ABPI plays an important role in GIPI proposals
On the second and last day of the “GIPI Technical Dialogues” webinar, Tuesday, 30, the president of ABPI, Gabriel Leonardos, honored the servants of the Ministry of Development, Industry, Commerce and Services involved in the work “for the republican spirit and capacity genuine way of listening to organized society”. The event showed the prominent participation of ABPI – Brazilian Association of Intellectual Property in the 13 subgroups of GIPI (Interministerial Group of Intellectual Property), which presented proposals to support the National Strategy for Intellectual Property (ENPI), in order to update the legislation and the country’s intellectual property system. There were 14 meetings between August and December last year.
This Tuesday, the results of the debates were presented with the proposals of the Trademarks, Industrial Designs, Contracts and Geographical Indications groups. On the 23rd, the first day of the “Technical Dialogues”, an event organized by the ABPI, the proposals on patenting in the area of biotechnology, amendments and divisions on patent applications, contracts, essential patents and other provisions of the Property Law had already been reported. Industrial (Law 9276/96).
When bringing the results of the group on Brands1, which discussed the expiry regime of brands, the director of ABPI, Rodrigo Ouro Preto, explained that the main issue, in this regard, is deadwood, which refers to unused brands. The group listed five proposals in this regard: the regular declaration of use, reduction of the deadline for requesting forfeiture, partial forfeiture, request for use and degeneracy as a cause for decreeing forfeiture.
The conclusions of the Marcas2 group, according to a report by Filipe Fonteles Cabral and the coordinator of the Digital Law and Data Protection Commission, José Eduardo Pieri, show divergent positions between the INPI and the other members of the Group. But in the final proposal on “Opposition System”, the group proposed the adoption of a standard form for opposition, including a summary containing: legal basis(s) for the opposition; number(s) of registration(s) or request(s) that substantiate the opposition and indication of the document that proves the previous right, if applicable. And in the case of “Collection and Retribution”, the proposals included the adoption of a single retribution for the applications received by the Madrid System, alteration of the amounts paid for depositing the application and granting registration, and ending the extraordinary term for payment of the concession fee with unification of the current deadlines in 90 days.
In the report of the group that focused on Secondary Meaning, which deals with the acquired distinctiveness of a brand, the presentation was made by ABPI’s Brands coordinator, Clarissa Jaeger. She explained that there was a consensus on the need for recognition of this right by the INPI, for which it would be necessary to include paragraphs 3 and 4 in Art. 159 of the LPI, recognizing in the examination that the sign of the application acquired, prior to its filing, sufficient distinctiveness as a brand by the consumer (§3); and that the request is made by the depositor at the time of deposit or by administrative appeal (paragraph 4).
In the presentation on “Slogans x Nullity”, still within the scope of Trademarks, Ricardo Vieira de Mello, honorary member of the ABPI, showed that there was consensus in the group that “there are effective mechanisms for the nullity of registrations that protect signs used as slogans”, such as, for example, the “expiration” clause, being the final proposal of the Trademarks group 3 in the sense of excluding item VII of article 124 of the LPI. The conclusion, according to him, was already included in ABPI Resolution 38.
About the group that debates the Precedence Right, the presentation was given by Wilson Jabur, director of the Chamber of Domain Names of the ABPI Dispute Resolution Center (CSD-ABPI). He showed proposals for changes in three articles of the LPI: in Art. 129, change in the wording of §1 and simple exclusion of §2; in Art. 158 the inclusion of two new paragraphs; and in Art. 174 the inclusion of a sole paragraph, determining that “the action to declare the nullity of the registration based on art. 129, §1, except in cases of proven bad faith”.
There was no unanimity in the group coordinated by INPI in the discussion about the registration process and Contracts. As presented by the coordinators of the ABPI Technology and Franchise Commission, Cândida Ribeiro Caffé and Patrícia Falcão, the INPI understands that there is a need for legislative change to simplify the procedures related to the annotation and registration of contracts, while private law entities consider that a series of procedures could be made more flexible, both in the formal examination and in the technical examination, regardless of any change in the law. The same understanding has been adopted by the INPI Contract Coordination in relation to the Minutes of the internal meeting dated December 28, 2022, published on December 30, whose administrative measures for optimizing the registration and annotation of contracts have not been observed by the INPI .
In the discussions to improve the legal framework of the Industrial Designs area, according to the report presented by the ABPI advisor Ricardo Boclin and by the coordinator of the Industrial Designs Commission André de Moura Reis, the group considered the need to evaluate the devices on “Registrability” , “Terms of Registration” and “Orders and Registration Division”. The proposals contain amendments and additions to paragraphs in Arts. 95, 104 and 117 of the LPI, contemplating, among others, the inclusion of graphic and virtual signs brought by new technologies, in addition to typographic fonts and holographic images.
In the Geographical Indications report, presented by Roner Fabris and the ABPI GI coordinator, Andrea Possinhas, seven proposals were presented. The list includes the definition of GI (Geographical Indication) and DO (Denomination of Origin), conditions for registration, legitimacy of the representative entity, delimitation of the Geographical Indication area, authorized uses of GI and DO, cancellation of registrations and protection of natural factors in DO.
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