Brazil's Best Counsel 2020 - Chapter Opening: Trademark Litigation

The Challenges of the Madrid Protocol

The Madrid Protocol is knocking on Brazil’s door. After an almost two de­cade wait, President Jair Bolsonaro’s ratification of the treaty occurred in July 2019. Several measures have been implemented by the Brazilian Patent and Trademark Office (BPTO) to meet the treaty’s standards. One of the main necessary adjustments was reducing the length of the examination timeline. This procedure previously took around three years and now only requires 10 months, an even shorter period than the 18 months required by the Proto­col. Despite the debates among Brazi­lian IP professionals regarding the even­tual need to alter Brazilian legislation to avoid certain conflicts with some of the Protocol’s requirements, its adoption is viewed as a positive factor in expanding Brazil’s presence in international trade.

Needless to say a swifter analysis will make the BPTO more vulnerable to mis­takes. As such, the number of lawsuits challenging administrative decisions, such as nullity actions against the vali­dity or rejection of a trademark register, are expected to grow. Nullity actions require the participation of the BPTO in the dispute and shall be filed before Federal Courts during a period of 5 years counted from the publication of the BPTO’s decision that granted or re­jected the trademark. An injunction for the immediate suspension of the effects derived from the granting of a trade­mark can be sought and a Lower Court’s Judge will take around 1 to 1.5 years to rule on the merits of the matter.

The prospective increase of trademark applications due to an internationally simplified registration system in Brazil should lead to more trademark registra­tions. Therefore more conflicts should arise between competitors based on in­fringement. Infringement and non-in­fringement disputes should be brought before Civil Courts.

Preliminary injunctions are strongly recommended in infringement and non-infringement lawsuits. In Brazil, there are two types of injunctions: ur­gent relief (usually ex parte) and evi­dence-based relief. Strong evidence on the infringement is required and in case of urgent relief it is crucial to demons­trate the concrete fear of irreparable or hardly reparable injury.

The burden of proof in trademark li­tigation is borne by the Plaintiff and some judges, depending on the case, deem expert examina­tions necessary. If so, the duration of the law­suit will be extended and the related costs increased.

Brazilian LPI provides specific criteria for da­mages calculation, as sets forth in in its articles 209 and 210.

The timeline for a Lower Court Procee­ding is usually around 1 to 1.5 years and before the Court of Appeals it takes approximately 2 years. Appeals filed to the Superior Courts (STF and STJ) take about 3 years to be judged.

With regards to litigation, one of the main impacts of adhesion to the Ma­drid Protocol lies in the possibility of having a trademark application filed by a foreign company or person without an attorney in Brazil. Presently, according to article 217 of Brazilian Industrial Property Law (LPI), the person domi­ciled abroad must appoint and retain an attorney duly qualified and domiciled in this country with powers to repre­sent that person in administrative and judicial proceedings, including receipt of summons. This provision has gua­ranteed that, in case of a lawsuit, a locally domiciled attorney would be served of summons in Brazil, instead of the trademark titleholder domi­ciled abroad. This legal solution aims to simplify and expedite proceedings, aside from avoiding the bureaucracy of serving summons to a foreign country through a letters rogatory. Promises have been made by the BPTO stating that WIPO could collaborate on this matter serving summons to foreigners through a notification in its Official Gazette.

Most li­kely this proceeding would be vulnerable to nullity in view of Brazilian current Ci­vil Procedure rules.

The exemption of the obligation set forth in article 217 of LPI will not prevail in case the trademark is challenged during the administrative procedure before the BPTO, given the fact that for filing answers to op­positions or appeals an attorney in Brazil must be appointed. Therefore the bur­den of serving summons abroad will be mitigated in such cases.

Notwithstanding the challenges fo­reseen in litigation and potential le­gislative adjustments, the adoption of the Madrid Protocol is certain­ly a fundamental step towards the development of Brazil’s role in the globalized economy.

ABOUT THE AUTHORS

João Cunha and Laetitia d’Hanens are both senior partners with over 20 years practicing IP law. While João is the head of the litigation team providing strategy and risk assessment in all IP conflicts, Laetitia is head of the Consultancy and Contracts department, rendering IP advice and transactional services, including the negotiation and closing of IP partnerships. Amanda De Siervi is a partner with 16 years of professional experience specialized in IP litigation.

Amanda Fonseca De Siervi

E-mail: adesiervi@glpi.com.br  Phone: +55 11 2149-4687

Laetitia Maria d'Hanens

E-mail: ldhanens@glpi.com.br  Phone: +55 11 2149-4504

João Vieira da Cunha

E-mail: joaocunha@glpi.com.br  Phone: +55 11 2149-4514