Kasznar Leonardos Intellectual Property

Managing Partner: João Luis Vianna

Number of partners: 20

Languages: English, French, German, Portuguese, Spanish|

With more than a century of professional experience, at Kasznar Leonardos, we are renowned for our expertise and excellence in delivering services across all areas of Intellectual Property, catering to clients of varying sizes. We strategically and multidisciplinarily operate in managing applications; as legal advisors in licensing and other contracts; as solicitors in litigation and arbitration; and as neutrals in arbitration and mediation. We approach our work in a distinctive and bespoke manner, constantly devising innovative solutions. Our reputation and expertise, coupled with a strong work ethic and comprehensive approach, enable us to guide our clients towards the forefront of innovation.

Main Areas of Practice

• Trademarks
• Unfair Competition
• Patents Regulatory
• Health Care
• Life Sciences
• Domain Names
• Privacy & Data Protection
• Copyrights
• Fashion Law
• Anti-Piracy & Compliance
• Transfer of Technology & Licensing of Rights
• Marketing & Entertainment Law
• Trade Secrets

Patents:

Successfully represented one of the largest independent producers of high-quality metallurgical coke in the Americas, in a lawsuit involving the infringement of two of its Brazilian patents in the field of heat recovery cokemaking technology by a company that was responsible for the construction of coke batteries located in the largest steel mill plant in the country. Represented an important European pharmaceutical producer of several drugs for dermatological diseases. The Brazilian FDA Agency (ANVISA) denied the prior consent of one of the firm’s client’s patent application based on the understanding that said invention did not comply with patentability requirements. In order to challenge ANVISA’s decision the firm filed before the Federal Courts of Brasília a writ arguing that the Brazilian Patent and Trademark Office is the sole authority entitled to assess patentability requirements. The firm was very successful in obtaining an ex parte injunction that ordered ANVISA to annul its previous decision and to render a new one in 30 days, this time limited to public health issues.

Contacts: Tatiana Almeida Silveira

Tel: +55 21 2113 1919

Email: [email protected]

Trademarks:

Represented a multinational beverage corporation owner of one of the world’s strongest and most recognised trademark and trade dress in an infringement lawsuit involving the imitation of the client’s label and the possible confusion and/or undue association of the products, against a solid manufacturer of soft drinks headquartered in the city of Manaus (Amazonia). The firm’s office was able to achieve a successful result, having been granted an ex parte injunction to, among other things, prevent the defendant from using the trade dress under dispute. Represented an important company responsible for electronic payments in Brazil. A small editor in the South of Brazil filed a trademark infringement lawsuit stressing that the use of an identical trademark represented infringement and dilution, obtaining a comprehensive injunction. The firm was able to reverse the injunction after obtaining the suspension of effects of the trademark register from an injunction granted in a validity lawsuit, as the company did not meet all legal requirements when registered its trademark.

Contact: Flávia Tre

Tel: +55 21 2113 1919 ext 1898

Email: [email protected]

Copyrights:

Represented a huge Brazilian jewelry store chain, in an infringement lawsuit filed by the heirs of Paul Landowski, a French-Polish artist who passed away in 1962, against the firm’s client, seeking damages for the alleged unauthorised sale of pendants reproducing the ‘Christ, the Redeemer’ one of Rio de Janeiro’s landmarks, and claiming that Landowski was the author, and sole owner of the copyright of such work. With evidence, gathered by the firm, that the Christ, the Redeemer’ was a work made for hire, and idealised by the Archdiocese of Rio de Janeiro as a celebration of the 100 years of Brazilian Independence in 1922, the Court decided in the client’s favour, stating that the sole owner of the copyright over ‘Christ, the Redeemer’ is the Archdiocese of Rio de Janeiro. Another important case was the discussion of how to assess database ownership and the right of a company over the database in a misappropriation case. The firm represented an important Brazilian retailer, which identified a database breach and verified that the data was being sold online. It was filed a lawsuit in order to assert the ownership of the database and, grounded on the ownership, it was obtained an injunction enjoying multiple defendants to identify the parties responsible for the unlawful commercialisation of the database and also to cease further commercialisation.

Contact: Claudio Barbosa

Tel : +55 11 2122 6600

Email: [email protected]

Licensing:

Represented one of the global leaders in products and solutions for improving foundry performance and the quality of castings, in an administrative proceeding before the Brazilian Patent and Trademark Office. The firm’s client’s royalty-bearing trademark license agreement with its subsidiary providing for the payment of 1% of royalties on the sales of products covered by licensed trademarks was rejected by the BPTO, under the allegation that it was not possible to authorise royalty payments in this situation, when the licensed trademarks were being used by the subsidiary prior to December 31st, 1991. In the firm’s appeal to the BPTO’s Attorney General the firm called his attention to the accurate interpretation of article 50 and its sole paragraph of Law 8383/91, according to which the remittance and deductibility of trademark royalties between a mother company and its subsidiary become licit and possible, provided the trademark royalties are duly established through a trademark license agreement executed as from January 1st, 1992. The Attorney General accepted the firm’s appeal and reverted the previous decision.

Contact: Gabriel Leonardos

Tel: +55 21 2113 1919 ext 1851

Email: [email protected]

Marketing & Entertainment Law:

The firm’s marketing law team guides companies through all the legal risks, rules and regulations associated with their marketing practices in Brazil. From day-to-day advertising review, to guidelines on digital advertising and best practices, to complex strategic branding legal advice. The firm is prepared to offer to their clients solid, business oriented legal support.

Contact: Fernanda Magalhães

Tel: +55 21 2113 1919 ext 1885

Email: [email protected]

Anti-Piracy & License Compliance

Kasznar’s anti-piracy and compliance team is widely recognised amongst software entities, copyright owners (specially music, image and video), rights management companies and technology platforms for publishers in view of the success achieved in license compliance campaigns. The firm supports clients from tracking and analysing unlicensed user reports to negotiating the replacement of unlicensed software and other IP-related rights to legal action against nonconforming users.

Contact: Rafael Lacaz Amaral

Tel: +55 21 2113 1919 ext 1898

Email: [email protected]