Luiz Leonardos & Advogados
You have taken a leading role in multiple IP associations, including as president of the Brazilian Intellectual Property Association. How have these experiences shaped your professional development and why is engagement with such organisations important for trademark professionals?
In these roles I have always focused on developing industrial property in Brazil based on concepts of international trademark rules, in order to increase the application of such concepts in Brazil, while taking advantage of all my work experience. I am also concerned about the Brazilian Patent and Trademark Office’s (INPI) decisions surrounding trademarks. In this sense, it has been very rewarding to learn from and contribute to diverse matters presented by the countless sectors represented at these associations, as these discussions help participants to understand other markets and how each office decision can affect a specific marketplace.
As such, it is very important for trademark professionals to get involved with associations, in order to engage in diverse discussions about trademark matters with some of the best professionals to face those issues.
Your practice focuses on administrative and judicial litigation. What would you say are the top three characteristics necessary to be a star litigator?
First of all, it is very important to stay focused on civil procedures, as these are essential to a successful lawsuit in Brazil. Second, a good litigator should have knowledge about the jurisprudence of a specific case and the mindset of the judges in the Brazilian federal courts. Finally, it is advisable to learn more about your opponent and the reasons for the lawsuit.
Your practice also focuses on geographical indications (GIs). What are the biggest challenges facing Brazilian brand owners in this area and how can they be overcome?
The biggest challenge regarding GIs in Brazil is enforcement. The main reason for this is the general lack of awareness surrounding this type of asset. There is a common belief that these rights can be used by everyone and that GI infringement has low risks of discovery and punishment by the authorities. In order to overcome such obstacles, investments in advertising to educate consumers about IP rights and the consequences of GI infringement, with support from INPI and the IP associations in our country, would not only increase knowledge of this subject, but also reduce misuse of GIs by third parties.
Luiz Leonardos & Advogados has been expanding its team to meet the growing needs of international clients recently. What are the main differences in demands from national and international rights holders?
There is no substantial difference between national and international rights holders in Brazil. The main problem that they face is the same in both cases; trademark owners are losing profits in cases of infringement and/or when there are issues over the exclusivity of the right to use a mark. In all situations, IP owners must fight for their rights and deserve to receive damages when infringement is proven.
How do you expect trademark litigation in your region to change in the next few years?
I expect that jurisprudence regarding damages will be consolidated in trademark litigation proceedings. The Supreme Federal Court has ratified the understanding that it is not necessary to provide evidence of damage when a trademark owner proves that infringement has occurred.
Further, Brazil has finally taken all the necessary legal measures to allow the Madrid Protocol to enter into force in the country and INPI will perform a substantive examination of trademark applications, which will increase the likelihood of uncovering a conflict with third parties’ earlier registered trademarks or prior applications, as well as issues due to the inherent non-registrability of a mark in Brazil.
Moreover, to take any action before INPI, the applicant must have an attorney who is duly qualified and domiciled in Brazil. The power of attorney must be presented to INPI at the date of the corresponding administrative action or within a maximum term of 60 days from the date on which the action was taken under the Brazilian Industrial Property Law, which could be considered in conflict with the Madrid Protocol.
Luiz Leonardos gives his name to Luiz Leonardos & Advogados and provides strategic advice on complex IP issues, including litigation, to national and foreign clients in multiple industries and sectors. He participated in the Official Brazilian Delegation to the Stockholm Conference in 1967 and was the general reporter (1979-1985) and president (1986-1991) of the Brazilian Intellectual Property Association, the executive vice president (1992-1995), the executive president (1995-1998) and an honorary member of the International Association for the Protection of Intellectual Property, and an honorary member of the International Federation of Intellectual Property Attorneys.