IP key aspects in Trade Fairs in Brazil for EU SMEs Mercosur IPR SME Helpdesk.

IP key aspects in Trade Fairs in

Brazil for EU SMEsMercosur IPR SME Helpdesk

INDEX

• Introduction

• Recommended strategy

• Measures to avoid/reduce damages

• Legal actions

• Additional information

IP key aspects in Trade Fairs in Brazil for EU SMEs

INTRODUCTION

Why is Brazil an interesting market for EU SMEs?

• Population: 193.9 million

• Unemployment rate (%): 5.5

• GDP (Current Prices US$): 2,252.8

• GDP Per Capita (in thousand US$): 12.1

• Last 5 years real growth (avg.) %: 3.2

INTRODUCTION

Why attending a Trade Fair?

• Increase SMEs sales via a targeted audience

• Provide accurate information about competitors

• Allow SMEs to detect market trends

• Boost brand building through goods/ services exhibition and direct contact with potential customers

• Networking activities (potential partners)

INTRODUCTION

Why attending a Trade Fair in Brazil?

• Brazil holds more than 300 events of this kind each year*

• The most significant areas are industry, construction, food and pharmaceutical products.

Some interesting exhibitions to visit in Brazil:

• ALIMENTARIA BRAZIL (Sao Paulo)

• HOUSE&GIFT (Sao Paulo)

• BIOTHECFAIR (Sao Paulo)

• BITS (Porto Alegre): TIC industry

• FOODTECH (Curitiba)**

INTRODUCTION

Trade Fairs and Intellectual Property Rights (IPR)

• Adequate protection and enforcement strategy are key factors for the business’ success.

• Benefits of a good preparation:

○ Save costs

○ Lower risk of infringement

○ Greater chance of success in case of infringement

INTRODUCTION

Trade Fairs and Intellectual Property Rights (IPR)

• Most common problems:

○ Piracy and counterfeit

○ IPRs infringements

○ Disclosure of sensitive information

○ Mismanagement of the situation

• Most common scenarios:

1. Your IP is not duly protected and third parties may exploit it (either registering it or not).

2. Your IP is duly protected, but you detect an infringement.

INTRODUCTION


RECOMMENDED STRATEGY

1. Identify your specific interests. For example, open a new market, introduce a product, gain market share or strengthen reputation.

2. Identify your assets: What are the key factors to accomplish my goals?

3. Protect your IPRs: Is there any tangible asset that should I protect?

4. Contact an IPR expert: Seek for local, IP professional advice. Our experts can provide first-line assistance within 5 working days for free and with the strictest confidentiality. Use our Helpline for further information or visit www.mercosur-iprhelpdesk.eu .


http://www.mercosur-iprhelpdesk.eu/



IPR protection

• Registered protection (lasts as long as the register is valid):

○ Trademarks, Patents, Designs, other IPR.

• Unregistered protection (available only for certain IPRs)

○ Copyright (registration is not required, but recommended)

○ Well-known trademarks


TIPS & WATCH-OUTSUnlike in Europe, Brazilian Law does not provide a 3-years protection for non-registered designs.

IPR protection (Patents and Designs)

• REGISTER your Patents and Designs before attending Trade Fairs.

• NOVELTY is required to register Patents and Designs and your own disclosure within a Fair may destroy the novelty of your IPRs.


TIPS & WATCH-OUTS

If a product has not been patented, it may still be exhibited at a trade fair. Nevertheless, the part of the product to be patented should not be shown to prevent it from being copied (reverse engineering) or rejected/invalidated when applying for a patent in the future (failure to comply with the novelty requirement).

IPR protection (Patents and Designs)

• EXCEPTION: GRACE PERIOD

• Brazilian Law establish a grace period, which allows disclosure of the invention up to 12 months prior the filing of the patent application or 180 days prior the registration of the Industrial Design.

• BUT REMEMBER: the grace period is for Brazil only. Other countries may not have such benefit and the disclosure in Brazil may destroy novelty in other files (the EPO, for instance).


IPR protection (Trademarks)

• REGISTER your brands, logos, commercial name and products’ names as trademarks before attending Trade Fairs.

• Do a search to assess if there is any potentially conflictive (similar o identical) Trademark registration in order to prevent:

○ To be sued for TM infringement.

○ Third parties take advantage of your business’ reputation (i.e. local TM owner similar to yours benefits from your prestige after the Trade Fair).


Two effective tools to protect IPR when attending Trade Fairs:

1) The Unionist Priority

• SOURCE: Paris Union Convention (1883) and TRIPS Agreement 1996 • DEFINITION: The Right of priority means that the IPR applicant enjoys a

certain period of time after its application in the WTO contracting State to apply for the same IPR in the rest of contracting States.

• PERIOD: 12 months (Patents & Utility models)/ 6 months (Trademarks & Designs).



1) The Unionist Priority


TIPS & WATCH-OUTS

If it is not possible to register your IPR in Brazil, it is strongly recommendable to, at least, apply for it in another WTO contracting party before the Fair.

After it (and during the priority period) you can consider to apply for it in Brazil.


2) Priority Certificate at Trade Fairs

• SOURCE: Paris Union Convention (1883) and national law of its Member States.

• DEFINITION: the certificate of the Trade Fair organizer stating that a good was disclosed in the Exhibition enable the exhibitor to a priority access to the Register without affecting its novelty.

• Period: 6 months. • BRAZIL is party of the Paris Union Convention since 1884.



2) Priority Certificate at Trade Fairs


TIPS & WATCH-OUTS

Request the Trade Fair Organizer to issue a certificate that include a description of the good, invention or shape that you have disclosed at the Exhibition.


MEASURES TO AVOID/REDUCE DAMAGE

Before attending the Trade Fair:

1. Prepare all the needed documents:

a) Those that attest:

○ IPR holder’s identity

○ Entitlement to represent/act on behalf of the holder (lawyers and/or representatives acting on behalf of the IPR holder)

○ Ownership of the IPR

○ Validity and enforceability of the IPR





TIPS & WATCH-OUTS

In addition to the original certificates and titles, make sure to bring copies thereof (certified or uncertified copies), which should be properly translated.

If the credentials of the foreign company are written in a foreign language or issued abroad, it must be notarized and consularized (with the approval of the notary public as to the authenticity of the signature as well as the Brazilian consul in the country where the contract was signed) and a sworn translation in Portuguese (officially recognized by the Brazilian state Chambers of Commerce).



b) In case of infringement, also those that attest:

○ The existence of infringing products or services

○ The infringer’s identity

○ Any further interesting information


TIPS & WATCH-OUTS

Make sure that the person you will be legally advised by (lawyer/agent) can access the exhibition centre: many trade fairs are not open to the public (professionals only).


2. Carefully examine the terms of the contract and the website of the organizer

In particular, the IP infringement policy. Main aspects:

• The measures to be taken in the event of an infringement complaint• The right to expel offenders from the exhibition• The applicable sanctions if the commission of the infringement is confirmed,

both for the current edition and for next editions• The liability of the organiser



2. Carefully examine the terms of the contract and the website of the organizer


TIPS & WATCH-OUTS

FEIMAFE’s Exhibitor’s Manual states that ‘infringers will have their products removed from the exhibition without entitling to indemnity rights, and they will be subject to the consequent legal costs and penalties, even after the opening date’.


3. Contact the organizer

• Introduce yourself: this may benefit you in case of a potential dispute with another exhibitor.

• Verify whether they have their own Complaints Centre, although they are not very common in Brazil. If there is one of these centres, it is advisable to introduce yourself, submit the needed documents and put them on notice about potential infringements.



4. Contact local authorities

• Register your titles, certificates and licences at the designated administrative bodies, such as the Brazilian Intellectual Property Office (INPI) and the National Library (Biblioteca Nacional).

• If you suspect that an infringement may be committed by another exhibitor (counterfeit or pirated product), you should file a complaint before the customs authorities. This guarantees that they will be alert to suspicious consignments, thus being able to investigate, take samples and destroy illegal material.



4. Contact local authorities

• Please, be aware of the import regulations.

• Verify if they are empowered to access the exhibition centre in order to conduct an operation to avoid the commercialisation of counterfeit products.


TIPS & WATCH-OUTS

Unfortunately, Brazil does not provide for a customs electronic registration system, unlike most European countries. Therefore, it is quite helpful to submit a hard copy of all the relevant documents in advance.


5. Investigate the other exhibitors

• Visit their websites to look for potential infringements.

• Check their past record of infringement. The assistance of a specialised professional is helpful for this purpose.



5. Investigate the other exhibitors


TIPS & WATCH-OUTS

Capture screenshots of the website that contain the relevant information:

• Pictures of infringing products• Contact information and identification of the owner of the

website• Items that prove the infringement • Etc.

It is better to do this through a notary office, before a Brazilian notary public.


6. Create a strategy for any infringement that may arise

• Preferably with the assistance of the lawyer/agent that will represent you in case of legal actions

• The action plan should be examined on a case-by case basis

• A decision should be taken as to when legal actions will be brought: before, during or after the event



6. Create a strategy for any infringement that may arise

• The type of actions that will be taken must also be specified:

○Preventive actions: send a cease and desist letter (C&D) to avoid the infringement

○Reactive actions: gather sufficient evidence for a potential legal action or organise a police operation together with the local authorities


During the Trade Fair:

1. Communicate with the other exhibitors in order to find potential infringements

2. Gather as much information on the infringers as possible

○Business card

○Brochures

○Presentations

○Etc.



3. Take pictures of the infringing products (if possible)

○ Problem:

○ Infringers could notice it

○ Photographs prohibition policy

○ Solution:

○ Private detective

○ Organization’s authorization


TIPS & WATCH-OUTS

Most organisers make recordings for promotional purposes. These recordings may be useful as a means of evidence in case of legal actions.


4. Be accompanied by a notary public that can bear witness to the infringement

5. Let it be known that your products are protected by IPR and that you have an active enforcement policy.

○ Include warnings in your stand and website

○ Distribute information brochures

○ Indicate that your IPR are protected. Use the symbols “©”, “®” or “™” to highlight it (obviously, only if they have been actually granted by the BPTO).



6. Report the infringement to the organizer

○ Facilitate as much information as possible

○ Do it in writing

○ Advice of a lawyer is very helpful (further legal actions)

7. Formal notification (C&D) to the infringer

○ Only after collecting all needed information and evidences

○ It is not a formal requisite, but is very welcome by Brazilian Judges.



7. Formal notification (C&D) to the infringer.

• Usual content warning that:

○There is evidence of IPR infringement

○The infringement must be stopped, by destroying the material, removing references, etc.

○There is a specific deadline

○Failing to comply with the foregoing shall lead to legal actions



LEGAL ACTIONS

1. (Civil) claims against IPR infringement

• Take into account cyclic and temporary character of Trade Fairs

• File a lawsuit for IP infringement (ADR are recommended)

• Preliminary Injunctions (PI):

○DEFINITION: temporary measure that the court adopt in a fast-track procedure when there are special circumstances that could lead to an irreversible damage.

○AIM: to STOP the infringement and AVOID an irreparable damage.

○CHARACTERISTICS: temporary, instrumental of a lawsuit, anticipating nature.

LEGAL ACTIONS



• Benefits:

○Are faster than an entire judicial proceeding.

○Have provisional nature.

○Allow to avoid/reduce irreversible damages.

• Requirements:

○ Fumus Boni Iuris”: reasonable evidences of an infringement.

○ “Periculum in Mora”: danger of irreparable harm.

○ Furnish bail

LEGAL ACTIONS



• WHY SHOULD I REQUEST A PI?

○To prevent irreparable damages (loss of business, clients, prestige …)

• WHEN SHOULD I REQUEST A PI?

○Before filing a lawsuit

○After filing a lawsuit

LEGAL ACTIONS



• KIND OF PI THAT CAN BE REQUESTED TO THE COURT:

○NO “Numerus Clausus”

○Some useful PI within the framework of Fairs: ○ Withdrawal of the good from the exhibition. ○ Prohibition to promote the product.○ Seizure of infringing products and/or advertising material. ○ Closing of the exhibition booth

LEGAL ACTIONS

2. (Criminal) claims against the commercialization of counterfeit or pirated products

• Police intervention:

○ Prevent the continuation of infringements

○ Seize the material as evidence of the alleged infringement

LEGAL ACTIONS

TIPS & WATCH-OUTS

Many infringing products and infringers (piracy and counterfeiting) can be found at Trade Fairs. However, it is not advisable to try to identify them and immediately bring legal actions against them, unless you are completely sure and ready. Police investigations must run their course, because the exhibitor may be just a mere intermediary. Precipitate action may alert the service provider, which can lead to losing track of him/her.


ADDITIONAL INFORMATION

MAIN TRADE FAIRS ASSOCIATIONS AND SOURCES OF INFORMATION

NAME WEB ADDRESS

EMECA – European Major Exhibition Centers Association

www.emeca.eu

[email protected]

UFI - Global Association of the Exhibition of the Exhibition Industry

http://www.ufi.org

AFIDA – Asociación Internacional de Ferias de América Latina

www.afida.org

Mercosur IPR SME Helpdesk: www.mercosur-iprhelpdesk.eu



SEND US YOUR QUESTIONS ON IP!RECEIVE AN ANSWER FROM OUR EXPERTS

WITHIN 5 WORKING DAYS

MULTI-LINGUAL WEB PORTAL:

www.mercosur-iprhelpdesk.eu

HELPLINE:

[email protected]

EMAIL:

[email protected]

PLUS:

• Clinics & Workshops• Webinars• Newsletter• Business publications• FAQs• IP Glossary• Videos• And more…



mailto:[email protected]



Date post:	24-Dec-2015
Category:	Documents
Upload:	kory-fletcher
View:	217 times
Download:	1 times

IP key aspects in Trade Fairs in Brazil for EU SMEs Mercosur IPR SME Helpdesk.

Documents