Antonella Carminatti

What key skills should an IP litigator possess?

A successful IP litigator needs good communication skills – both written and oral – and the ability to work alone. A technical inclination is also crucial, along with analytical skills, an eye for detail and lateral thinking. While time and stress management are helpful, creativity and strategic thinking are essential.

How has your role on the Brazilian Intellectual Property Association board of directors and the INTA Editorial Committee and Trade Dress Task Force benefitted your IP practice and vice versa?

At the Brazilian Intellectual Property Association (ABPI) my role at the board of directors, where I am still very active, is to discuss important bills affecting IP rights and submit our observations on these to Congress, to work on the interface with the National Institute of Industrial Property (INPI) and to contribute to the organisation of the ABPI annual meeting and other workshops aimed at spreading the importance of intellectual property in Brazil and in Latin America.

What impact has Brazil joining the Madrid Protocol had on your clients’ IP strategies?

Brazil’s access to the Madrid Protocol made the Brazilian products and services industry revisit its strategy on exporting its products and services, and to see this new reality as an opportunity. In particular, it has led companies to reconsider the difference in the exchange rate between the Brazilian real and the euro and US dollar, which makes our products more competitive in foreign markets.

What are the top considerations for IP owners to bear in mind when entering into trademark licensing negotiations?

Make time to get smart about intellectual property and learn about IP protection. Brazil is a first-to-file country, so the first thing to do is to seek protection of your trademark and of any other element of your business including trade dress, copyright, patents and trade secrets. Understand INPI’s role when it comes to registering licence agreements. Seek the advice of a tax lawyer for any required royalty remittance as well as any applicable tax levied on your transaction. Research the local market relevant to your business, in particular how local practices affect your transaction. Consider putting strong contractual provisions in place to avoid any reputational damage to your mark.

How can brand owners work with external parties such as online platforms and regulatory authorities to clamp down on counterfeiting?

Most platforms have their own IP policies; once an IP owner become a member of such a programme, they can ask the platform to take down the ads for suspected counterfeits. To join these programmes, local counsel must generally fill out a form and also include the power of attorney granted to them and documents demonstrating their client’s rights (eg, trademark registration certificates). Once the platform analyses these, it will decide whether to take down the relevant ads. If the platform refuses to take down the ads, the next step would be a court action.

Our firm recently managed to clear more than 10,000 unauthorised online vendors by simply including the client in the online sales’ platform IP programme and sending documents proving its ownership of the rights claimed.

In the case of legitimate goods, rights holders should be aware of Section 132(III) of the Brazilian Industrial Property Law, which sets out the exhaustion of rights doctrine. Under this, once a product protected by a trademark has been marketed either by its owner or by others with its consent, the trademark owner can no longer exercise the IP rights of commercial exploitation over this product, as they have been exhausted. In other words, unless it can be proven that a rights holder did not consent when the products were first advertised for sale, it is highly challenging to object to any resale by another party who has legitimately acquired the products.