March 29, 2010

1. Comparative study of legislation and examination practices concerning trademarks in Brazil and Japan Silvia Rodrigues de Freitas March 29, 2010

2. About the research • Objective:To evaluate if it is possible to adopt some of the differences of Japanese law and/or practice to Brazilian law and/or practice with benefit to the trademark examiners, applicants and consumers. • Steps: • To study the evolution of trademark laws in both countries; • To compare the trademarks laws and practices of both countries; • To select somesignificant differences and analyze them closely: • Secondary meaning • Disclaimer system • Opposition system

3. Evolution of Trademark Law

4. ComparisonRegistered vs. unregistered trademarks

5. ComparisonRegistered vs. unregistered trademarks Brazillian exceptions: The good faith prior user:Every person who, in good faith on the priority or filing date, has been using an identical or similar mark in this country for at least 6 (six) months to distinguish or certify an identical, similar or alike product or service shall have the right of preference for the registration. Owner of a well-known foreign trademarkThe well-known mark within its branch of activity pursuant to Article 6bis (I) of the Paris Convention for Protection of Industrial Property enjoys special protection, regardless of whether it has already been filed or registered in Brazil. The owner of a foreign trademark that the national applicant could not claim to be unaware of (art. 124, xxiii).…because of activity or market segment, or because of the relationship between the parts. Dependent on existence of treaty or agreement between Brazil and the country of the foreign holder.

6. Comparison:Registered vs. unregistered trademarks In the previous3 cases, the holder of the unregistered trademark must oppose (in the first case) or ask for an invalidation, giving proof of the claims, and must apply for registration of the trademark in Brazil up to 60 days after the filing of the opposition or the invalidation. Otherwise, there is no other administrative procedure. The only remaining way is the court (judiciary).

7. Comparison: Definition of use

8. Comparison: Similarities

9. Comparison: Collective Marks

10. Comparison: Regionally Based Collective Marks

11. Comparison: Certification Mark

12. Comparison: Well-known marks

13. Comparison: High Renown marks in Brazil Article 125: A mark that is registered in Brazil and considered to be of high renown shall be assured special protection in all branches of activity. A resolution published in 2005 regulates it. The recognition of a mark`s high renown must be sought in the framework of an opposition or invalidation proceeding, either by the opponent/complainant or by the party against whom the opposition or invalidation proceedings have been instituted. The claimer of the recognition of high renown of a mark must produce supporting evidence. Once the high renown of a mark is recognized, this status is valid during 5 years, and all other opposition or invalidation requests can claim it without producing evidence. The high renown mark is protected in all classes. No defensive marks system is necessary.

14. Comparison: Well-known marks in Brazil Article 126:The well-known mark within its branch of activity pursuant to Article 6bis (I) of the Paris Convention for Protection of Industrial Property enjoys special protection, regardless of whether it has already been filed or registered in Brazil. Trademarks not necessarily registered in the country. The mark must be known in Brazil, and this fact must be corroborated by documentary evidence. This knowledge does not need to be general, it may be limited to the specific field of business. The applicant shall apply for registration within a maximum period of 60 days after submission of any challenge that is based on this article. This provision can be used as reason for refusal ex officio by the examiner, but the examiner shall provide de evidence that the mark is known in Brazil.

15. Comparison: Other differences regardingnon-registrable signs

16. Comparison: Secondary Meaning

17. Comparison: Disclaimer

18. Comparison: Amendments and Demands

19. Comparison: Cancellation due to non-use

20. Comparison: Division and conversion of applications

21. Comparison: Administrative trials

22. Comparison: Renewal

23. Comparison: Processing of the application in Brazil APPLICATION FORMAL EXAMINATION 60 days PUBLICATION ON THE GAZETTE OPPOSITION 60 days for answer of the applicant If a demand is not answered, the application is dismissed. DEMANDS EXAMINATION ACCEPTANCE REFUSAL 60 days PAYMENT OF THE FEES 60 + 30 days APPEAL Decision revised REGISTRATION Decision maintained 180 days 5 years DISMISSAL ADMINISTRATIVE PROCESS OF NULLITY NULLITY TRIAL After 5 years CANCELLATION DUE TO NON USE

24. Analysis of some major differences: Secondary Meaning

25. Analysis of some major differences: Secondary Meaning

26. Analysis of some major differences: Disclaimer

27. Analysis of some major differences: Disclaimer

28. Analysis of some major differences: Opposition System

29. Analysis of some major differences: Opposition System

30. Conclusions Secondary meaning: In the surveyed countries, the majority recognizes the possibility of acquiring distinctiveness through use. Each has its own criteria for recognition, but most follow the same line to request opinion polls and other documents. It is observed that the examination of these cases is more complex than the inherently distinctive marks. In Japan, the secondary meaning has been recognized for a long time, and the JPO has rules that define criteria for assessing whether a mark has acquired distinctiveness through use or not. Even if attorneys do not agree on the quality of the criteria or the examination, this is one issue to be discussed in the appropriate existing forums in Japan. In Brazil, the secondary meaning does not have legal provision in the Industrial Property Law, while in principle it is contained in the Paris Convention, of which Brazil is signatory. Attorneys believe that there are marks with secondary meaning not recognized in the country, which are forced to appeal to the courts to have the rights acknowledged. Therefore, a discussion on this subject is opportune both within the BPTO and in conjunction with the associations of attorneys.

31. Conclusions Disclaimer system: In the surveyed countries, although most have a disclaimer system, it is voluntary or not completely enforced. The voluntary system can be corrected or not by the local PTO. Criteria detailed on the system were not found (except for the U.S., which is voluntary, but can be adjusted by the examiner according to clear and public criteria). It seems to be a system that is gradually falling into disuse. In Japan, in general, everyone seems satisfied with the current situation of the abolition of the system. It does not cause problems with regard to examination, or the filing of Japanese trademarks abroad. In Brazil, on the other hand, this is a subject that generates much discussion among those in favor and those against. Although attorneys are mostly in favor, all of them questioned the lack of clear criteria and quality of published disclaimers. It is recommended to conduct a more general discussion about the possibility for abolishment or changing the way the disclaimer system is applied in Brazil.

32. Conclusions Opposition system: Different systems of opposition exist in the surveyed countries. Most of them are pre-grant, but in some, the period when a opposition may be filed is after the substantive examination. The responses to the questionnaires indicate that both countries have not been fully satisfied with their oppositions systems. In Brazil there is the problem of large amount of unnecessary and frivolous oppositions delaying the first examination , while in Japan, there is a problem of uncertain legal status of trademarks during the period in which an opposition may be filed. This seems to be a case in which discussions between attorneys and the PTOs should be undertaken to improve both systems.

33. Conclusions Harmonization There seems to be a general consensus that the harmonization of laws is essential for trade facilitation and protection of the rights of both holders and consumers. The big problem of harmonization is that it often goes against the cultural background and domestic interests of each country and the principle of territoriality of laws. Total harmonization seems to be impossible, as there are simply too many irreconcilable differences in language, legal culture, and judicial systems among nations. What is possible is to provide an approximation of different rules in order to minimize any conflict that their differences might generate… not necessarily implying the replication of rules. International and regional treaties may make this approximation possible.

34. Thank you!