Philippe Bhering and Jiuliano Maurer wrote the chapter on Brazilian Law for the “Getting the Deal Through – Licensing 2023” guide, with insights into Intellectual Property and competition law issues in Brazil, in addition to litigation and the latest trends in said area.

Since 1996, the “Getting the Deal Through” publication series provides international comparative guides to law and regulation in 120 practice areas and more than 150 jurisdictions containing concise explanations to the most important regulatory matters that arise in business deals and disputes worldwide.

More information about the “Getting the Deal Through” series is available at: www.lexology.com/gtdt

Click here to download a copy of the “Brazil” chapter of the “Getting the Deal Through – Licensing 2023” guide*.

*Reproduced with permission from Law Business Research. This article was first published in Getting the Deal Through – Licensing 2023.

On May 9, 2023, Bhering Advogados was present alongside agents from the Civil Police and the Brazilian Internal Revenue Service during a significant seizure operation at the largest informal trade center in the North-Northeast region of Brazil, located in the city of Feira de Santana, Bahia. The operation targeted 200 stores, leading to the successful apprehension of approximately 30 tons of counterfeit products.

Our Anti-counterfeiting department works closely with Civil Police and IRS officials in Bahia to enhance control measures against the trade of counterfeit products.

Click here to see the full report (in Portuguese).

Bhering Advogados’ German Desk has been recognized by Chambers and Partners Global, in both Brazilian and German 2023 editions. Partner Philippe Bhering, who heads the firm’s German desk, has been recognized as a foreign expert for Germany.

The publication highlights that Bhering Advogados German desk “acts for a number of German clients from the automotive and pharmaceutical industries on patent infringement and trade mark nullity actions” and that it “advises German companies on trade mark enforcement and portfolio management”.

According to a client, the firm “has a cosmopolitan team in which many members are able to speak German and that is why they attend to many Swiss and German firms”.

The publication points out that Philippe Bhering “frequently acts for German clients (…) in trade mark nullity and infringement proceedings”. Moreover, the publication highlights that he “is very professional and he reacts quickly and is very well founded”.

Partner Philippe Bhering contributed comments to Valor Econômico newspaper on the ownership of inventions created in the context of employment relationships.

According to the Industrial Property Law – LPI (Law No. 9.279/96), such inventions may either be fully owned by the employee, jointly owned by the employee and employer, or fully owned by the employer, depending on the employee’s assigned role and the specific conditions under which the invention was created.

When there is personal contribution from the employee and the use of any resources, data, means, materials, facilities, or equipment provided by the employer, the invention is equally owned by both the employee and employer, unless otherwise specified in the contract. In the case of co-ownership, the employer is granted the exclusive right to exploit the invention. In exchange for the employer’s exclusive exploitation rights, the LPI guarantees the employee “fair remuneration.” However, the LPI does not establish criteria for what constitutes “fair remuneration.”

According to Philippe Bhering, there is a prevailing tendency in the Superior Labor Court to ensure that workers receive 50% of the economic profits derived from inventions. However, there have been cases where lower (30%) or higher (70%) percentages were set. As a result, Philippe Bhering advises companies to take proactive measures to address the gaps in existing legislation. He recommends that, by specifying the contributions of both the employer and employee in the employment contract, the court will have a reference to determine the percentage of the economic benefit.

Bhering Advogados is pleased to announce ISO 9001 recertification for quality management, and ISO 27001 recertification for information security management.

Bhering Advogados was the first Intellectual Property firm in Brazil to ever obtain both international certifications ISO 9001 and ISO 27001.

ISO 9001 is the world’s most recognized Quality Management System (QMS) standard, while ISO 27001 is the leading international standard for Information Security Management Systems (ISMS).

The recertifications, now in 2023, reinforce that Bhering Advogados has built a standard to ensure the consistent quality of its services and that the firm is aligned with the best information security practices.

The International Organization for Standardization (ISO) is an independent, non-governmental, international organization, that develops technical standards to ensure the quality, safety, and efficiency of products, services, and systems.

On April 27, 2023, partners Philippe Bhering and Clarisse de La Cerda represented Bhering Advogados at the Americas Awards 2023 ceremony, hosted by Managing IP in New York City.

We are pleased to share that Bhering Advogados has won the Trademark Firm of the Year award, covering the areas of trademark litigation, anti-counterfeiting, and prosecution.

The Managing IP Awards recognize the firms, individuals, and corporations behind the most innovative and challenging intellectual property work of the past year, as well as those driving the international market.

Click here for more information.

On April 19, 2023, Bhering Advogados was present along with agents of the Civil Police and the Brazilian Internal Revenue Service at a large-scale seizure operation that resulted in the apprehension of BRL 350.000 worth of counterfeit toys, which were found at different stores in Vitória da Conquista in the State of Bahia.

Our Anti-counterfeiting department works closely with the police and IRS officials in Bahia to strengthen control against trade in counterfeit products.

Click here to see the full report (in Portuguese).

On every April 26, we celebrate World Intellectual Property Day, a date marked to emphasize the fundamental role of IP rights in our daily lives.

In 2023 the World Intellectual Property Organization (WIPO) chose to focus the “can do” attitude of women inventors, creators and entrepreneurs around the world and their ground-breaking work, promoting a wide-ranged program to celebrate, encourage, assist and raise awareness on IP, Innovation and Enterpreneurship.

As a law firm specialized in IP, we are committed to promoting innovation through the protection of inventions and creative works, and to encouraging new generations to share this same goal. Today, we celebrate all advances that were only possible thanks to human intellect and look positively to a future full of development opportunities. Happy World Intellectual Property Day!

To learn more, click here.

Partner Philippe Bhering contributed with comments to Valor Econômico Newspaper’s report about the decision of the Sao Paulo State Court of Appeals (TJSP) that ruled in favor of luxury brand Louboutin.

According to Philippe Bhering, the decision is relevant for the fashion industry, as it reinforces the understanding that its creations are also subject to trade dress protection and that a full copy of the creation is not necessary for the violation to be admitted.

The report at issue also mentions the landmark case involving fashion creations and protection via trade dress in Brazil, filed by Bhering Advogados on behalf of the French company BONPOINT SAS, which was decided in 2008 and constituted the first case in court to recognize protection of fashion creations via trade dress. The Defendant, a Brazilian company, was then prohibited to manufacture and sell children’s clothes in similar style as those manufactured and sold by BONPOINT SAS.

The full article can be read (in Portuguese) here

From April 4^th to 5th, partner Clarisse De La Cerda attended the Global Privacy Summit in Washington, D.C, hosted by the International Association of Privacy Professionals (IAPP). This is the most anticipated event by Privacy Professionals every year. Clarisse De La Cerda served as Chair of the KnowledgeNet Rio de Janeiro Chapter, in the past, and will remain in the Women Leading Privacy Advisory Board until the end of 2023.

The event covered a number of trends in the privacy profession with great focus on AI technologies affecting personal data protection. From technology and concerns regarding international data flows, sessions catered to all levels of privacy experience and interests.