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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