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Editorial
By Marcio N. Tavares
TRUST, HOPE, A MERRY CHRISTMAS AND A
PROSPER 2009!
All of a sudden we were able to notice the signs of economic disorder, which
has spread throughout all countries, not only due to a globalized world
economic system, but also in consistency with a generalized lack of trust and
credibility in financial values. When the first transnational company filed for
bankruptcy, and there was confirmation that others would do the same, the
world in general sought to assess their own economy. Each nation began to
manage its crisis in an attempt to adjust to a reality, in which short-term
gains weren’t the priority, as it had been before.
The world will not be brought to a hault, people will keep on living and
continue to have needs and companies will try to accommodate - which is
necessary - to real standards that allow society to continue to aid and foster
development. But this time, we hope, in line with a practice that is not based
on figures, which may turn out not to be so reliable.
If we are to follow this path, experience, serious work, organization and
above all, reliability is what counts. In December 2009, Tavares will be
celebrating 35 years of activities. Since its foundation in 1974, Tavares has
always sought to provide their clients with the technical knowledge and
experience acquired since then. Furthermore, it has always demonstrated a
concern with transparency in its services. By doing so, it has earned
credibility and trust by dint of honest and competent work. In this mood,
many of these clients have become friends and the basis of our hope for a
better and more fraternal world.
For all of those who have taken part as clients and friends in the work we
have sought to develop all these years, our most warm thanks for being with
us one more year. We hope that everyone, hand in hand, is able to look
forward to many years yet to come.
Our wishes for a Merry Christmas and a 2009 of great peace, joy and
prosperity!
Subjects
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THE DISTINCTIVENESS
ACQUISITION
THROUGH THE USE OF
BRAND:
THE "SECONDARY MEANING"
Ana Paula Brito
and Natascha Oliveira
THERAPEUTIC
METHOD PATENTS
AND THE CURRENT
APPLICATION OF
ARTICLE 32
Bruno Maini
THE DISTINCTIVENESS ACQUISITION THROUGH THE
USE OF BRAND:
THE "SECONDARY MEANING"
Ana Paula Brito
and Natascha Oliveira
Contrary to the dilution phenomenon of a trademark sign’s
distinctive value, we find in our legal system the doctrine of "secondary
meaning", which consists of the acquisition of distinctiveness due to the use
of a sign that was not at first subject to registration as a mark.
In fact, there are signs that become vulgarized through its use, and there
are signs that, the other way around, from ordinary become distinctive by
virtue of its very use.
The "secondary meaning" is the phenomenon by which a previously weak
sign of ordinary or secondary use acquires distinctiveness through regular
use, as well as due to the investments undertaken by the holder, entitling
the once weak sign to protection with exclusivity since it has attained public
awareness as a first-rate mark.
The Industrial Property Law (Law 9.276/96) does not bring an explicit legal
provision which supports the doctrine of "secondary meaning" but this does
not mean that it is not provided for in our legal system, that it is not
afforded shelter within the Brazilian Intellectual Property system. The Paris
Union Convention - CUP incorporated to Brazilian law by Decree No. 75,572,
in its Article 6 d C11 stipulates that "in determining whether the mark is
subject to protection, all the circumstances of fact should be taken
into consideration, particularly the length of the mark’s use.”.
Therefore, this doctrine sets out that the distinctive effectiveness of a mark
stems from the consumers’ psychological perspective in relation to a product
or service and its use on a regular basis. The phenomenon is commonly
perceived, for example, when a certain usual word from a given language
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takes on a different meaning from the original. It is also worth noting that
when the meaning is said to be secondary, it is an allusion to its origin in
time, rather than related to its level of importance.
A very well known case is the one relative to the trademark “POVILHO
ANTISÉPTICO”. The “Granado” Laboratory made use of that expression for
more than 20 years before having their registration request rejected by the
INPI by virtue of the ban on registering words of merely necessary use. The
matter was taken to court and based on the aforementioned article of the
CUP the registration request was recognized. In other words, what
originated from an everyday item of vocabulary took on a different
connotation in the minds of consumers. In this sense, there are other cases
of secondary meaning, such as what occurs to CONTACT; Volkswagen; PÃO
& CIA, and PÁGINAS AMARELAS (Yellow Pages), among others.
Despite the recognition of the doctrine of "secondary meaning" through the
own consumer’s impression and the issue having already been decided in
some court rulings, there are still no precise boundaries when applying the
doctrine of second meaning in Brazil. Being stricter in regard to
corroborating the force and renown of a mark from the consumer’s
perspective as well as in relation to the own INPI’s opinion, even when it
comes to proceedings in courts of law and state courts, should be the criteria
adopted for better implementation of the "Secondary meaning," or
secondary use, so that judicial decisions are not solely based on the
subjective criteria of Judges and associate justices, not always specialized in
the Intellectual Property area.
By ANA PAULA AFFONSO BRITO
Industrial Property Agent, TAVARES INTELLECTUAL PROPERTY’s
lawyer and associate
and NATASCHA BALLESTERO FERNANDES DE OLIVEIRA,
law intern in the legal department of
TAVARES INTELLECTUAL PROPERTY
THERAPEUTIC METHOD PATENTS AND THE CURRENT
APPLICATION OF ARTICLE 32
Bruno Maini
The therapeutic method patents are not allowed under the
patent legislation currently in force in Brazil; this is what we have according
to article 10 (VIII). However, a host of them are still deposited in the
respective governmental agency. This is largely due to a course of action
widely used, originated in Switzerland, which is to adjust the request and
claims to claims of the Swiss-type, which aim at corroborating the second
use of a certain compound, which may even be under public domain. The
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request is made on the grounds that the compound is used in the
manufacturing of a drug for a specific treatment, which meets one of the
requirements for patentability of inventions, its industrial application.
However, as many patents of the aforementioned type are filed in the
national phase of international applications (PCT), they are submitted to the
INPI in the act of the deposit in accordance with the original application.
Thus, such claims and scope of protection are adequate to the local practices
by dint of the course of action discussed above relative to the application
examination. The Examiner will invoke Article 10, rejecting the request,
what could have been easily avoided considering the subsequent adjustment
made.
Currently, according to the new INPI’s understanding of article 32 of the LPI
and its application, the Examiners of the aforesaid regulatory body are
prohibited to accept changes in the claim after the application examination
request, with the exception of changes when they are demanded by means
of a legal opinion that sets out requirements, or in a way that it restricts the
scope of the invention. Such measure makes the therapeutic method patent
applications which have already had their examination requested and are not
adjusted to the local practices yet, virtually invalid. This happens because
when under examination, they will be rejected and the application holder will
not even have the opportunity to react to an unfavorable decision by
presenting amendments in order to adjust the application with a view to
make it more acceptable in the light of the referred legislation. This is due to
the fact that such amendments will no longer be accepted in accordance with
what article 32 states. There are some who are in favor of the
implementation of this measure, but the consistent majority mainly
comprised of intellectual property agents is against it. However, as any
measure often takes a long time to be adopted or done away with by the
INPI, even before taking any position in relation to this discussion, we
should be prepared and adjust the applications which are relative to this
matter when requesting their examination. Nevertheless, we should not
dismiss the applications which will probably be rejected according to this
new policy. A great debate is being raised with respect to this mainly by
study groups comprised of professionals involved in this field. The concern is
that none of the parties involved is injured. What should be supported and
done in a fair way.
bY BRUNO CONCEIÇÃO MAINI,
TAVARES INTELLECTUAL PROPERTY’s engineer
OPERATION SCHEDULE FOR THE END OF YEAR:
Tavares caters to the interests of its customers during the period between the festivities.
The end of the year celebrations are coming and Tavares takes advantage of
the opportunity to inform its operation schedule for the end of the year:
24 and 31/12/08: we will work until 12:00 p.m.
25/12/08 and 01/01/09: We will be closed.
26/12/08 and 02/01/09: regular working hours.
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NEW YEAR, NEW SITE:
Starting from January, Tavares will have a new website
In January, Tavares will begin the year with novelties for you. Our website
will be back with a new design and new features: information about the
office, downloadable documents, access to previously released newsletters
and the possibility of subscription to receive new editions. There is also a
new “contact us” channel. We are looking forward to your visit!
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