Excellent newsletter about Brazilian IP Law

The work from Daniel Advogados is remarkable. I wold add a link to the electronic address, but I only received it through email.

The contact details for the firm may be find at the end of the post. I'm not associated with them, but it does not prevent me from comending their good work.

SEEKING TO REDUCE THE BACKLOG IN INDUSTRIAL DESIGNS AT THE PTO Alexandre Fukuda Yamashita  After the first quarter of 2014, when it did not grant any industrial design registrations, the Brazilian Patent and Trademark Office (PTO) published ordinance 118/2014, which established the formation of a work group to examine an estimated number of approximately 2,000 industrial design applications by the end of the year. This measure, ordered by Dr. Otávio Brandelli, the new PTO President, resulted from an address made since his nomination as to what would be the main objective of his term in office, namely the reduction in the backlog at the PTO. The work group has the participation and integration of various sectors of the PTO seeking to reduce the delay in the examination of industrial design registrations, which currently is over two years from the date of filing to concession. This period of time is extremely long considering that, according to Brazilian legislation, there is no examination of the merits with respect to the requirements of novelty, originality and industrial applicability (type of manufacture) for an industrial design registration to be granted. Despite the numbers indicating that the PTO has granted few registrations since the beginning of the year, it is important to emphasize that the industrial design department continues with its work. Its staff have been seeking to organize the outstanding and possibly irregular registrations, evidenced by the several publications in this same period that have occurred with respect to the shelving, denial, and dismissal of industrial design registrations. The work group operated between April 15 and May 14. According to PTO sources, the department is currently examining industrial design registrations filed in May 2013. For further information, please contact:alexandre.yamashita@daniel.adv.br

RECOGNITION OF THE INFRINGEMENT OF TRADE DRESS IN THE PACKAGING OF A GENERIC MEDICINE Fábio Leme  In a recent decision, the 6th Chamber of Private Law of the Court of Appeals of the State of São Paulo unanimously ordered, in Appeal No. 0027367-83.2005.8.26.0564, the company EMS S/A to cease the use of a packaging, used for a generic medication (acetylsalicylic acid), which reproduced the trade dress of the same medication, distinguished by the well-known trademark "ASPIRINA", owned by BAYER S.A. Likewise, the appealed decision also upheld the judgment in the first instance for EMS S/A to pay damages for the improper use of the respective trade dress. When providing the reasons for its opinion, the reporting judge took into consideration the manner in which EMS used and began to use the packaging to sell its generic medication, with the prominent intention of drawing closer to the trade dress used by BAYER in the composition of its original product, equally identified or distinguished by the trademark ASPIRINA. Additionally, the opinion also highlighted that, despite the Law of Generics, which allows the use of the same active component that was formerly the object of a third party patent, it does not grant carte blanche to the manufacturer of this generic medication to use all the intellectual property, including distinctive marks, belonging to the third party. This appellate decision serves, therefore, as a warning to those who intend to register and make use of generic medications not to utilize other intellectual property rights of the owner of the original product, which were protected by patent in the past. For more information, please contact: fabio.leme@daniel.adv.br

THE "RIGHT TO BE FORGOTTEN" IN THE DIGITAL AGE Paula Dornelas  In a recent decision by the Court of Justice of the European Union (CJEU), it was ruled that, in certain cases, search providers must remove links that contain information about the private life of Internet users. According to the CJEU, the search provider is obliged to analyze the merits of applications to remove links and, if appropriate, to exclude these links, taking into consideration that "any person has the right to be forgotten on the Internet". The decision was surprising because the previous understanding of the CJEU was that search providers were not obliged to remove links for search results, even if they contained personal information that was prejudicial to an individual. Such was the repercussion of the decision in Europe that, immediately after its publication, in just one day, a particular search provider received over 12,000 requests from users to remove links. In Brazil, the "right to be forgotten" became relevant in the Judiciary with the publication of Precedent 531, of the Council of Federal Courts (CJF), which established that "the protection of the dignity of an individual in the information society includes the right to be forgotten". The precedent was created to guarantee the possibility of discussion of past facts disclosed in the media. Despite the theory of the "right to be forgotten" having already been accepted by the STJ, Brazilian judges and courts have denied requests to remove links. This is because they believe that the search providers cannot be compelled to eliminate results derived from searches from their systems. It cannot be denied that the "right to be forgotten" is a controversial topic that extends, in general, to conflicts between privacy and freedom of expression, which are fundamental rights pertaining to principles and, therefore, abstract in nature. For more information, please contact:paula.dornelas@daniel.adv.br

NEW OFFENSES OF THE GENERAL LAW OF THE WORLD CUP George Lucena  The General Law of the World Cup (Law 12663/2012), which was enacted two years ago with provisions concerning the FIFA 2014 World Cup and other major FIFA events to be held up to this year in Brazil, also created new offenses in the Brazilian legal system. Briefly, the new crimes deal with offenses against industrial property rights belonging to FIFA. These offenses include the falsification, reproduction and improper use of official symbols and registered trademarks, and ambush marketing. However, the most striking aspect is that the law not only has a term of effectiveness but also has what is known as "ultra-activity", which can be applied after the term of effectiveness. In theory, the General Law of the World Cup establishes that the aforementioned offences can only take place until December 31, 2014. However, offenders will be held responsible even after the end of the term of effectiveness of the penal sanctions. The constitutionality of "temporary penal laws" is somewhat controversial in Brazilian Law. On the one hand, the Penal Code establishes the possibility that a law can have "ultra-activity". However, the 1988 Federal Constitution expressly states in Article 5, Item XL, that the penal law shall always relate back when it benefits the defendant. When the offences of the General Law of the World Cup become extinct, the situation most beneficial to the defendant should therefore prevail. In other words, it will be constitutionally very difficult to uphold the effects of the penal sanctions of the General Law of the World Cup after 2014. If a seller was found selling counterfeit FIFA products, it is our belief that the seller would not be liable for the specific offences established in the General Law of the World Cup after December 31, 2014. (Although, in this example, the seller may still be liable for offences against trademark registration, as defined by the Law of Industrial Property). Due to it being unprecedented in Brazilian Law, it is hoped that the constitutionality of the provision of ultra-activity for the offences of the General Law of the World Cup will be discussed by the Federal Supreme Court. For more information, please contact:george.lucena@daniel.adv.br

PRIORITY EXAMINATION IN BRAZIL FOR PATENT APPLICATIONS IN THE PHARMACEUTICAL AREA COMPLETES ONE YEAR Gabriela Salerno  The prioritization of the examination of patent applications for pharmaceutical products and methods, in addition to equipment and materials for public health, was introduced just over a year ago as part of the solution program for the backlog at the PTO. In order to benefit from this, the patent application must refer to the diagnosis, prophylaxis and treatment of AIDS, cancer or neglected illnesses. It is important to record that the PTO has already offered, since 2006, a system for the prioritization of the examination for cases in which: the object of the patent application is being reproduced by third parties without the authorization of the applicant: the grant of the patent is a condition for the obtainment of financial resources from development agencies or official Brazilian credit institutions; or the applicant is 60 years old or over. Furthermore, this system requires that the applicant present supporting documents for the concession of the priority examination. During the period between November 2006 and March 2013, approximately 210 priority examination applications were granted each year. This average has increased to approximately 640 grants after the introduction of the priority examination for patent applications in the pharmaceutical area. Based on the above numbers, it can be deduced that the creation of the priority examination for patent applications related to pharmaceutical products and methods has become a valuable asset, taking into consideration the backlog of about 10 years in the examination of patent applications in this technological area. It is also highlighted how ANVISA has respected the priority examination granted by the PTO because this Agency has examined the applications under this regime in a few months. For more information, please contact:gabriela.salerno@daniel.adv.br

MICROFRANCHISING: THE IMPORTANCE OF PAYING ATTENTION AT THE TIME OF ENTERING INTO A CONTRACT Hannah Fernandes  The Brazilian Association of Franchising (ABF) announced that microfranchises grossed R$ 5.9 billion and achieved growth of 31% in 2013. The concept of microfranchising developed due to the birth of a niche in the market with two significant characteristics: an initial investment of up to R$ 80,000, (around US$ 36,000) combined with the need of only a small physical operating structure, or even none at all. This flexibility frequently resulted in franchisors and franchisees not paying sufficient attention at the time of establishing the legal foundations of the business - which placed at risk the fruition of the benefits initially desired by both parties. Microfranchises are subject to the same legal regulations that are applied to the large franchising systems and the parties have to pay careful attention because the Law of Franchising (Law 8955/1994) applies in its entirety. Accordingly, even though the business structure is less complex and the initial investment of the franchisee is considerably smaller, the legal instruments for the microfranchising networks must be prepared exactly as stipulated by the Law of Franchising. With respect to being a candidate as a franchisee, it is important that all the legal documentation supplied by the franchisor is carefully analyzed, in order that the candidate can confirm that the business model is actually suited to his/her profile. Service microfranchises form the largest portion of the market and it is important that the candidate ensures that he/she receives the required training from the franchisor, especially in areas in which the candidate may be inexperienced. Undoubtedly, microfranchising fills a gap in the Brazilian franchising system. Paying careful attention at the time of entering into a contract is an effective means of guaranteeing that new investors achieve their goals. For more information, please contact:hannah.fernandes@daniel.adv.br

ANVISA SHOULD NOT ANALYZE REQUIREMENTS OF PATENTABILITY Breno Akherman  After the amendment to the Law of Industrial Property, in 2001, the grant of patents for pharmaceutical inventions became dependent on the prior approval of ANVISA, the Brazilian Health Authorities. In the absence of regulation by this legal provision, the Agency regulated the issue internally, deciding it would analyze requirements of patentability. At the time, patent applications were sent to ANVISA after the PTO examination. This was changed approximately two years ago, when the Agency began to examine the requirements before the PTO. This issue caused disputes in the Federal Courts, with the filing of several court actions by companies who had their patent applications denied by ANVISA due to a failure to satisfy the requirements of patentability. In recent decisions issued by two courts specialized in Industrial Property in the Federal Court of Rio de Janeiro, in court actions in which the objects were patent applications that came from different areas, Federal Judges Eduardo Brandão and Marcelo Leonardo Tavares upheld the understanding that it was not the responsibility of ANVISA to analyze requirements of patentability. The Agency should be limited to analyzing issues that concerned public health. Despite this understanding having been issued by the Regional Federal Appellate Court of the 2nd Region, ANVISA continues to analyze the requirements of patentability of patent applications that are sent to it, which will undoubtedly keep the dispute going in the Brazilian courts. For more information, please contact:breno.akherman@daniel.adv.br

THE PTO TO RELEASE A TRADEMARK EXAMINATION MANUAL IN JULY André Oliveira  In an address given on June 3, 2014, the Director of Trademarks of the PTO, Vinicius Bogéa, announced that a new trademark examination manual is to be released by the PTO in July. The document will consolidate and update the different understandings established in Ordnances, Resolutions and other internal sources. Among the new topics to be dealt with are; the possibility of the correction of the nominative element of the filed trademark, provided that the typing error is proven; the reduction in bureaucracy to corroborate priority abroad, and; greater flexibility in relation to the removal of the non-registrable elements from a trademark, such as geographical indications. It is important to emphasize that the manual was discussed and prepared in collaboration with the Brazilian Association of Industrial Property (ABPI), which made the process more transparent and the conclusions more appropriate to the needs of the system's users. For more information, please contact:andre.oliveira@daniel.adv.br