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araripe@araripe.com.br | +55 (24) 2103-2200 

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The first case of the new coronavirus in Brazil was confirmed in February 26, 2020, in Sao Paulo[1]. Our country since then has had to adapt to what is referred to as “a new normal”.

Given this new globe scenario, new consumer needs and habits took place. These needs and habits challenged many entrepreneurs to develop new business management strategies, mainly in publicity and sales through digital media.

Consequently, the registry of mark became even more important since the Internet and social networks are the main ways of advertising and selling products and services. According to Ebit/Nielsen findings, new consumers online went up by 13 million, in Brazil, in 2020 – the highest in the last 13 years[2].

This rise of online consumers is reflected in a significant increase in the volume of requests for registry of mark which the Brazilian Patent and Trademark Office (INPI) received in the same year (2020). The INPI is the sole competent federal agency responsible for registration of trademarks. According to data published by SEBRAE[15]:

“[…]” the volume of requests for registration before the INPI reflects a growth of 19% in micro and small businesses. In 2019, 254 thousand applications were filed before the INPI, of which 160 thousand were made by MEI (individual micro and small businesses). In 2020, 275 thousand applications for were filed, 126 thousand of which were from small businesses”. [3]

Due to the broad impact of the pandemic in 2020, it is no surprise that most searched word on google was “CORONOVIRUS” [4]. The terms “CORONOVIRUS” [4] and “COVID” were obviously seen as commercially exploitable as trademarks for products and services.

We carried out a study based on INPI data of the terms “COVID”/ “CORONAVIRUS” (Portuguese word for Coronovirus). The aim of our study was to analyze the impact of the pandemic and its legal implications within the sphere of trademark legality.

Through this study, we verified that between March 2020 and May 2021, there were 82 applications for trademarks using the terms “CORONAVIRUS” and “COVID”. Our objective was to protect products and services in diverse market segments. This brought up interesting questions, especially related to the possibility of a specific owner of trademark to have exclusive use of the above-mentioned terms in order to identify product or service, as long as such product or service were not in the health segment.

The INPI granted registration to trademarks with names of diseases, in the past, such as: CATAPORA (varicella, chicken pox) to identify publicity[5] and entertainment[6] and even permitted its use in identifying clothing [7]. Nevertheless, all of the above, refer to very old decisions.

Recent decisions over the last 24 months, show that the first application for the use of CORONAVIRUS[8], as a trademark in Brazil, was made in March 3, 2020 to identify the commercialization of, among others, “Chemical and Pharmaceutical Preparations”. The decision to reject this application was published in October 6, 2020, based on: (i) INPI Law, Article 124, item VI which states that the description of a trademark without sufficient distinctive elements; as well as (ii) pre-existing registration number 901655678 referring to the mark “CORONA” granted in April 12, 2012 to identify “chemical substances, textile materials and artificial resins”.

Since this rejection, the INPI has made other decisions granting registration for trademarks with the term COVID as part of name, as well as other terms to identify treatments, health care associations to combat COVID, apps, and even anti-slip carpets.

In April of 2021, the INPI granted registration for a trademark with the term COVID to identify alcoholic beverages, with the understanding that trademarks using this term in their name, per se, do not infringe on LPI Law, Article 124, item III.

“Article 124 – The following are not registrable as marks: (…)

III – expressions, figures, drawings or any other sign contrary to morals and good customs or which offend a person’s honour or image or are an affront to the liberty of conscience, beliefs, religious cults or to ideas and sentiments worthy of respect and veneration;

The INPI reiterated further, the need for the examinator to verify the distinctiveness[10], veracity[11] and legitimacy, as well as, the connotation which a term takes on when used with the intent of identifying products and services. Moreover, it highlighted that a term must never offend the sentiments of respect dignity or sacredness.

“Marks with the term “COVID” are not in and of themselves an infringement of item III of article 124, of LPI. In the analysis applying to this item the connotation of the term “COVID” when used for certain products or services should be verified that it is not used against ideas or feelings considered worthy of respect or sacredness. Furthermore, the registrability of a mark ought to be analyzed with respect to its legal requirements, such as: distinctiveness, veracity, and the legitimacy of the applicant. The possible application, specifically items VI and X, should to be evaluated with special attention to descriptiveness as potentially misleading in relation to products and services[12].

The federal agency INPI, however, denied an application[13] for mark ANTICOV-19 to identify “Clothes making”, based on LPI Law, article 124, item X, understanding that it was falsely identifying its use/quality[14]

“Article 124 – The following are not registrable as marks: (…)

X – signs that suggest a false indication with respect to origin, source, nature, quality or utility of the product or service to which the mark is directed;

Thus, what is or is not directly related to the products or services in request for registration of trademark defines whether there is a denial of application, or not, using the terms COVID or CORONAVÍRUS, as well as an analysis of a possible infraction as defined in LPI Law, Article 124, items III, VI, X and XIX.

Therefore, it is highly recommended that before filing a trademark application, using such terms, a trademark availability search of these terms be carried out.

 


To learn more about the importance of a trademark availability search, please click here

[1] MINISTRY OF HEALTH (Federal Government – BRAZIL). National and international reaction to the new coronavirus. Available at: https://coronavirus.saude.gov.br/linha-do-tempo. Accessed in: March 05, 2021.

[2] G1 – Economy – Technology (BRAZIL). New consumers online went up by 13 million, in Brazil, in 2020; and revenue increases by 41%. Available at: https://g1.globo.com/economia/tecnologia/noticia/ 2021/03/29/faturamento-de-lojas-on-line-cresce-41percent-em-2020-maior-alta-em-13-anos.ghtml Accessed in: March 05, 2021

[3] SEBRAE – Sebrae News Agency (BRAZIL). Number of trademark registry requests by small businesses grows 19% during the pandemic. Available at: http://www.agenciasebrae.com.br/sites/asn/uf/NA/ numero-de-pedidos-de-marcas-por-pequenos-negocios-cresce-19-durante-a-pandemia,e936ff75f44 19710VgnVCM100000d701210aRCRD Accessed in: March 05, 2021

[4] G1 – Economy – Technology (BRAZIL). Google publishes the most searched terms in Brazil and in the world in 2020. Available at: https://g1.globo.com/economia/tecnologia/noticia/2020/12/09/lista-google-divulga-os-termos-mais-buscados-no-brasil-em-2020.ghtml Accessed in: March 04, 2021

[5] Registration of CATAPORA as mark (number 810812010), granted in November 22, 1983. Registration expired in March 31, 1994. Access through the INPI Database Consultation Portal. Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[6] Registration of CATAPORA as mark (number 810812029), granted in November 22, 1983. Registration expired in March 31, 1994 Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[7] Registration of CATAPORA as mark (number 909494738); requested in June 06, 2015 and granted in November 22, 1983. Registration expired in March 31, 1994 Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[8] Registration request of CORONAVIRUS as mark (number 919314376), requested by HILA INDUSTRIA E COMÉRCIO DE FRAGRANCIAS LTDA – ME. This request was made to identify, by whatever form, the following trades: disinfectants; pharmaceutical preparations; hygienic preparations for medical use; products for combatting vectors, fungicides, and herbicides; soaps; chemical substances intended for industry. All under classification 35.

[9] Registration of COVID mark (number 919425216), granted in April 04, 2021, requested by LIA E BARBOSA SOCIEDADE DE ADVOGADOS. This request was made to identify the following: “Syrup drink; Non-alcoholic energy drink; Non-alcoholic fermented beverage; Energetic drinks; Isotonic drinks; Non-alcoholic beverages; Beer; Non-alcoholic preparations for making beverages; Syrups for drinks”. All under classification 32

[10] According to the item 5.9 of the Brazilian Trademark Manual Distinctiveness is one of the fundamental requirements for the validity of a trademark. When the law refers to distinctive marks (Article 122 of the LPI), a decision is reached that this requirement is directly related to the functionality of the mark. Thus, it distinguishes the indicated object, by differing the mark from others of the same genus, nature, or species. The Brazilian Trademark Manual is available at: http://manualdemarcas.inpi.gov.br/ projects /manual/wiki/05_Exame_substantivo#59-An%C3%A1lise-do-requisito-de-distintividade-do-sinal-marc%C3%A1rio Accessed in: March 05, 2021

[11] According to the Brazilian Trademark Manual, item 5.10, the principle of non-deceptiveness of the mark is stated in the article 124 of LPI. It forbids mark registration in cases of misleading terms as to the origin, source, nature, purpose or usefulness of the product or service for which the mark is intended. The Brazilian Trademark Manual is available at: http://manualdemarcas.inpi.gov.br/ projects /manual/wiki/05_Exame_substantivo#59-An%C3%A1lise-do-requisito-de-distintividade-do-sinal-marc%C3%A1rio Accessed in: March 05, 2021

[12] legal opinion on granting decision of the Registration number 919425216, which was made public by the INPI in March 16, 2021.

[13] Registration request number 920065627, referred to AntiCovid-19, filled in July 03, 2020. The petition was rejected in February 17, 2021.

[14] legal opinion on granting decision of the Registration number 920065627, which was made public by the INPI in February 17, 2021.

[15] Comment for translation. SEBRAE is the acronym for: Serviço Brasileiro de Apoio às Micro e Pequenas Empresas, which means Brazilian Support Service for Micro and Small Businesses

patentes-e-marcas

Prior to the 1996, the Industrial Property Law (from now on, referred to as LPI), pharmaceutical products were excluded from patent protection in our country. In April of 1997, under the above-mentioned law, chemical pharmaceutical inventions and transgenic microorganisms came under the protection of this law. There followed a heated debate about granting exclusive rights and its impacts on the price of medication versus the positive effects of covering the investments made in research to develop new drugs. Information pertaining to patent requests to the Brazilian Patent and Trademark Office (from now on, referred to as INPI) and the benefits to the economy as a whole were made public.

If, on one hand, the granting of patents establishes proprietary rights and exclusive use in production – a right of temporary monopoly of ideas and their refinement, it also protects the creativity involved. On the other hand, it is acknowledged that granting such exclusivity stimulates the competition among companies. The pharmaceutical and biotechnological companies are no exception. Intellectual property assets, including patents, are exponential values to modern companies. These assets are sometimes superior in value to the sum of all other of the company’s assets. Consequently, they become an important standard to the price of the company’s stock on the stock market or related financial transactions, of type I,merger or plain sale.

Current legislation allows granting patents to pharmaceutical products and processes, as well as, transgenic or microorganisms, i.e., through genetic engineering, as long as they fulfill the requisites of novelty, inventive step (not something obviously due to a technique) and industrial. However, elements found in nature are excluded here.

Once our legislation is aligned with the dominant international system, our country can begin to foster innovation in this field as well. The Brazilian pharmaceutical market, as we write this, is estimated at 102 billion Reais, which includes retail and institutionalized market sales. Brazil is the 15th largest market in this segment. Our industrial production of medication – drugs – is extremely significant, whereas our per capita consumption is less than 10% of that in some of the richer countries. The potential for growth in this sector is enormous. This explains the continuous entry in this market of large numbers of new Brazilian and foreign laboratories.

There are still some persistent blockages in patent concession. Some blockages are ideological and others simply bureaucratic. Our National Sanitary Supervisory Agency (from now on, referred to as ANVISA) and its current role has been a subject of concern under discussion. A Provisional Measure (Executive Act) 2.006/1999, was added to the LPI, in article 229-C. It states that “The concession of patents to pharmaceutical products and processes will depend on the previous consent from ANVISA”. The debate is over the interpretation of “previous consent” and where it applies. The question is: are we considering Brazilian legislation and interpretation or are we considering agreements Brazil has with World Trade Organization (WTO) and maxims of TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights)?

Many hold that there was no intent in this legislation to remove the INPI from its original competency: to examine requests for pharmaceutical patent. Nor was it to set up a second examination for patentability, but simply to protect social interests in specific cases. The truth of the matter is that this article 229-C has blocked the necessary agility in examining pharmaceutical patents. This has led to a judiciary discussion as to ANVISA’s role.

The Federal Senate approved amendments to the original text of the Provisional Measure (executive act) number 1040, (MPV 1040/2021), in the beginning of August 2001. These amendments were intended to modernize the business environment in Brazil. Among these legislative proposals to amend the original text MPV and its article 57 (XXVI) is to revoke article 229-C of the LPI. These proposals have gone to the House of Representatives to be voted by August 26, 2021. If they are approved and eventually become law, the “previous consent” from ANVISA in the patent process in examining pharmaceutical patents will be dispensed.

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Among the most deserved critics of the Brazilian Patent and Trademark Office (BPTO) was its long-lasting and extreme backlog in the examination of both patent and trademark applications. Several reasons could be listed for such a chaotic situation, varying from lack of the government´s political interest in solving the matter to plain inefficiency of the group who governed the institution.

 

But things have changed, and one must recognize the tireless efforts made to bring the BPTO to a pattern of service closer to what one would expect from such an important government instrument of business and technology development.

 

It all started with Brazil´s decision to join the Madrid Protocol and its absolute need to reduce the 3 year it was taking to examine a trademark application, to the 18 months established by the agreement to run applications filed under this system. The results are that now 7 months are sufficient to examine both national and foreign trademark applications, through a modern and efficient electronic procedure, with very little impact in the quality of the decisions issued.

 

It was only natural that the same modernization strain would be applied to patent examination. The average time for examination to begin (first office action), once requested, went from 8 years in 2015 to 3 years in 2021. Again, a political decision to tackle the problem was crucial to obtain such a substantial reduction. Our PTO´s decision to accept foreign examinations of equivalent applications, as valid aid to expedite cases filed in Brazil, played a major roll in achieving such an impressive result. The 6.2 code office action will be remembered as the turning point for the backlog tackle.

 

Announcements to join, as a contracting party, various international agreements, such as the Hague Apostille and the Budapest Treaty, denotes how serious the current administration is to bring the BPTO to international standards.

 

But there is a lot more to do to keep and enhance the standard of services expected by the investors and users of the Brazilian Patent System. Modernization of the BPTO, hiring of new examiners, establishment of individual examination targets and management of remote work is not an easy task, moreover, considering the restrictions imposed in the public sector. On the top of such internal challenges, convincing the government and congress to finally approve its financial independence will be a keen step to enable our PTO to fulfill its purpose.

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Rua da Assembléia, 10 Gr. 3710
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Porto Alegre RS Brasil
Tel. +55 (51) 3377-9980

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