Trademarks

The firm Baril, Brandão & Brofman offers a wide range of services related to trademarks, which includes:

• Preparation, filing and follow-up (prosecution) of product/service trademarks, tridimensional trademarks, certification trademarks and collective trademarks and geographic indicators;
• Guidance and execution of all necessary measures to effectively protect and manage trademarks in Brazil and abroad (including support to the management of big trademark portfolios);
• Previous search with technical-legal report (legal opinion and recommendations), in Brazil and abroad, in all databases of national and international trademarks & patents offices, supplementary search, double check search, common law search, centralized search with summary search and informative letters: the firm Baril, Brandão & Brofman offers differentiated previous searches - check;
• Careful follow-up to registration procedures, informing the client at every step, and indicating the most adequate strategy and cost for the specific case;
• Surveillance of our clients’ trademarks aiming at attacking trademarks of third parties that may be in conflict with our clients’ trademarks, published for the effects of opposition or already granted;
• Representation of our clients before the INPI in connection with oppositions, annulling administrative processes, caducity (owing to lack of use) of trademarks, assignments and transferences, alterations or name, main offices and licenses;
• Guidance, elaboration and reply to extra-judicial notices, in case of disputes with third parties;
• The pre-use of trademarks in the name of third parties, for more than six months, in Brazil, may result in right of preference over such trademarks and this is why our firm exhaustively search all over the national territory, using the company’s CNPJ, internet engines, business catalogues, names of domains and other sources, in order to find if a certain non-registered trademark is or not in use in the Country.   

 Franchising and other distribution channels

The law firm Baril, Brandão & Brofman works together with the client when setting the best Distribution Channel strategy, drawing and re-drawing of related processes and creation of tools necessary for the operation and in the shared management of the network’s activities, offering a wide range of related services, which includes:

• Legal management of franchise networks;
• Business legal structuring;
• Franchise formatting;
• Elaboration of legal documentation for the franchise: Offer Letters, Franchise pre-agreements and agreements.
• Elaboration of agreements and follow-up to legal matters related to franchise and distribution.
• Specialized consulting;
• Contentious (judicial and extra-judicial);
• Support, management, structuring and implementation of internationalization procedures.
• Franchising, Licensing and others;
• Updating of franchise legal documents: Offer Letters, Franchise pre-agreements and agreements, Operations Manuals, Directives and all other regulation norms for the system.
• Follow-up and monitoring for the franchise system; consultancy to insure a healthy relationship between the franchiser, franchisee, representatives and distributors.
• Elaboration of legal documents for licensing and distribution.
• Elaboration of juridical documents related to other retail distribution channels.
• Legal restructuring of networks and their maintenance;
• Elaboration of warnings and notices;
• Elaboration of counter-notices;
• Elaboration and analysis of agreements, opinions and accords;
• Participation in negotiations;
• Assistance when signing documents;
• Analysis of documents;
• Elaboration of legal actions as well as the consequent follow-up;
• Consultancy for any franchise issues, specifically: negotiation with franchisees to resolve disputes, elaboration of judicial and/or extra judicial notices, termination terms, accords, meetings, elaboration of meeting minutes, commercial transactions, debt attestation, terms of operational agreements, and the signing of contracts and renewals.  
• Management of franchisees’ leases and own stores, follow-up to terms in rent renewals, review of rents, elaboration and analysis of agreements, participation in negotiations, forwarding of extra judicial notices, etc.

We can also provide assistance in the following legal services, in relation to Franchising or any other distribution channels such as Licensing, Commercial Representation, Distribution, among others:

• Creation of new distribution channels;
• Restructuring of distribution channels’ systems;
• Plan introduction in the national and international markets;
• Assess the implementation of new distribution channels;
• Structuring of service rendering and technical assistance networks;
• Reduction of financial and legal risks in the relationship with channels;
• Management of Franchisees’ Recruiting and Selection;
• Management of Franchise Contract and Offer Letter, as well as system’s regulations.

 Patents and design

The firm offers a vast range of services related to patents, including the search for novelty or counterfeit; legal opinion on patentability; preparation and file of patents; utility models; certificates of addition, shared requests and request for registration of industrial drawing, based on the Patent Cooperation Treaty (PCT) and the Paris Convention:

• Search the patentability and novelty (Brazil and abroad) with legal opinion and recommendation: we opt, together with the client, to carry out patentability and novelty searches, in order to write our legal opinion and recommendations, in the North American patents’ database - USPTO, INPI database, in Europe and Japan, so that we include the most comprehensive patents’ databases in the world, issue legal opinion listing the most needed changes and recommend the best protection and use strategy for the invention. One of the purposes is to search for information in specific databases in order to apply our specific research techniques and recover documents of patents from online and trade information sources. The search for documents and information, in connection with the relevant inventions, is carried out using different sources and resources, info-search techniques in electronic databanks and specific concepts and techniques devised to search for patents online, such as USPTO, Esp@cenet, Epoline, WPI, CAPLUS, DPCI, INPADOC and other sources. The method our office uses aims at deeply understanding the state of the technique and is done through automated search for patents online, searching for subjects on patents, manual search, performed by our technicians directly in the INPI, USPTO and European Bank of Patents, isolated patent search carried out by INPI technicians (if necessary), search for family of patents, search for patents in Brazil and abroad, nominal search for patents (per requesting party, if necessary) and obtainment of copies of patents published in Brazil and abroad.
• Advising in relation to the patentability of creations in all technological domains.
• Preparation of requests for national and international patents (including the description, summary and claims) and follow-up until the patent letter is granted.
• Correct and strategic use of the PCT (Patent Cooperation Treaty) international deposit system.
• Maintenance of the patents, for their legal validity, paying the INPI annual fees.
• Guidance and advising on the best protection of the design, including the deposit of industrial drawing at the INPI and abroad.
• Elaboration of clearances and opinions on patent infringement.
• Follow-up to publication of patent requests in the area of interest (competitive intelligence): The patent requests are published after 18 months, counting from the deposit or priority. The follow-up of third-party request may be done based on certain topics and/or competitor’s name, as set forth by the client.

Important recommendations:

1. Before beginning the search, for the development of a new product/process, search or request a general search for patents:
   A previous search may save time and money avoiding the re-invention of known products and processes and maybe letting the development to start from a more advanced technological level. The searches for patents sometimes reveal surprises, as a lot of the patented technology is not traded or only reaches the market years after the granting of the patent. The databanks in North American (www.uspto.gov/patft/index.html) and European patents offices (ep.espacenet.com) offer free access on the Internet and both are currently very representative technological databanks. The INPI also offers online patents’ search (www.inpi.gov.br/MarcaPatente/jsp/servimg/servimg.jsp).
2. Before beginning the manufacturing of a product or use of a process developed by third parties, request an infringement search:
   Please bear in mind that a product or process developed by third parties may be already patented in Brazil. The infringement search will check the existence of patents in force, in Brazil, that may be infringed by such activities.
3. Before beginning the manufacturing of a product or use of a process developed by the company, request a previous search:
   The previous search will look for new aspects in the product or process, which may allow the obtainment of a patent. Moreover, the result of this search may reveal a patent granted to a third party, in force in Brazil, which may be infringed by the manufacturing of the new product and/or use of the new process.
4. To keep an updated correlation between the product’s trademark and/or trade name and the patent (or patents) protecting the product.
   As the patent portfolio increases, it may be difficult to say which patents protect a certain product, when a competitor copies it. Moreover, a product can be covered by different patents, each one protecting a detail of the product.

 Agreements

• Advising, analyses and production of agreements and settlements regarding Intellectual Property matters, including technology assignments, transferring and licensing agreements regarding patent, trademark, design, copyright and cost-sharing;
• Advising, analyses and production of agreements related to distribution matters, such as franchising, distribution of products; etc.;
• Advising on business negotiations.

 Disloyal competition and business secrets

• Advising on adequate measures to protect the interests and rights of the company against competitors.
• Provision of solutions and strategies in case of disloyal or fraudulent actions of third parties.
• Analysis and elaboration of agreements to protect business secrets, exams and opinions on confound between products’ packaging, forms of presentation and industrial drawings.

 Copyright

• Guidance on protection of creations in the Copyright scope.
• Elaboration of opinions on matters related to copyright, software and advertising.
• Registration of works and software before competent offices in Brazil and abroad.
• Analysis and elaboration of copyright license and assignment agreements and any agreement related to the exploitation of works, as well as advertising production, edition, artistic production, among other things.
• As for advertising, guidance and action before the CONAR.

 Domain name

• Management of conflicts in connection with domain names and other insignias and guidance in relation to the adequate protection for each case.
• Registration of domain names.

 Contentious

• Advising, preparation and study of best strategies to respond to disputes related to all Intellectual Property’s aspects, mentioned above, including piracy.
• Conduction of lawsuits all over Brazil, with the support of the wide local correspondent network.
• Strenuously defend the interests of our clients against any infringement to their intellectual property rights and guarantee rights unduly denied by the INPI or illegally obtained by third parties.