Brazil has published a list of more than 5,000 generic terms from the Portuguese language related to Brazilian plant biological diversity to raise awareness and prevent further misuse of trademarks that hinder Brazilian exports.

The Brazilian government has been, and is, involved in a number of trademark disputes with companies that, for example, take a name of a fruit in Brazilian Portuguese and trademark it to get exclusive rights to commercialise it under that name in a certain country or region.

This hinders Brazilian exports, especially when it happens in larger markets, Cristiano Franco Berbert of the Permanent Mission of Brazil in Geneva told Intellectual Property Watch.

Berbert said the mission has sent the list to the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO) to help raise awareness of the issue. The government also is looking into the possibility of the list being circulated at a future meeting of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, he said.

WIPO members adopted a Revised Trademark Law Treaty in March of this year (IPW, WIPO, 5 April 2006).

In addition, Brazil is looking into the list possibly being presented at the WTO Council on the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, Berbert said.

Brazil has distributed the list to trademark offices around the world, it said in a 24 July press release. Misuse of these names as trademarks is “very difficult to monitor,” Berbert said, adding that the Brazilian government hopes this list will be used as a basis for consultation with parties involved.

Berbert said that Brazil has experienced this trademark problem in the United States, and in individual countries such as Italy, Japan and the United Kingdom. Some of the companies have, however, revoked the trademarks.

In some countries, lawyers are even working for free for the Brazilian government to fight the issue, he added.

In Japan, a number of second or third generation descendants of Japanese immigrants to Brazil have returned to Japan, bringing with them the generic names from Brazilian Portuguese and trademarking them.

One example is “açaí,” which is the generic name in Brazil for a small, dark blue/black fruit that was traditionally eaten in the Amazon but which became very popular as a health food item in southern Brazil some five to 10 years ago. This has, for example, been trademarked in Japan, he said.

Another example is “rapadura,” an unrefined brown sugar traditionally eaten in northeastern Brazil, but which some foreign companies have tried to trademark in certain markets, Berbert said.

Berbert emphasised, however, that after having conducted an in-depth study, the government decided to only focus on generic names from the Portuguese language used in Brazil that are associated with Brazilian biodiversity, not all Portuguese generic terms. The word for cheese in Portuguese is therefore not on the list, he said.

The Japanese Patent Office confirmed that it had received “a list of biodiversity” through the ministry of foreign affairs. “The JPO is contacting with Brazilian Embassy in Tokyo in order to consider it carefully,” said Toshinao Yamazaki, chief of Europe Section, International Affairs Division, of the JPO.

Up to Each Trademark Office

Eric Noel, trademark attorney at the Geneva-based law firm, Katzarov, told Intellectual Property Watch that the list is “not a bad initiative,” but in terms of global impact he questioned Brazil’s authority to issue the list and said that it would be up to each national trademark office to decide whether to enforce it or not.

“Each country is entirely free to decide what regulation to adopt” in terms of trademark guidelines, Noel said. Adding to the complexity of the issue, he said that something that would be considered a generic name in Germany would possibly not be so in France, and while a name would not be generic today, it could be considered so at a later stage.

Noel said that one could “often see people who trademark generic names,” often to license them to third parties. However, these names face difficulties when challenged by third parties in courts, he said.