Newsletter ABPI - Edition 51 - October 2023


Study Committee to Evaluate Mercosur Agreement on GIs

ABPI’s Geographical Indications Study Committee will soon conduct an extensive discussion regarding the terms of Legislative Decree PDL 118/2023, which ratifies the Agreement among Mercosur countries for the protection of geographical indications originating from their respective territories (PDL 165/2022). According to the Committee’s assessment, the agreement contains contentious elements and potential conflicts with Brazilian legislation (IPL 9,279/96). These concerns encompass provisions related to trademarks that are identical or similar to GIs deposited before the enactment of the Resolution to be approved by the Common Market Group (GMC), which defines the protected GIs. Furthermore, an anticipated BPTO Resolution on the topic is also on the horizon.

Signed in December 2019 in Bento Gonçalves (RS) by Brazil, Paraguay, Argentina, and Uruguay, the aforementioned Agreement seeks to ensure the mutual protection of geographical indications originating from the territories of the treaty’s member states, all while adhering to their respective national legal frameworks and the international multilateral agreements of the signatory countries. “The Agreement brings significant innovations, not only concerning the extension of rights related to GIs within Mercosur but also regarding rules for deposits of trademarks identical or similar to GIs,” notes Luiz Marinello, co-coordinator of ABPI’s Geographical Indications Study Committee.

From what can be inferred from the Agreement, a list of geographical indications to be mutually protected will be compiled and approved by the GMC via a Resolution. For new GIs granted subsequently, which are not included in the initial list, the respective holder must electronically submit a technical form (a template of which is attached to the Agreement) and meet various requirements, involving the country of origin itself.  “This leads us to anticipate that the BPTO will soon establish regulations in alignment with what was outlined in the ‘General Rules’ section of the Agreement,” states Marinello.

Concerning homonymous geographical indications within the same product or service category, it is clear that they can coexist, with the involved countries deciding how to distinguish the origins of the products in the market. “In an increasingly globalized economic scenario, the Agreement is an important tool for the protection and broader reach of Intellectual Property rights, which are currently mostly limited to national protection,” evaluates Andréa Possinhas, co-coordinator of ABPI’s Geographical Indications Committee.

According to Marinello, one of the most crucial and intricate aspects of the Agreement relates to the ‘Prohibition of registration as a trademark’ for GIs recognized under the Agreement. These signs will not be eligible for trademark registration for similar products or services except when the trademark application predates the GMC Resolution’s enforcement. It is also stipulated that trademarks containing or consisting of a GI will not be registered if their use constitutes unfair competition or misleads consumers regarding the true place of origin of the goods.

The Agreement states that GIs listed in the GMC Resolution will be protected when a ‘prior trademark’ exists, which is considered a trademark that has been requested in good faith and is in force in the territory of a Member State before the application for the protection of a GI. The Agreement also provides that the prior trademark and the GI may continue to be used and renewed as long as they do not mislead consumers regarding the nature of Intellectual Property rights. “The Agreement ensures increased legal certainty, as it prevents third parties from registering trademarks for products or services similar to the recognized Geographical Indications within this bloc of countries,” explains Andréa.

Published in the Brazilian Official Gazette on October 16, the PDL 118/2023 now requires presidential ratification to take effect.