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					  Comparative study of
         legislation and
 examination practices
concerning trademarks
    in Brazil and Japan

  Silvia Rodrigues de Freitas


              March 29, 2010
                    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 some significant differences and analyze them closely:

    Secondary meaning
    Disclaimer system
    Opposition system
           Evolution of Trademark Law

                                        BRAZIL   JAPAN
First IP Law                             1809    1884
First Trademark Law                      1875    1884
Accession to Paris Convention            1883    1899
Adoption of goods classification         1923    1884
Opposition                               1923    1921
Protection of well-known marks           1967    1909
Service marks                            1967    1991
Collective marks                         1996    1996
Tridimensional marks                     1996    1996
International Classification of goods
                                         2000    1991
and services
Acession to Madrid Protocol               -      1999
                 Comparison
    Registered vs. unregistered trademarks

         Only registered trademarks are recognized under Brazilian Law
         (art. 129)
              “The property of a mark is acquired by means of
              registration, when validly granted pursuant to the
              provisions of this Law, and its exclusive use throughout
              the national territory is assured to the titleholder.
BRAZIL
         There are 3 exceptions:
         • The good faith prior user (article 129, paragraph 2)
         • Owner of a well-known foreign trademark (art. 126)
         •The owner of a foreign trademark that the national applicant
         could not claim not knowing (art. 124, xxiii).


         The Japanese act recognizes unregistered trademarks in
JAPAN
         several provisions, including article 32 and article 4 (1) (xix).
                  Comparison
     Registered 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 trademark
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.
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.
                 Comparison:
    Registered vs. unregistered trademarks



In the previous 3 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).
                        Comparison:
                       Definition of use

         No provision in the law.

       Brazilian guidelines give examples of what is considered to be
       use of a trademark in order to prove it in case of a request for
BRAZIL
       cancellation for non use.

         Any means are considered.

         Art. 2(3): “Use” with respect to a mark as used in this Act shall
         mean any of the following acts:
JAPAN    (…)
                         Comparison:
                          Similarities
        Anything that can lead to confusion, such as:

       * Sound, appearance and meaning
       * Translation of foreign words
       * Characters different from the Roman alphabet such as
BRAZIL Japanese, Chinese, Arabic, etc… are considered drawings.

        Similarities that the goods and services are based upon: type,
        use, consumer, etc. There is no similarity classification for
        goods and services like in Japan. The office uses only the Nice
        Classification.
        Sound, appearance and meaning.

JAPAN   Roman alphabet is considered text.

        Similarity classification for goods and services.
                        Comparison:
                       Collective Marks
         A collective mark is one that is used to identify products or
         services provided by members of a certain entity. Art 123 (III)

       Registration of a collective mark may be applied for by a legal
       person that represents the collectivity, which may engage in an
BRAZIL activity other than that pursued by its members. Art. 128 (2)

         The application for registration of a collective mark shall
         contain regulations on utilization, that provide conditions and
         prohibitions on the use of the mark. Art. 147

         Any incorporated association established pursuant to Article
         34 of the Civil Code (Law No. 89 of 1896), any other association
         established pursuant to a special law including industrial
JAPAN    business cooperative associations (except those which are not
         legal entities), or a foreign legal entity equivalent thereto shall
         be entitled to obtain a collective trademark registration with
         respect to a trademark to be used by their members. Art. 7
                   Comparison:
         Regionally Based Collective Marks

       Equivalent to Geographic Indication, which is a different kind
       of Industrial Property in Brazil and has specific procedures for
       registration.
       Geographic Indication can be asked for any good or service.
BRAZIL
       Only the name of the place.
       Art. 124 (ix) forbids the registration of geographic indications
       as trademarks, even if the applicant is a legitimate user of the
       indication.


         Art. 7-2 regulates it.
JAPAN    Special kind of association.
         Name of the place + name of the good or service.
                        Comparison:
                      Certification Mark
         Art 123 (II): one that is used to attest to the conformity of a
         product or service with certain technical standards or
         specifications, particularly regarding its quality, nature,
         material used and methodology employed;
       Art. 128 (3): Registration of a certification mark may only be
       applied for by a person who has no direct commercial or
BRAZIL industrial interest in the product or service being certified.
         Art. 148: The application of a registration of a certification
         mark shall contain:
         I. the characteristics of the product or service that is the
         object of certification; and
         II. the control measures that will be adopted by the titleholder.



JAPAN    No provision.
                        Comparison:
                      Well-known marks
         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.
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.

         art 4 (1)(x): is well known among consumers as that indicating
         goods or services in connection with another person’s business
         (…)
         art. 4(1)(xv): is likely to cause confusion in connection with the
         goods or services relating to a business of another person
JAPAN
         (except those listed in items (x) to (xiv) inclusive);
         art 4(1)(xix): is identical with, or similar to, a trademark which is
         well known among consumers in Japan or abroad as that
         indicating goods or services relating to a business of another
         person, if such trademark is used for unfair purposes (…)
                   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.
                    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.
                     Comparison:
              Other differences regarding
                 non-registrable signs
         Surnames: registrable. If famous, only with authorization.
         Civil names: with authorization or an explanation that the name
         doesn’t belong to anyone.
BRAZIL Geographic names: registrable, since the place is not known for
       the goods or services assigned.
         Slogans and catch phrases: unregistrable even with any
         distinctive part. Advertisement expressions are prohibited.
         Surnames: if common, it is not registrable. If famous, only with
         authorization.
         Civil names: If there are 2 people with the same name, only with
JAPAN    authorization of the second person.
         Geographic names: usually prohibited (place of origin or sale)
         Slogans and catch phrases: registrable if accompanied by a
         distinctive part.
                       Comparison:
                    Secondary Meaning


       No provision. Brazillian law does not recognize the acquisition
       of distinctiveness through use. The recognition of trademarks
BRAZIL
       with secondary meaning is only possible through the judiciary
       way.


         Art. 3 (2): Notwithstanding the preceding paragraph, a
         trademark that falls under any of Items (iii) through (v) of the
         preceding paragraph may be registered if, as a result of the use
JAPAN
         of the trademark, consumers are able to recognize the goods
         or services as those relating to a business of a particular
         person.
                           Comparison:
                            Disclaimer

          Although there is no provision in the law, the practice is the
          use of a non-claiming right system.
          The disclaimer is written by the trademark examiners.
BRAZIL As it is considered a partial refusal, it is subject to a partial
       appeal from the decision.
          The examiners have a basic manual about how and in which
          cases to use the disclaimer.


JAPAN     The non-claiming right system was abolished in Japan in 1959.
                   Comparison:
              Amendments and Demands
         The applicant can ask for amendments regarding classification
         or goods and services. The application will be corrected and
         published again. Any amendments regarding the trademark will
         be dismissed.
BRAZIL When an examiner finds any problem with the application as
       regarding the classification/the designated goods and services
       or the lack of documentation, a demand for correction will be
       issued. If the applicant does not answer within 60 days, the
       application will be dismissed.
         The applicant is allowed to amend the designated goods or
         services, provided that the amendments do not substantially
         extend the scope of goods or services. Regarding the mark,
         Japanese practice allows the deletion of incidental part of a
JAPAN    subject trademark.
         If the examiner finds problems in the content and scope of
         designated goods and services (it is unclear, not in compliance
         with the designated class), the examiner will publish a
         notification of refusal.
                   Comparison:
            Cancellation due to non-use


BRAZIL 5 years


JAPAN   3 years
                 Comparison:
    Division and conversion of applications



         There is no provision of division or conversion of applications
         because Brazil:
BRAZIL
             Uses a uni class system.
             Is not part of the Madrid Protocol.




JAPAN    Provisions for division and conversion:
                      Comparison:
                    Administrative trials


         Opposition and cancellation due to non use: decided by the
         examiner

BRAZIL Appeals and administrative nullity process: decided by a
       different division (specialized examiners write a report and the
       attorneys decide).
         No hearings are allowed.

         Oppositions, cancellations, appeals and invalidations are
JAPAN    decided by administrative courts (3 or 5 examiners).
         Hearings are allowed.
                          Comparison:
                            Renewal

         During the 12 months preceeding the end of term + 6 months
         (with a fine).
BRAZIL

         Renewal for the next 10 years.

         During the 6 months preceeding the end of term + 6 months


         Possibility of restoration within six months after the end of the
         additional period of 6 months after the end of the term, but only
JAPAN    in cases where the renewal did not occur in view of reasons
         beyond the control of the holder.


         The payment of the fee for the renewal may be done by
         installments.
                          Comparison:
              Processing of the application in Brazil
                                                         APPLICATION

                                                      FORMAL EXAMINATION

                                                      PUBLICATION ON THE      60 days
                                                                                           OPPOSITION
                                                           GAZETTE

       If a demand is not                                                                   60 days for
            answered, the   DEMANDS                      EXAMINATION                        answer of the
application is dismissed.                                                                   applicant



                             ACCEPTANCE                                           REFUSAL

                                                                                        60 days
             60 + 30 days   PAYMENT OF THE
                                 FEES                                             APPEAL

                            REGISTRATION                               Decision
                                                                        revised             Decision
                                                                                            maintained

        180 days                                       5 years
                                                                                    DISMISSAL
          ADMINISTRATIVE                       NULLITY TRIAL
           PROCESS OF
             NULLITY
                                      After 5 years
                                      CANCELLATION DUE TO NON USE
         Analysis of some major differences:
                 Secondary Meaning
                                    …and its recognition   …and should be
                                    by the Trademark Act   recognized by the IP
The secondary meaning is a fact in
                                    is correct.            Law.
the market
                                    Examiners Attorneys    Examiners Attorneys
                                     in Japan   in Japan    in Brazil  in Brazil
Completely agree                           20%       40%         20%        45%
Agree                                      80%       50%         20%        36%
Partially agree, partially disagree         0%       10%         40%        18%
Disagree                                    0%        0%         10%         0%
Completely disagree                         0%        0%         10%         0%

The requirements for the                                 …clear enough to
                                    …clear and fair.
examination of secondary meaning                         make a decision
by the JPO are                       Attorneys in Japan   Examiners in Japan
Completely agree                                     10%                  40%
Agree                                                50%                  60%
Partially agree, partially disagree                  20%                   0%
Disagree                                              0%                   0%
Completely disagree                                  20%                   0%
        Analysis of some major differences:
                Secondary Meaning

The IP Law should be amended to recognize the secondary meaning. Afterward,
the PTO would create examination procedures.
                                    Examiners in Brazil  Attorneys in Brazil
Completely agree                                    10%                   0%
Agree                                               40%                  18%
Partially agree, partially disagree                 30%                  64%
Disagree                                            10%                  18%
Completely disagree                                 10%                   0%

The examination regarding secondary meaning for the registration of a
trademark must remain in the judicial sphere.
                                      Examiners in Brazil  Attorneys in Brazil
Completely agree                                      20%                   0%
Agree                                                 10%                  18%
Partially agree, partially disagree                   20%                  18%
Disagree                                              40%                  55%
Completely disagree                                   10%                   9%
         Analysis of some major differences:
                      Disclaimer
Japan acted properly in abolishing the disclaimer of this law.
                                       Examiners in Japan        Attorneys in Japan
Completely agree                                      20%                         0%
Agree                                                 80%                        30%
Partially agree, partially disagree                    0%                        40%
Disagree                                               0%                        20%
Completely disagree                                    0%                        10%



Japan should reintroduce the disclaimer system.
                                       Examiners in Japan        Attorneys in Japan
Completely agree                                       0%                        10%
Agree                                                  0%                        30%
Partially agree, partially disagree                    7%                        30%
Disagree                                              67%                        30%
Completely disagree                                   27%                         0%
        Analysis of some major differences:
                     Disclaimer
Brazil should abolish the disclaimer system as there is no provision regarding
it in the law.
                                       Examiners in Brazil    Attorneys in Brazil
Completely agree                                       10%                    0%
Agree                                                  20%                    0%
Partially agree, partially disagree                    30%                    9%
Disagree                                               30%                   55%
Completely disagree                                    10%                   36%


One of the functions of the disclaimer is to clarify to holders the scope of
protection of the elements of the trademark. This function is:
                                       Examiners in Brazil      Attorneys in Brazil
Necessary                                                40%                    45%
Useful                                                   20%                    45%
Dispensable                                              20%                     0%
Likely to cause confusion                                20%                     9%
         Analysis of some major differences:
                 Opposition System
The change accelerated the examination and registration of trademark
applications.
                                     Examiners in Japan      Attorneys in Japan
Completely agree                                     87%                     50%
Agree                                                13%                     40%
Partially agree, partially disagree                   0%                     10%
Disagree                                              0%                      0%
Completely disagree                                   0%                      0%


The pre-grant system was simpler and more practical.
                                      Examiners in Japan     Attorneys in Japan
Completely agree                                      0%                     20%
Agree                                                 0%                     10%
Partially agree, partially disagree                   7%                     40%
Disagree                                             80%                     30%
Completely disagree                                  13%                      0%
        Analysis of some major differences:
                Opposition System
The opposition must be pre-grant, so the examiner will already have all the
elements to make a final decision.
                                      Examiners in Brazil    Attorneys in Brazil
Completely agree                                     10%                    36%
Agree                                                30%                    55%
Partially agree, partially disagree                  20%                     9%
Disagree                                             30%                     0%
Completely disagree                                  10%                     0%


The opposition must be post-grant, because it would reduce the amount of
oppositions that the examiners already point out at denials.
                                      Examiners in Brazil    Attorneys in Brazil
Completely agree                                      20%                    0%
Agree                                                 50%                    0%
Partially agree, partially disagree                   10%                    9%
Disagree                                              20%                   73%
Completely disagree                                    0%                   18%
                             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.
                          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.
                           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.
                          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.
Thank you!

				
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