Brazil: IPRs applications and a word in TT contracts

Some statistics are available from the Brazilian (INPI) indicating and releasing some numbers in regards to its services in February 2016.

The following applications are noted: 2,372 patent deposited; 11,626 trade marks; 498 industrial designs; 91 computer programs; and 81 applications for registration of contracts technology (technology transfer). INPI observes that patent applications were unchanged as compared to those in January. In the case of trade marks and computer programs applications there was an increase if compared with same time in 2015. There was however a decline in applications for industrial designs and TT contracts.

A discussion on TT contract
In Brazil TT contracts (incl. technical services and technical assistance) and similar contracts must be registered with INPI to have effect on 3rd parties. But note that INPI neither annotates agreements nor issues certificate of registration for the license of non-patented proprietary technological knowledge.

Also note that INPI assessment and approval of TT and IP licensing agreement is mandatory for the purposes of a) authorizing remittance of royalties to foreign licensor, grantor of IPRs recognized in Brazil; b) trigger tax deductibility by the Brazilian party of amounts paid in connection with IP license, acquisition; and c) entitle the Brazilian party to enforce licensed, granted IP rights.

After INPI’s registration, agreements must be registered with the Central Bank of Brazil (Law No. 4,131/1962 regulates foreign capital in Brazil).

Yee-haa! Payment of royalties

Brazil, the Fourth Chamber of the Superior Court of Justice (STJ) decided that there may be collecting royalties for public performance of music in rodeo, even if promoted by city hall with no economic benefit.

Background
The Central Bureau of Collection and Distribution (ECAD) filed a charge against the the city of Cesario , in São Paulo arguing that the city has promoted musical events called ‘Rodeo Country Fest’ performing musical works without the corresponding authorization and/or licenses. ECAD asked for the condemnation of the municipality to pay R$ 8,625.65 (value of assets not collected) plus a fine.

The Trial Court ordered the municipality to pay R$ 23,073. The Court of Justice of São Paulo (TJSP) amended the sentence, arguing that the collection of copyright is inappropriate, since there was no economic benefit, and that the political benefits arising from the event should not be confused with economic ones. ECAD appealed to the Supreme Court.

Superior Court of Justice (STJ)
The rapporteur of the appeal, Minister Luis Felipe Solomon, said that case law under Law No 5.988/1973 states that the existence of profit is essential to the impact of property rights. However, under the current Law 9.610/1998, there have been significant changes, including the point under discussion – economic benefit. He said that the Supreme Court has recognized in its jurisprudence, the feasibility of collecting royalties also in cases in which the public performance of copyrighted work is not done with gainful intent.

The decision was unanimous and the sentence was restored - city of Cesario Lange to pay R$ 23,073.

Legal process REsp 996852 found here.

Terra Group acquires Shell’s operation in Central America

Back in 2008, Shell, the oil company stated its intention of selling its Central American operations. One year later, the Honduran company has won the competition for Shell’s distribution and operation in Guatemala, Nicaragua and Honduras (it previously obtained the operations in El Salvador). The agreement establishes that the Terra Group will uphold and respect existing contracts with suppliers and with tenants (see press release here in Spanish).


The sale was confirmed by Fabricio Pereira, manager at Shell Costa Rica. He explained that "the agreement includes operation, marketing and sales in those countries, including Shell's strategic alliances”. The agreement also includes the acquisition and license to use the brand in these countries.

Will Terra Group start to buy Shell in South America? Have you heard the joke "when you’ve lost all your marbles, you’ve become a shell collector!" (man and mollusc jokes here)