Newsletter Edition 31 - December 2021


More precision in technical expertise for IP actions

The view of magistrates, lawyers, and neuroscientists about expert evidence and the relevance of opinion polls in actions concerning the infringement of patents, software, trade dress, and unfair competition were the focus of the debate held on December 10th between Judge Luiz Alberto Carvalho Alves, from the 3rd Corporate Court of TJ-RJ, the lawyers Marcelo Leite da Silva Mazzola and Jacques Labrunie and the neuroscientist Álvaro Machado Dias. They participated in the debate on “Expert evidence in industrial property infringement lawsuits: patents, software, and trade dress in unfair competition – opinion polls as technical evidence”.

The panel on “Expert evidence in industrial property infringement lawsuits: patents, software, and trade dress in unfair competition – opinion polls as technical evidence” was moderated by Montaury Pimenta and Jacqueline Lima Montenegro, the president of the EMERJ Multidisciplinary Knowledge Development Commission. In his presentation, Judge Carvalho Alves gave examples of court decisions involving unfair competition in the use of distinctive signs and trade dress to demonstrate the “magistrate anxiety” when considering expert evidence in intellectual property actions. The Judge relativized the appeal of the precautionary measure of anticipation of expert evidence that, according to him, may eventually violate constitutional principles, such as the right to privacy and the inviolability of the media.

When addressing patents, Labrunie emphasized that the role of the expert in the judicial process is to help the Judge to understand the technique, but it is not up to him to define whether there is any infringement since the issue is legal. “The judge is not restricted to the report and can judge based on other opinions”, he added. Labrunie also addressed the difficulty in proving expertise related to an industrial process and the importance of qualifying an expert in the field of intellectual property. “The expert needs to know about patents and the BPTO processing, including outside Brazil. In some cases, an expert in that matter and another in patents are appropriate”, he said.

Lawyer Mazzola said he was in favor of technical expertise in trade dress actions and highlighted the relevance of field research to analyze a potential dilution in these cases. “I believe that expertise in trade dress actions is very important. The factual issue has to be examined by technical evidence and the STJ has already consolidated this procedure”, he said. He also defended the agreement between the parties in choosing the expert who, in turn, must explain the methodology used in his report.

In his presentation, Machado Dias criticized consumer opinion polls as a resource to determine the similarity between products. “Consumer perception is fuzzy, it inhabits a gray area where it is hard to find a mental argument that one product looks like another”, he said. According to the neuroscientist, even if the answers are categorical, the person’s thinking is associated with uncertainty. “It is very difficult to map it because people do not have clarity about what is happening in their minds regarding the similarity of the products”, he stated when defending the use, in research, of digital resources and neuroscience to better measure results in the consumer’s perception.