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Challenges of trademark rights infringements today

Currently, infringements of trademark rights have gone beyond traditionally known forms, mainly due to the countless possibilities for exploiting trademarks in a virtual environment, with the role of legal operators to examine concrete situations through a teleological and updated interpretation of the legal system, as per pointed out the editorial director of ABPI Laetitia d’Hanens and the lawyer Ana Carolina de Azevedo, in a webinar last Friday, 22nd “Brand infringement, trade dress, and parasitic exploitation”, held as part of the celebrations of International Women’s Day . The event was organized by the ABPI Diversity and Inclusion Committee in conjunction with ASPI (São Paulo Intellectual Property Association).

The lawyers are among the 66 writers of the book “Comments on the Industrial Property Law – an analysis made by women”. When looking at arts. 189 and 190 of Law 9,279/96, which deal with crimes against brands, the lawyers showed practical examples of extrajudicial notifications and judicial precedents with paradigmatic decisions, involving brand imitations, trade dress, and parasitic exploitation. The current difficulty in obtaining preliminary decisions in cases involving violation of trade dress was highlighted, due to the STJ’s understanding of the necessary technical expertise to determine whether there is a violation, as well as the rationale adopted by judges in exceptional cases.

Ana Carolina highlighted two administrative decisions by the INPI of second instance that declared trademark registrations null and void based on parasitic exploitation. “The INPI usually applies the theory of parasitic exploitation indirectly in cases of infringement of highly renowned brands, due to the extension of protection to all areas of activity”, said the lawyer. However, in these 2 cases, he recognized that third parties were piggybacking on the fame of previously registered trademarks, widely known in the market, which did not yet enjoy highly renowned status, which constituted an abuse of rights”.

Laetitia, among other points in her presentation, warned about the evolution of the issue of marketplaces’ responsibility in the sale of counterfeit products, in light of recent European guidelines on the subject, due to the paradigmatic precedent involving Amazon and Louboutin. On the topic of parasitic exploitation, and the possibilities of justifying the prohibition of illicit enrichment, he also mentioned the applicability of the profit theory of intervention in cases of intellectual property, drawing public attention.

If you missed the event, you can watch it again on the ABPI YouTube Channel