Montaury Pimenta, Machado Vieira de Mello
"The IP environment has evolved in harmony with Brazil’s development"
Can you tell us a little about your professional journey to date – how did your career in IP law develop?
I began my IP law career in 1983 at Dannemann Siemsen, working in its contracts department. In 1990 Luiz Edgard Montaury Pimenta and I started our own IP firm and in 2010 we merged with law firm Vieira de Mello, creating the global IP firm that exists today.
I was very fortunate to leave university and immediately enter into the IP world. This opened my mind to several specific issues that need to be considered in IP law, including the need to have a broader, global perspective for matters that you are handling and the need to travel and exchange viewpoints and experiences with colleagues from other jurisdictions.
Over the course of my career, Brazil has developed to become a serious contender in foreign commerce and intellectual property is vital to protect clients’ assets.
How have client demands changed in that time, and how should practitioners in Brazil ensure that they are offering relevant, world-class service to clients?
The IP environment has evolved in harmony with Brazil’s development. In the past we dealt only with rather basic issues derived from trademark infringements, but following Brazil’s advancements we have started to see questions relating to patents, unpatented technology, domain names and all sorts of IP cases.
In addition, clients are asking more difficult and complex questions on an international level.
Therefore, the best advice for local practitioners – which I try to follow myself – is to keep up to date with international developments and to exchange information and professional experiences with foreign colleagues.
Domestic and international conferences are an excellent way to achieve these two goals, as you can participate in discussions and meetings with professionals from around the world.
A recent development in the Brazilian trademark environment has been the Senate’s approval of accession to the Madrid Protocol. How important a development is this and what will it mean to rights holders?
It is of great importance as it will indicate to the global IP community that Brazil is a reliable and easy-to-operate market. However, its importance should not be overstated, as we need to advance in other, more relevant matters, such as the patent backlog and the Hague Convention.
Brazilian rights holders will benefit once they are on equal footing with foreign competitors that have been using the Madrid system for years, thus bringing down their operation costs.
In short, we need to profit from this accession and encourage local clients to extend the protection of their intellectual property abroad.
You are actively engaged in domain name disputes and the UDRP is due for review. Would you make any changes to the mechanism or to the way that domain names and trademark disputes are decided?
As a UDRP panellist at the WIPO and the Brazilian Association of Industrial Property Agents, we are constantly updating information and striving to optimise the dispute resolution procedure.
As happens with trademarks, the system has been designed to tackle issues concerning a given state of reality and, once society evolves, it is natural that the previous rules will no longer be enough.
Personally, I agree with the four key principles that the Internet Commerce Association has developed, and which should be present in any update to the UDRP – namely, accountability, uniformity, predictability and balance.
Finally, what do you think are the big trends that will affect IP professionals and owners in Brazil over the next few years?
On the technical side, Brazil needs to improve the way in which cases are examined and decisions are made. Response times need to be reduced for those seeking administrative review, as well as judicial enforcement. Once we have improved this system, we need to look ahead and start to update everything again. It is a never-ending process.
IP professionals should accept that the industry is constantly evolving and that close contact with clients is key.
For rights holders in Brazil, I believe that the primary focus should be on international competition. If Brazil wants to become a global contender, it will need to behave as such and, for national companies, this means pursuing the enhancement of all business tools.
Eduardo Magalhães Machado
Senior Partner [email protected]
Eduardo Magalhães Machado is a senior partner at Montaury Pimenta, Machado & Vieira de Mello. His practice focuses on strategic advice regarding the development, maintenance and enforcement of trademarks. He studied law at the University Candido Mendes and obtained an LLM from the Munich Intellectual Property Law Centre. Mr Machado participates in several IP associations, including INTA and MARQUES, promoting the exchange of experience to improve understanding of the dynamics of the global business environment.