPTO’s lack of depth in administrative decisions. “We are not seeing the depth in administrative decisions that they deserve,” she said.
For newly graduated Amanda, the experience was unique. “With Flavia’s experience and my enthusiasm, we crafted the article to be enjoyable to read and useful in the daily practice of law,” she emphasized. In her presentation, she detailed Article 124 and its eleven clauses concerning trademark availability, including the attributive system of rights, distinctive signs, geographical indications, and literary, artistic, and scientific works, among others.
Watch the webinar on ABPI’s YouTube Channel.
The Judicial Action in Patent Nullity
Focusing on judicial action in patent nullity issues, lawyers Ana Paula Affonso Brito and Maria Eduarda de O. Borrelli Junqueira, moderated by Neide Bueno, explored various nuances of the topic, such as defense matter, external prejudiciality, judicial cooperation, conclusions of the report vs. conclusions of the judge, expertise, jurisprudence, and judicial decisions on the matter. The two lawyers contributed to the book “Comments on the Industrial Property Law – an Exclusive Analysis by Women.”
According to lawyer Neide Bueno, despite male predominance, there has been an exponential increase in female participation in law firms and the entire field of intellectual property. She noted, citing UN data, that women represent half of the global population, and, in Brazil, they account for more than 51% of the total inhabitants.
The webinar is available at.
Challenges of Trademark Rights Infringements Today
Today, trademark rights infringements are surpassing traditionally known forms, especially due to numerous possibilities of brand exploitation in the virtual environment. Legal practitioners are tasked with examining concrete situations through a teleological and updated interpretation of the legal system, as pointed out by ABPI’s editorial director Laetitia d’Hanens and lawyer Ana Carolina de Azevedo in the webinar on March 22, “Trademark Infringement, Trade Dress, and Parasitic Exploitation.” The lawyers are among the 66 contributors to the book “Comments on the Industrial Property Law – an Exclusive Analysis by Women.” Focusing on Articles 189 and 190 of Law 9.279/96, which deal with crimes against trademarks, they presented practical examples of extrajudicial notifications and judicial precedents with paradigmatic decisions involving brand imitations, trade dress, and parasitic exploitation. The presentation highlighted the current difficulty in obtaining preliminary injunctions in cases involving trade dress violations due to the Brazilian Superior Court of Justice’s understanding that technical expertise is necessary to ascertain violations. It also addressed the rationale judges adopt in exceptional cases.
Ana Carolina highlighted two BPTO administrative decisions from the second instance that declared trademark registrations null based on parasitic exploitation. “The BPTO often applies the theory of parasitic exploitation indirectly in cases of infringement involving well-known trademarks due to the protection’s extension across all sectors of activity,” the lawyer explained. “However, in these two cases, it recognized that third parties were leveraging the fame of previously registered trademarks, widely known in the market, which did not yet have the status of well-known trademarks, constituting an abuse of rights.”
Laetitia, among other points in her presentation, highlighted the evolving issue of marketplace liability in the sale of counterfeit products in light of recent European guidelines on the subject, following the landmark case involving Amazon and Louboutin. On the parasitic exploitation topic and the possibilities for grounding in the prohibition of unjust enrichment, she also mentioned the applicability of the theory of intervention profits in intellectual property cases, capturing the audience’s attention. Lawyer Nancy Caigawa moderated the webinar.
Watch the webinar on ABPI’s YouTube Channel.