A different path to protection
Brazil is the largest market in Latin America. Every year, the Brazil Patent and Trademark Office (INPI) receives thousands of applications, most of them from foreign applicants. The timeframe to obtain a trademark registration, however, is still challenging. How can IP owners protect their investment while waiting for a response from INPI?
Seeking multiple layers of protection can be an alternative for rights that meet the criteria for exclusivity under different statutes. Often, trademark applicants seek alternatives that can not only serve as a safe harbour for investment but also help leverage IP rights as a source of revenue. In this scenario, trademark protection boosted by a design registration or copyright is a potential and affordable alternative. Besides the fast proceeding, when it comes to copyright registration, it is possible to recover royalties immediately.
Overlapping protection has its problems, however. As rights afforded under multiple statutes may tend to have an indefinite term of protection, the public domain could be jeopardised and consequently contributions towards fostering innovation and competition could be restrained in the long term. There is, however, no express prohibition for dual or more protection layers in the Brazilian legislation, provided the basic requirements to achieve registration under different statutes are met.
Besides, it is desirable that the rights are indeed interchangeable, that is to say, that they are compatible in their different but complementary ways, which is why the most common combinations involve trademark, utility model, design and copyright.
A landmark case for overlapping protection was tried by the Court of Appeals of São Paulo that granted wide protection under the Brazilian Copyright Act to the famous Birkin bag made by Hermès, despite its previous protection as a design registration. In this case the court ruled that the previous design registration, already expired, had not precluded the company’s rights that were also the subject of copyright protection.
Trademarks as leverage for commercial transactions
What if a combination of IP rights is not applicable in a certain case? Depending on the nature and use, overlapping protection may not be attainable and, as such, trademark owners should try other alternatives to monetise their IP rights.
In this context, it is possible to use securitisation agreements to obtain financing and this would include financing over non-registered rights as well. The use of IP assets as collateral and lease-back agreements can be alternatives to trigger investment in parallel to the direct exploitation of the trademark right by the titleholder or indirect exploitation resulting from a commercial agreement or licensing.
We propose a checklist that can be widely applied for financial transactions in IP-related agreements:
- IP has a value cycle that should be carefully analysed before entering into any transaction. Such a cycle depends on a series of factors that should be carefully weighed, such as its duration and force of competition. Trademarks are less sensitive to time fluctuation, but can be highly damaged by the way they are used in the market and exposed to consumers;
- If the trademark subject of the agreement will be retained by the debtor or licensor, it is important to set the criteria for its proper use and management (eg, regular payment of official fees). The parties must also be aware of the way the trademark is used to avoid tarnishment, as blurring or any misuse can lead to lowering its value; and
- If the trademark will be assigned or transferred as a result of the agreement, the assignee should be able to declare that it operates or is engaged in the same field of activities as the primary owner to enable the assignment in Brazil.
It is also worth mentioning that the inclusion of a trademark in the company’s balance sheet may ease the valuation process before a financial transaction, but such inclusion rarely applies to marks that are generated internally (not the object of purchase). In all these cases, proper due diligence over the trademark portfolio as well as serious trademark valuation and legal advice are strongly encouraged to avoid any drawbacks that may jeopardise the success of the transaction.