I OVERVIEW

The Brazilian trademark system is flexible. Despite proprietary rights being given by law to the owners of registered marks, marks simply used in commerce or that have only been applied for can also be protected under unfair competition and anti-dilution doctrines.

II LEGAL FRAMEWORK

i Legislation

The primary domestic legislation is the Industrial Property Law 19962 (the IP Law), which deals with civil and criminal aspects of trademarks, patents, geographical indications (GIs), patent designs, industrial designs and unfair competition practices.3

Brazil is a member of the Paris Convention, the TRIPS Agreement and the Nice Agreement.4 The Brazilian government intends to join the international trademark system (Madrid Protocol) by mid-2018. The Brazilian Industrial Property Office (BIPO)5 is working hard to reduce its backlog.

The Brazilian Constitution includes a trademark clause in Paragraph XXIX of Article 5, which sets out the fundamental rights.6

ii Authorities

The BIPO is responsible for registering trademarks and solving trademark disputes. It also records licensing agreements on various intellectual property (IP) rights.

Article 124 of the IP Law lists 23 grounds for refusal (absolute and relative). Article 126, Section 2 gives the BIPO powers to refuse signs that infringe well-known marks.7 The BIPO also has powers to initiate a revocation if a mark is mistakenly approved.

The BIPO’s powers to interfere in the language of the agreements to be recorded have been criticised. Consequently, Normative Instruction No. 70 was approved to allow the BIPO to take a more liberal approach,8 thus incentivising investments in Brazil.

iii Substantive law

The Brazilian trademark system protects signs capable of being visually perceptible, provided they distinguish the goods or services of one enterprise from the goods or services of other enterprises.

Despite having this visual requirement – which would, in principle, exclude non-conventional marks such as sounds and scents from trademark protection – the Brazilian legal system is flexible, permitting the registration of certain non-traditional marks, such as holograms, motions, gestural, position and three-dimensional marks.

To date, there are no soundmark registrations in Brazil because the BIPO has taken the view that they are not allowable according to the IP Law. However, trademarks consisting of sounds, scents, colours per se can be safeguarded by unfair competition rules.

‘Colours and their names, except when arranged or combined in an unusual and distinctive manner, are not registrable as trademarks.’9 Consequently, distinctive combinations of colours used as marks can be registered, for example Visa’s registered mark for the combination of blue, white and gold.10

Some commentators argue that the ‘visually perceptible’ requisite should be understood as being similar to the European requirement of graphical representation. This would potentially make room for non-traditional marks such as sounds or smells to be eligible for trademark protection in Brazil. But the system is currently not subject to the ‘graphical representation’ requirement. The IP Law would have to change and the BIPO would have to update its manual of trademark practice.11

Slogans are eligible for trademark protection only when used as marks.12 Shape marks with functionality are also not registrable, except as patent designs.

Paragraphs II and III of Article 123 of the IP Law explain the scope of protection of certification and collective marks.13 Certification marks can be owned by entities with no

direct commercial interest in the goods or services, but which can inspect and control the level of quality expected by the public. The applicant must indicate:

    • • the conditions to be carefully followed by the trademark users;
    • • the levels of quality; and
    • • how these levels are going to be enforced by the brand owner to the users.

Article 7 bis of the Paris Convention triggered the protection of collective marks in Brazil. The applicant, usually an association, must clearly indicate the conditions to be fulfilled by the members of the association for using the sign.

There are two types of famous marks: well known and highly renowned. Well-known marks are protected in their relevant market, irrespective of registration (Article 126) but recognised by the Brazilian public. Highly renowned marks do not require niche fame and are protected in all fields (Article 125). Highly renowned marks have to be registered in Brazil and be recognisable by the general public throughout the country.14

Some commentators argue that marks that are only ‘known’ should be protected even if the junior mark identifies dissimilar goods.15

Article 124, Paragraph XXIII of the IP Law avoids free ride and unfair advantage,16 protecting unregistered marks17 known by a third party (and not necessarily by the public) against use or registration.

Article 130, Paragraph III of the IP Law grants to the registrant or applicant the ‘right to safeguard the integrity and the reputation of a mark’. A considerable number of specialists and courts say this would be the Brazilian dilution proviso.18

Company names are protected by the Civil Code (Article 1,166).19 Exclusive rights are enforceable regionally20,21 but it is also possible to apply for national registration.

These names identify the legal person and must be registered with the Trade Registry in order for the company to exist and operate. Company names differ from trade names, which are optional and consist of the term under which the company trades.22 Trade names differ from trademarks, which function as source identifiers of goods or services.

Article 176 of the IP Law states that ‘a GI is constituted by an indication of source23 or an appellation of origin’.24 There are 18 recognised appellations of origin (10 of which are Brazilian) and 45 Brazilian indications of source (wines, coffee, cachaça and cheese).

The Brazilian Network Information Centre (NIC.br) was set up by the Brazilian Internet Steering Committee (CGI.br). NIC.br created its own rules to apply to domain name cases. All .br domain names are registered through Registro.br, which is a department of NIC.br. Brazil applies the Uniform Domain-Name Dispute-Resolution Policy. Conflicts can also be solved by the registry25 or through the courts.

III REGISTRATION OF MARKS

There are no multi-class applications and only one type of registration.

It can take one month for an application to be published.26 The filing fee is 355 reais. If there is no opposition, the mark will be examined for up to two and a half years. If the application is opposed, that time frame almost doubles.

Evidence of use should be submitted after the registration, to avoid revocations based on non-use. Use is not a prerequisite to registering a mark but is to keep it on the register.

A mark can be removed from the register if the registrant does not renew it for a further 10 years, expressly withdraws it from the register, or has the registration revoked or invalidated.

i Inherent registrability

Marks can be fanciful, arbitrary, suggestive, descriptive and generic (Abercrombie’s levels of distinctiveness). ‘Suggestive’, ‘arbitrary’ and ‘fanciful’ are prima facie registrable terms as marks (inherently distinctive).

Generic terms are not registrable as marks. Descriptive signs have to acquire secondary meaning, so that it is possible for the public to recognise the sign as an origin identifier.

Shape marks can be registered only when they have a distinctive character. Examples are the get-up of packages that have acquired distinctiveness through use and advertising. These can function as source identifiers.

Merely descriptive or generic signs cannot be registered;27,28 however, ‘an isolated letter, digit or date, except when sufficiently distinctive’ is registrable.29

If a sign is formed by a descriptive component, it can be registered, but the BIPO will probably issue a disclaimer in respect of this descriptive element, stating that there would not be exclusive rights thereon.

ii Prior rights

Brazil has a first-to-file system, and applications are examined in order, based on the filing date. (The BIPO uses international filing dates.) Priority is given only to elderly or disabled persons, by order of the courts, when the senior mark cited as anticipation is dead or belongs to the same economic group.

A person who has been using a mark in good faith for at least six months is eligible to claim prior rights based in respect to a confusingly similar mark (preferential rights to registration).

The owner of a well-known mark that has been infringed, but for which no application has been made in Brazil, will have 60 days after lodging an opposition to file a Brazilian trademark application.

iii Inter partes proceedings

Anyone can oppose an application on absolute grounds30 but only the proprietor of an earlier mark or earlier right may oppose on relative grounds.

The most commonly used relative grounds for refusal are ‘confusingly similar signs’ (in respect to another mark or a previous company name) and ‘dilutive marks’.

Opposition proceedings are in writing only; there is no hearing at the BIPO. The applicant and the opponent will have only one opportunity each to submit their arguments and evidence. There is no fast-track procedure for opposition or mediation services provided by the BIPO. Time extensions are not allowed.

Usually, the opponent does not contact the applicant before lodging an opposition. Sometimes, cease and desist letters are effective. Costs are not recovered or paid to the winner of the opposition.

Since Brazil intends to join the Madrid Protocol31 by mid-2018, the BIPO is hiring and training more examiners to reduce its backlog. As a consequence, having a meeting with an examiner32 – which had been straightforward in the past – has become difficult and the quality of the decisions has decreased, increasing the number of cases being brought before the courts.

The BIPO compares the marks as a whole and not their differences. It applies tests for likelihood of confusion resembling the Polaroid test.33 The BIPO and the courts try to assess as many factual aspects as possible. Some courts are already applying one recent test created as part of a legal study,34 known as ‘the 360⁰ Test’.

Oppositions must be filed within 60 working days of the publication date.35 The applicant is then given the option of submitting counterarguments. After that, a decision is given, which can be appealed.36 Any oppositions lodged after the 60 days are disregarded.

The BIPO sometimes freezes a junior application – irrespective of opposition – to avoid conflicting decisions, that is to say two confusingly similar marks owned and registered by different persons.

If it is not used within five years of registration, the mark can be vulnerable to revocation. The BIPO or anyone with a legitimate interest can start this proceeding. The registrant will have to prove substantial use of the mark during the previous five years to retain registration of the mark.

iv Appeals

The most common appeals relate to refusals, registrations, revocation in respect of non-use, and disclaimers (usually in view of lack of distinctiveness).

An act of grant can be appealed irrespective of any previous opposition.

Appeals proceedings are in writing only (no hearings). The Official Bulletin notifies the owner to file its counterarguments. There is no fast-track procedure and no mediation services offered by the BIPO. The appeals examiner is the president of the BIPO.37 No costs are reimbursed or awarded to the winner of the appeal.

The BIPO can contact a party to clarify a specific point or to obtain better proof of a fact. This collaborative work optimises the system and allows better decisions to be reached.

The act of lodging an appeal does not suspend the effects of a BIPO decision that is challenged. The BIPO’s decision on appeal is the final administrative step, therefore that decision can only be reversed before the courts.

IV CIVIL LITIGATION

The New Civil Procedure Code,38 the content of which was influenced by European and US systems, came into force in March 2016. Among the key procedural changes are the attempt to settle the case before the litigation ‘starts’, a cooperative way of litigating in respect of all parties,39 the agreements the parties can enter into (before and during litigation) in respect of many aspects and steps of the litigation, such as nominating the court expert, prefixing costs, time frames, limiting types of evidence and appeals.

After a complaint is filed, a judge will examine any preliminary injunctions and then summon the defendant with a subpoena to attend a conciliatory hearing. If no agreement is reached, the time frame within which the defendant must submit a response begins.40

The judge will summon the plaintiff to rebut the response and explain which evidence should be presented to prove the allegations. The same is done in relation to the defendant. The disclosure here should focus only on controverted facts.41

More complex matters, such as patent cases (revocation or infringement), generally demand a technical expert opinion to assist the judge, who must be a specialist. The role of the judge is to affirm whether the legal requisites for the invention have been met or if an infringement has taken place.

The parties then submit their comments about the expert opinion and the judge issues a final first instance decision, which can be appealed to the relevant tribunal.42

i Forums

Brazil has a bifurcated system.43 The state courts hear disputes related to private concerns, such as infringements, and the federal courts hear cases in which a public body (e.g., the BIPO) is a party because its decision is being challenged in court. (The defendant would be, for instance, the trademark proprietor in an invalidity proceeding.)

If a junior user is misusing a senior registered mark, the infringement lawsuit should be brought before a state court, taking into account, again, that the BIPO does not need to join.

The defendant in the infringement lawsuit usually claims the invalidity of the senior trademark before the federal court.44 The BIPO will be one defendant and the senior trademark owner the other.

An infringement case45 is usually suspended for up to one year, until the federal court decides on the validity of the mark. The aim of this is to avoid contradictory decisions (i.e., a juridical conflict).46

The Brazilian judiciary is making its courts specialised with the aim of achieving better and faster judgments. In the state of Rio de Janeiro both state and federal courts at the first level are specialised in IP.47,48 Two panels at the Federal Court of Appeals for the Second Circuit49 specialise in IP cases. In the states of São Paulo and Rio Grande do Sul, the state appeals courts each have two panels that specialise in IP matters.

The Superior Courts are the Superior Court of Justice (STJ) and the Supreme Court of Justice (STF). The former hears non-constitutional matters, controlling the application of federal law, as well as harmonising the Brazilian jurisprudence. The latter enforces the Constitution. The STJ has two panels that specialise in IP.

Claims are usually grounded by statutory language, by the opinions of authorities or scholars, and by decisions issued by different courts and levels.

ii Pre-action conduct

In Brazil there is no pre-action conduct code for IP disputes to ‘encourage the parties to exchange information with each other prior to issuing proceedings to ascertain whether proceedings can be avoided and, if not, to ensure that the parties understand the issues sufficiently to ensure that any litigation is dealt with proportionately and in keeping with the overriding objective’.50

Usually, the plaintiff notifies the defendant before bringing the matter to court. Unjustified threats and accusations of crimes or infringements can give rise to the liability of the notifying party. Sometimes, the notified party claims in court a non-infringement declaration, so as to claim back damages. Attempting to settle before issuing legal proceedings is not mandatory, but is advisable.

Depending on the complexity of the dispute and respective figures involved,51 the parties can opt to have the case heard by professional mediators or by a court of arbitration. The majority of IP cases in Brazil are dealt with by the judiciary system.

iii Causes of action

Brazil has a ‘double identicality’ proviso52 based on which the clash between identical marks for identical goods or services amounts to prima facie infringement, as the signs will evidently lead to confusion. Despite this, the courts are still reticent about applying this rule, usually relying on confusion-based tests to refuse or revoke the junior mark.

Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional causes under unfair competition rules as foreseen in the IP Law, such as passing off, free ride or unfair advantage.

The statutory authority for trademark infringements based on confusion is Paragraphs V, XIX and XXIII of Article 124 of the IP Law, which cover misuse of marks, company names, trade names and domain names.

The most common cause of action would be someone using a mark, which is identical or similar to a senior registered mark for similar goods. The same is applicable to a confusingly identical or similar junior company name or trade name in respect of an earlier registered mark for similar activities.

If the junior sign (mark or company, trade or domain name) is capable of creating confusion, it would amount to an infringement of the senior registered mark. An earlier registered company name53 can also serve as grounds for having a confusingly similar trademark refused or invalidated. In NBA Properties v. NBA Gestão,54 the Federal Court of Appeals of the Second Circuit invalidated the registration of the mark NBA based on NBA’s company name,55 which is registered only in the United States.

There is no ‘official’ test used by the courts to assess trademark infringement. They usually try to take into account as many as factual aspects as possible.

The IP Law requires investigation of the similarity of the signs and goods or services to learn whether they are likely to create confusion for the general public and whether an infringement has taken place.56 The STJ also uses this test,57 but the courts do not apply one single ‘official’ test, despite the fact they are similar in many ways.

Commentators recommended in the 1980s the following multifactor test for likelihood of confusion:

  • • analysing the whole marks and not their differences;
  • • consumer’s level of attention;
  • • the circumstances under which the goods are acquired;
  • • the nature of the goods; and
  • • the relevant market for the goods.58

But according to practitioners, this test does not cover post-sale confusion in other situations. More tests were developed and the courts apply different ones, depending on the circumstances of the case (e.g., the 360⁰ Test – see Section III.iii).

Unlike Germany59 or the United States, Brazil does not have a piece of legislation on unfair competition practices. The IP Law also regulates this in Article 195, which has an indicative list of 14 behaviours considered to be unfair trade acts.

Paragraphs I, II and III are the most-used causes of action in unfair competition cases.60 They aim to prohibit fraudulent behaviour to divert another’s clientele or to gain an unfair advantage against another party.

As a member of the Paris Convention, any dishonest act considered can amount to an unfair competition act.61 Free riding and passing off are also forbidden under the umbrella of unfair practices. The same is applicable to consumer fraud and deceptive trade practices.

Courts have ordered defendants or the domain registry to take down infringing domain names based on trademark infringement and free riding. Technically, unfair competition is actionable among competitors, but any other non-competitor’s misconduct can be actionable under free riding62 or unfair advantage.

iv Conduct of proceedings

Typically, the plaintiff will present allegations and claims in writing, supported by all the documents it may have to prove the allegations, and the time to start doing this is at the initial filing of the complaint.

If the parties do not settle at the conciliatory and mediation hearing,63 the defendant will have 15 working days64 to lodge a response, contesting the plaintiff’s allegations, claims and evidence, as well as to submit its own evidence to persuade the judge.

The plaintiff will then have a period of 15 working days to comment on the defendant’s documents and arguments, which can lead to the dismissal of the case or raise any procedural irregularity. At this point, both parties will accept some facts as true, but some will be controverted. The disclosure here should focus only on controverted facts.

If any party wants to take a deposition or thinks that the opinion of a technical expert is needed, the judge will analyse the requests and, if sustained, schedule a hearing for the depositions and nominate a specialist to provide a technical opinion.

If the lawyers have powers to represent their clients, their clients do not have to attend the hearing, unless they are to be heard in the depositions. Ordinarily, the depositions are taken in a courtroom in front of the judge, who will also question those making the depositions. However, the parties can agree to take the depositions in their own offices, as in the United States.65

Costs awards are granted to the winner of the litigation. These include reimbursement of court fees and costs and attorney fees, which can be up to 20 per cent of the economic value of the matter. The costs are awarded solely to the winner, and the attorney fees are to remunerate the lawyer’s work during the litigation. As a general rule, the contractual fees paid by the client to its lawyer are non-refundable by the loser.

It is difficult to estimate how long the disclosure can take. It depends considerably on how efficient and specialised the court is and on the complexity of the matter and the evidence produced.

v Remedies

Plaintiffs are awarded injunctions against further infringement or unfair practices.66 Injunctions can be issued when two main prerequisites are met: the plaintiff’s claims are probably true and are indeed urgent.67,68

Monetary relief may also be available to the plaintiff, including:

  • • the defendant’s profits;
  • • damages sustained by the plaintiff;69 and
  • • the amount by which the plaintiff should reasonably have profited if no infringement had been committed.

Moral damages can also be awarded as a ‘punitive damage’, to discourage the defendant from committing further infringements.

V OTHER ENFORCEMENT PROCEEDINGS

The customs authorities can seize imported goods, on the grounds that they may infringe trademark rights as an anti-counterfeiting policy70 based on the IP Law71 and the TRIPS Agreement.

Having seized the goods, the authorities will contact the Brazil attorney responsible for the respective brand owner in Brazil,72 so that he or she can issue, on behalf of his or her client, civil or criminal proceedings against the potential infringer, demanding an injunction to be granted to retain the seized goods until a final judgment is made. The time limit for this is 10 days. If this is not done, the goods can be released and distributed to the Brazilian market.

It can be argued that this procedure is transferring to the brand owner the onus and costs for obtaining a court decision to block the goods and declare the importer a criminal who has infringed trademark rights. The role of the customs authorities should ordinarily be to find and seize potentially infringing goods, to avoid infringing goods entering the Brazilian market.


VI RECENT AND PENDING CASES

The decisions from some recent cases relate to:

  • • the application of a multifactor test to establish likelihood of confusion;
  • • AdWords viewed as an act of trademark infringement and unfair competition; and
  • • court orders to suspend the WhatsApp service.

In Duvel v. Deuce,73 the State Appeals Court of Rio de Janeiro issued a judgment finding trademark infringement and unfair competition in the clash between the two well-known beer brands, after applying the 360⁰ Test.

The test was also applied by the STJ in Chester v. Chester Cheetah and the BIPO,74 highlighting that each of the following factors should be considered independently and balanced with the others:

  • • degree of inherent distinctiveness of the marks;
  • • similarity of the marks;
  • • legitimacy and reputation of the junior user;
  • • duration of the coexistence of the marks;
  • • types of goods or services;
  • • sophistication of the targeted public; and
  • • dilution.

In Brazil, paying for AdWords services for internet searching engines such as Google and Bing can amount to trademark infringement and unfair competition. In Twogo v. Togo,75 the State Appeals Court of São Paulo held that there had been trademark infringement and unfair competition, prohibiting the defendant from using the terms ‘2gotur’, ‘2go turismo’ and ‘TWOGO’ associated with tourism services from Google’s AdWords, as ‘TWOGO’ is the plaintiff’s registered mark and www.2gotur.com.br is its registered domain name. When a search was done of these terms, the results led first to the defendant’s web page, as it had used the AdWords tool. More judgments have been given using this approach.

On four occasions in the past two years, the WhatsApp messenger service has been blocked by a court order, after access to messages related to criminal investigations was denied. These orders came from first instance judges from different regions of Brazil; the blocks were lifted some hours later by the STF, Brazil’s highest court.

WhatsApp argued that the messages are end-to-end encrypted, which was why it was not possible to access users’ messages and provide the court with specific chat logs, despite them being relevant to the investigation of serious crimes.

Questions are being raised in the United Kingdom, the United States, France and Germany about the use of WhatsApp and similar applications for the planning of terrorist attacks. There is concern that criminals are at liberty to communicate using messenger apps as the chat logs are encrypted and cannot be accessed, not even with a court order.

The STF invited specialists from many different sectors to speak about this sensitive topic at a public hearing, to assist the justices in making a final decision on this matter. This public hearing took place a few months ago but the justices have yet to disclose their opinions on the matter.

VII OUTLOOK

The decision by the STF about how it is going to approach WhatsApp cases is clearly a hot topic, especially in view of the uncertainty about the outcome. India’s Supreme Court of Justice is in a similar situation. On 7 September 2017, India’s highest court asked WhatsApp and Facebook to advise whether they had shared any user details with third parties. A final decision on this is also pending.

As regards trademark law in Brazil, there is a move towards the specialisation of courts in IP, so that judges can render better and quicker decisions at different levels, and thus reduce the judiciary backlog.

Another element of uncertainty is whether the Brazil will join the Madrid Protocol by mid-2018. Despite hiring and training more examiners, the backlog of trademark cases is substantial and needs to be reduced drastically so Brazil can make a decision on becoming a signatory member of the international system soon.

1 Mauricio Maleck Coutinho is head of the intellectual property disputes team at Veirano Advogados’ São Paulo’s offices.

2 Federal Law No. 9,279, of 14 May 1996, known as the Industrial Property Law.

3 Copyrights are governed by a separate piece of legislation – Federal Law No. 9,610 of 1998. Federal Law No. 9,609 of 1998 regulates software.

4 The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

5 The National Institute of Industrial Property (known in Brazil as INPI), the official government body responsible for industrial property rights in Brazil, is a federal autarchy of the Ministry of Industry, Foreign Trade and Services. Its services include registration of trademarks, industrial designs, geographical indications, software, patents, technology transfer and franchise agreements.

6 Constitution of the Federative Republic of Brazil. Title II: Fundamental Rights and Guarantees, Chapter I: Individual and Collective Rights and Duties, Article 5, Paragraph XXIX – the law will guarantee the property of marks and other distinctive signs, in view of the public and social interests and the economic and technological development of the country.

7 In the meaning of Article 6 bis (I) of the Paris Convention.

8 Of 11 April 2017 – Approval of agreements.

9 Article 124, Paragraph VIII of the IP Law.

10 Registration No. 006088244, owned by Visa International Service Association.

11 Mauricio Maleck Coutinho, Sounding it out: A global view on registering sound trademarks – Part 2, accessed on 3 October 2017 at www.thebrandprotectionblog.com/sounding-it-out-a-global-view-on-registering-
sound-trademarks-part-2/.

12 Article 124, Paragraph VII of the IP Law. […] signs or expressions used only as a means of advertising.

13 Article 123 of the IP Law. For the effects of this law, the following definitions apply: Paragraph II – certification mark: that used to attest that a product or service conforms with determined technical norms or specifications, notably with reference to its quality, its nature, the material used and the methodology employed; and Paragraph III – collective mark: that used to identify products or services originated by members of a given entity.

14 Evidence of use and fame in the major Brazilian commercial regions is sufficient, which is similar to the European approach (community trademarks).

15 ‘Trademark law will probably develop in the sense of always giving more power to trademark owners, when third parties demonstrate interest in taking advantage, in a parasitic way, of the reputation of the marks, or, more precisely, of the investments made to promote the marks.’ Nuno Pires de Carvalho, ‘A Estrutura dos Sistemas de Patentes e de Marcas – Passado, Presente e Futuro’ (‘The Structure of the Patent and Trademark systems – Past, Present and Future’). Ed. Lúmen Júris. Rio de Janeiro. 2009.

16 Unfair advantage is not only linked to dilution cases, as it is in Europe.

17 Pedro Marcos Nunes Barbosa, ‘A Marca Evidentemente Conhecida do Artigo 124, XXIII, da Lei 9,279/96 e Suas Importantes Implicações Jurídicas’ (‘The Mark Evidentially Known of Article 124, Paragraph XXIII of the IP Law and its Legal Implications’). Article dated 20 March 2007, accessed on 31 July 2017 at
http://nbb.com.br/pub/propriedade23.pdf.

18 Other specialists affirm that only highly renowned marks in the meaning of Article 125 of the IP Law can be protected under the dilution doctrine.

19 Article 124, Paragraph V of the IP Law constitutes a relative ground for refusal of a mark that infringes an earlier company name.

20 In the federal state where the headquarters is located.

21 What was said in relation to famous or known marks is applicable to the enforcement and protection of company names that also perform as marks, notably in view of the language of Article 8 of the Paris Convention.

22 When applying to register a company name, the applicant provides the trade name.

23 Article 177. An indication of source is considered to be the geographical name of a country, city, region or locality of its territory, which has become known as a centre of extraction, production or manufacture of a determined product or for providing a determined service.

24 Article 178. An appellation of origin is considered to be the geographical name of a country, city, region or locality of its territory, which designates a product or service, the qualities or characteristics of which are exclusively or essentially due to the geographical environment, including natural and human factors.

25 For example, preferential rights when two companies are applying to register a domain name simultaneously.

26 If the applicant is an individual or a small business, it can benefit from a considerable discount in the official fees. This measure aims to incentivise economic development, etc.

27 Article 124, Paragraph VI. […] signs of a generic, necessary, common, usual or simply descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production or of giving a service, except when presented in a sufficiently distinctive manner.

28 Article 124, Paragraph VI of the IP Law.

29 Article 124, Paragraph II of the IP Law.

30 The lack of distinctiveness is the most common absolute ground for refusal (generic or descriptive).

31 The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks.

32 To call his or her attention to one fact or argument, for example.

33 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).

34 Filipe Fonteles Cabral and Marcelo Mazzola. ABPI Magazine No. 132 (Brazilian Intellectual Property Association), September 2014, p. 16.

35 Official opposition fee: 355 reais.

36 Official appeal fee: 475 reais. The granting decision can be appealed but not the allowance. The mark is entered in the register and then, after the final fee is paid (745 reais), the registration is granted and the certificate issued.

37 The legal team and clerks or examiners, who issue an opinion to be confirmed and signed by the president.

38 Federal Act No. 13,105 of 16 March 2015.

39 Plaintiff, defendant and judge, so the proceeding can take a reasonable time to achieve a fair and effective outcome.

40 In the previous system, this hearing took place in the middle of the litigation process, after the parties had filed the response, rebuttals and informed the court of the evidence they wished to submit.

41 If the fact is accepted as true by both parties, there is no need to invest time and money in bringing evidence to the court on this fact.

42 The appeals courts (state and federal) review all the facts, allegations and evidence produced by the parties (i.e., the dispute as a whole), so as to reverse, invalidate or uphold the final first instance decision.

43 This ‘division of work’ was established by Article 109, Paragraph I of the Constitution.

44 Or before the state court, only as a defence argument (no res judicata in this case), so as to find that there was no infringement. State courts do not have jurisdiction to invalidate a BIPO decision in practice (res judicata), only federal ones, but, again, the absence of rights will be taken into consideration by the state court to hold that there was no infringement.

45 Taking into account that an invalidated mark cannot be enforced or infringed, the infringement lawsuit is usually suspended, pending a judgement on the revocation case filed before the federal court.

46 For example, despite having the trademark registration cancelled, the state court held that there was a trademark infringement, resulting in the defendant having to pay damages and stop using the mark.

47 The federal courts are specialised in intellectual property matters, therefore including copyright. Civil state courts in Rio de Janeiro hear copyright cases. However, specialised courts do not have jurisdiction to judge copyright matters, only mixed matters, such as trademarks and copyright.

48 There are seven state courts in the city of Rio de Janeiro (Centre Court) and four federal ones in the Rio de Janeiro judiciary section.

49 The Second Circuit hears appeals from the states of Rio de Janeiro and Espírito Santo. Each circuit embraces two or more states. The BIPO’s principal office is located in the city of Rio de Janeiro, in the state of Rio de Janeiro.

50 Code of Practice for pre-action conduct in intellectual property disputes in UK. Accessed on 4 October 2017 and available at https://www.reedsmith.com/en/perspectives/2007/04/code-of-practice-
for-preaction-conduct-in-intellec.

51 Practitioners say that matters costing more than 1 million reais are justified to be heard by a court of arbitration.

52 Article 124, Paragraph XIX of the IP Law. The following are not registrable as marks: reproductions or imitations, in whole or in part, even with additions, of a mark registered by a third party, to distinguish or certify a product or service that is identical, similar or akin, and which are likely to cause confusion or association with the third party’s mark.

53 It is hard to find an earlier registered domain name invalidating a trademark or a domain name as first the company is founded (the company name is registered) and then the domain name and mark are applied for.

54 NBA Properties Inc. v. NBA Gestão Ltda. and the BIPO. Appeal No. 0537431-03.2004.4.02.5101 (TRF2 2004.51.01.537431-5), Judge André Fontes, 28 August 2007.

55 Applying Article 124, Paragraph V in conjunction with Article 8 bis of the Paris Convention.

56 Article 124, Paragraph XIX.

57 Similar marks and goods are likely to cause confusion. Three factors must be verified simultaneously: similarity of the signs, similarity of the goods or services, and likelihood of confusion.

58 João da Gama Cerqueira, Luiz Gonzaga do Rio Verde and João Casimiro Costa Neto, ‘Tratado Da Propriedade Industrial’ (1st Ed., Vol 2. Editora Revista dos Tribunais 1982), pp. 68 and 69.

59 German Unfair Competition Act (UWG).

60 Article 195, Paragraph I – publishes, by any means, a false affirmation, in detriment to a competitor, with a view to obtaining advantage; Paragraph II – provides or divulges, with respect to a competitor, false information, with a view to obtaining advantage; Paragraph III – uses fraudulent means to divert, for his own or a third party’s benefit, another’s clientele.

61 In a specific, relevant market in view of the standard behaviour.

62 Free ride is also a cause of action to avoid dilutive practices.

63 Presided by a professional mediator not the judge. What is mentioned during this hearing is not taken into account by the judge, who will not know what was said by the parties during the hearing. The aim of this hearing is to attempt to settle the case.

64 All the deadlines, according to the new system, are counted in working days, so that lawyers do not have to work at weekends.

65 The Brazilian system makes use of technologies such as video conferencing. A good number of court files are digital. The BIPO’s records are digital as well.

66 An injunction is a preliminary decision issued at the beginning of legal proceedings in which, at the end, in the case of a favourable outcome, the injunction would be confirmed and the plaintiff awarded damages. Usually, there is a single case to seek the injunction and any other compatible claim.

67 The urgency has two independent approaches: to avoid the plaintiff suffering severe damage (which is difficult to ascertain) or to ensure that the plaintiff will get the benefits of a final favourable decision (avoiding harm thanks to the efficiency of the legal proceedings).

68 True claims are eligible for an injunction relief irrespective of urgency.

69 See Section IV.ii.

70 Federal Law No. 6,759 of 5 February 2009.

71 Article 198. The customs authorities, ex officio or at the request of an interested party, may seize, at the time of checking, any products carrying falsified, altered or imitated marks or a false indication of source.

72 In Brazil, it is mandatory to have a local lawyer to represent a foreign trademark proprietor (Article 227 of the IP Law).

73 Duvel Moortgat v. Cervio Comercio E Industria de Bebidas Ltda. Appeal No. 0254911-82.2014.8.19.0001. 11th Panel. Reporter Judge Luiz Henrique Marques. 20 September 2017.

74 BRF S/A v. Pepsico Incorporation and the BIPO. Internal Appeal in the Special Appeal No. 1,346,089. Justice Moura Ribeiro. 2nd Panel. 15 December 2014.

75 Twogo Agencia de Viagens e Turismo Ltda Epp v. Togo Agencia de Viagens e Turismo Ltda. Appeal No. 1085182-69.2016.8.26.0100. Judge Guilherme Santini Teodoro. 2nd Panel. 29 September 2017.