Aspects related to trademarks and patents such as visual signs, brand expiry, advertising slogans and other issues brought about by new digital technologies are subject to revision in the current industrial property legislation (LPI 9,279/96), they pointed out this Tuesday, 23/ 11, participants in the event promoted by the ABPI on the 25th anniversary of the Industrial Property Law): judge Márcia Nunes de Barros, from the 13th Federal Court of Rio de Janeiro, judge Eduardo Azuma Nishi, from the 1st Reserved Chamber of Business Law of the Court of Justice of the State of São Paulo (TJ-SP), the current president of the 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 brands vetoed for offense to morals and good customs, a provision supported by item II of art.124 of the LPI. “It is a device that needs to be brought into the reality of the 21st century, and include crimes of racism, homophobia, transphobia, sexism, all these unacceptable practices in a society that claims to be democratic”, he said. 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.

Azuma Nishi, in turn, addressed the use of keywords when hiring the internet search service. According to him, there is the predominant understanding in the two specialized chambers in São Paulo that the use of the competitor’s name induces the customer to 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 competition and offers alternatives to the consumer. Regarding unauthorized appropriation of content, he said: “it settled in the sense of not holding the website responsible for counterfeiting of trademark law, existing only from the moment the infringement was notified and not taken off the air”.

In his speech, the president of the ABPI dealt with propaganda slogans, which left the current Law, but continue to be registered as trademarks by the INPI. “If there was a specific record, 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 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. “There is a great possibility in this case that the INPI will be sued in court for damages.”

For Leonardos, there are many changes to be made to the legislation. “But I’m afraid to open this Pandora’s box…” he said. He pointed out the need to change the process of extinction of the disused trademark or its expiry, provided for in art.142 of the Industrial Property Law, suggesting a reduction from five to three years, which is the minimum allowed by TRIPs. “More than that, we should have the obligation, as in other countries, of periodic proof of use of the brand”. According to Leonardos, there are millions of registered trademarks in the world that are not used, do not fulfill a social function and prevent entrepreneurs from find available brands. “In Brazil, this year, we are going to reach 350,000 orders for brands,” he said.

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