IDS promotes event on technical evidence: research to prove the high renown of the trademark and market research in IP actions

IDS promotes event on technical evidence: research to prove the high renown of the trademark and market research in IP actions

Last Thursday, the Dannemann Siemsen Institute (IDS) held yet another IDS Agenda, this time with the theme “Technical evidence: proving high brand renown and market research in IP lawsuits”. The event discussed relevant issues on the subject, such as which surveys are suitable for proving the high renown of a trademark; what needs to be observed in relation to the preparation and application of surveys; what requirements need to be met; the concept and relevance of market surveys as technical evidence; what are the essential elements for preparing a market survey as technical evidence, among many other topics.

The event was opened by IDS academic coordinator Patricia Porto and moderated by Dannemann Siemsen partner and IDS board member Roberta de Magalhães Fonteles Cabral. As guests, the institute welcomed Gustavo Cesário, professor of branding, IP and marketing at ESPM and guest professor at EMERJ, who addressed important aspects of research to prove the high renown of a trademark; and Kone Prieto Fortunato Cesário, professor at UFRJ and the INPI Academy, who discussed technical evidence in the context of IP lawsuits.

Roberta began by contextualizing the importance of using technical evidence and carrying out market studies in order to assist administrative and judicial analysis in IP cases. Professor Gustavo Cesário then explained the concept of the high renown of trademarks and how the declaration process takes place. He noted that, in 2013, the INPI officially recognized market research (with statistical and objective information) as a necessary document to prove the high renown, as well as the reputation and prestige of a trademark.

Gustavo then explained the difference between exploratory (qualitative) and conclusive (quantitative) research methods, which can be divided into descriptive, i.e. opinion polls, and causal. To prove its high renown, the INPI requires the use of opinion polls, and the professor explained that they can currently be carried out online, in a faster, more effective and comprehensive way. He also addressed the methodological importance of following the regional distribution of the Brazilian population, as well as other mandatory INPI criteria, citing some concrete success cases.

Professor Kone Cesário continued by discussing the types of IP court cases in which market research is used. She also highlighted the use of market research in proceedings aimed at attesting to the distinctiveness (both inherent and acquired) of a trademark, as well as for the assessment of premises that may prevent the registration of trademarks.

Kone also provided insights into research as a tool for understanding the social profile of consumers of a particular brand, highlighting the need to use theoretical frameworks to guide research, such as the 360º Test to assess conflicts between trademarks. In this sense, Kone highlighted the importance of choosing the right theoretical framework for each type of research, since the research objective may not be achieved by choosing the wrong theoretical framework. Finally, she discussed the deadlines for carrying out market research, as well as working together with legal experts.

The recording of the event will be available on the IDS website.