[Wikimedia Brasil] WF Trademarks - Unauthorized registration attempt in Brazil

[Mike Godwin]

Dear Joaquim,

I'm referring your query to the person in charge of our trademark  
portfolio, Alisa Key, who is cc'd on this message. Alisa, can you  
advise Joaquim and Wikimedia Brasil as to how you would want to go  
forward from here?


--Mike



On Dec 17, 2008, at 6:40 PM, Joaquim Mariano da Costa Neto wrote:

>
> Dear Michael Godwin,
>
>     I am a Brazilian wikipedian and I am beginning to work with our  
> team of local volunteers. I am writing to inform you some issues  
> related to trademarks that may belong to the Wikimedia Foundation.
>
>     In Brazil, the Industrial Property National Institute (INPI -  
> Instituto Nacional da Propriedade Industrial) is the federal  
> department in charge of registering and controlling the intellectual  
> property (which includes trademarks).
>
>     Yesterday, after a brief research at the INPI website, I found  
> that two Brazilian companies are trying to register at INPI some  
> trademarks that may belong to the Wikimedia Foundation. In 2006 and  
> 2007, these two companies filed at the INPI the requests for  
> registering the following trademarks: www.wikipedia.com.br and  
> wikipédia. It is important to notice that one of the companies is  
> not trying to register the domain wikipedia.com.br: the company is  
> just trying to register a trademark that uses the  
> expressionwww.wikipedia.com.br (with a specific logotype). I list  
> below the trademarks that may belong to the Wikimedia Foundation and  
> the names of the respective companies that filed the related  
> requests for registering (with the INPI file numbers and the dates  
> of request in round brackets):
> - www.wikipedia.com.br - Web Use Serviços Ltda. ME (900080442)  
> (10.nov.2006)
> - wikipédia - Wikipédia Distribuição de Conteúdo Eletrônico Ltda.  
> (900632860) (29.nov.2007)
>
>     The Brazilian Internet Steering Committee (CGI.br - Comitê  
> Gestor da Internet no Brasil) is the Brazilian federal department in  
> charge of registering and controlling the Brazilian Internet  
> domains, with jurisdiction over the country code top-level domain  
> designated for Brazil (.br). The CGI.br (which is not related to the  
> INPI) made the domain wikipedia.com.br unavailable for any entity  
> other than Wikipedia. Therefore, the current problem is not related  
> to the registration of the domain, but to the registration of the  
> trademark that uses the expression www.wikipedia.com.br.
>
>     The requests in question are still in analysis and the INPI did  
> not decided to concede or refuse the registrations.
>
>     The Brazilian law states that the request for registering a  
> trademark may be opposed by proving that similar or identical  
> trademark already exists and is legally registered. In other words,  
> the Wikimedia Foundation may oppose the requests filed by the above- 
> mentioned companies at INPI.
>
>     After the concession, the registration may also be made null and  
> void by proving that similar or identical trademark exists and had  
> been legally registered before the request was filed.
>
>     If you need any further clarification, feel free to contact us.  
> We are at your disposal to help.
>
>         Kind regards,
>
>             Joaquim Mariano da Costa Neto
>
>
>
>
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