INPI to implement alternative methods of dispute resolution
Parties involved in disputes concerning the registration of trademarks in Brazil will soon have a new method to resolve their differences in administrative proceedings before the Brazilian Patent and Trademark Office (INPI): they will have the possibility of using mediation and/or arbitration to submit their disputes to the entity responsible for the registration of patents and trademarks in the country.
Currently, alternative methods of dispute resolution to resolve IP matters can be used only in limited cases - namely, those involving patrimonial disputes (eg, franchising and licensing agreements) and those alleging infringement.
In contrast, certain IP matters related to patent and trademark registrations are considered to be of public interest (prevention of the likelihood of confusion among consumers, and development of technology and innovation). Therefore, such disputes cannot be submitted to mediation and/or arbitration, due to the necessary participation of a public organisation (the INPI) in the proceedings. Judicial actions involving registered trademarks must be brought before a federal court, with the INPI as defendant (or intervener).
However, a project of the INPI aims to allow parties involved in such disputes to use mediation and/or arbitration. This project was initiated through the creation of a new division of the INPI, called CEDPI - Centro de Defesa da Propriedade Intelectual, whose main goal is to promote efficient forms of protection for intellectual property in Brazil. The implementation of alternative methods of dispute resolution is an important part of the project and would bring several benefits to owners of IP rights in Brazil.
One of the justifications of the project is the recent growth in trademark applications in Brazil and the significant amount of oppositions, appeals and nullity actions resulting from this growth. A consequence of this situation is the delay in the assessment of the applications submitted to the INPI, which causes uncertainty among applicants in Brazil.
Therefore, the use of alternative methods of dispute resolution would increase the effectiveness of the INPI in granting IP rights. The fact that the parties will have the possibility to reach an agreement during the administrative proceedings can reduce the time and costs involved in disputes relating to trademarks and patents. Moreover, the participation of an arbitrator specialised in intellectual property means that such methods will be more effective and that the parties will be able to avoid bringing judicial action.
According to the schedule of the INPI, mediation in trademark cases was the first alternative method of dispute resolution to be implemented by the INPI. While the implementation of arbitration in trademark and patents cases and of mediation in patent cases is planned for the second semester of 2013, mediation in trademark cases has already been implemented by the INPI. A Mediation Centre was launched on March 12 2013 and the first regulations have already been published.
The first step for the implementation of mediation at the INPI was the signature of a Co-operation Agreement between the INPI and the World Intellectual Property Organisation (WIPO) in September 2012, under which INPI and WIPO agreed to develop and promote alternative methods of dispute resolution in Brazil, in particular mediation.
This agreement contains an important rule concerning the administration of mediation by the INPI and WIPO. While disputes involving parties domiciled in Brazil shall be handled by the Mediation Centre of the INPI (CEDPI), disputes involving at least one foreign party shall be handled by WIPO’s Mediation Centre.
WIPO’s Mediation Centre has already been providing services relating to alternative methods of dispute resolution and, therefore, a regulation is already in place in this respect, which will be observed in disputes involving foreign companies. In addition, a resolution containing general rules governing mediation managed by CEDPI was recently published by the INPI (Resolution 84/2013).
Despite the existence of two different mediation centres, the regulations of both centres are similar. The main rules are as follows:
- The parties can choose the mediator - if the parties cannot agree on a name, they can hire a mediator listed by WIPO;
- Parties can submit any kind of documents during the mediation proceedings;
- Documents will be protected by confidentiality;
- The parties can be assisted by a lawyer; and
- Once the parties have reached an agreement, the terms of the agreement shall be formally examined by the INPI.
However, there is an important difference between the two regulations. In cases handled by CEDPI, the parties will have the opportunity to ask the INPI to carry out a preliminary analysis of the agreement; the INPI shall then issue an opinion about the suitability of the agreement. However, this possibility is not present in the WIPO regulation.
The first mediation cases before the INPI are due to be initiated very soon. In a pilot project, the INPI will hear 50 cases, which will serve as a basis to determine the next steps.
This project will bring significant changes to the resolution of IP disputes in Brazil, and will arguably increase the credibility, and facilitate the enforcement, of IP rights in the country.
Fernando Eid Philipp and Elisson Garé, Gusmão & Labrunie, Sao Paulo
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