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

Terça Dezembro 30 05:00:47 UTC 2008

Dear Mike,

1. According to the Brazilian rules and regulations for
Internet, only entities based on Brazil are allowed to register
domains with the Brazilian ccTLD (.br). Foreign entities must have a
local branch in Brazil to make such registration.

2. A temporary registration is granted to foreign companies
that intend to open a branch in Brazilian territory within the period
of 12 months beginning with the time when the application is filed at
the Brazilian Internet Steering Committee (CGI.br - ComitÃª Gestor da
Internet no Brasil). In this case, the foreign company must
basically:
a) have an attorney-in-fact in Brazil (with a written power of
attorney officially translated to Portuguese), which is responsible
for the domain registration;
b) present a statement (officially translated to Portuguese)
by which the company informs its own corporate name, full address,
telephone number, corporate purpose, operating activities, and the
name and post title of the agent which is able to act for the
company;
c) present a statement (officially translated to Portuguese)
by which the company commits itself to settle a branch in Brazil
within 12 months; and
d) fulfill some other minor conditions and formalities.

3. Wikimedia Brasil is not formally and legally established as
a Wikimedia Chapter. Wikimedia Brasil has the approval of the Board
of Trustees (resolution dated October 2008), but is not legally
structured and registered with our local authorities yet. We believe
that we still do not have critical mass to start and maintain a full
and registered entity in Brazil. We are currently working on all
Wikimedia projects and operating in accordance with all Wikimedia
principles and rules (in the same way as a local chapter), but we
believe it would be unwise to register Wikimedia Brasil as a legal
person at this moment.

4. In a pragmatic approach, we believe that the Wikimedia
Foundation should concentrate efforts on the primary problem, which
is the trademark unauthorized registration attempts. The domain
registration is a secondary problem whose solution may depend on the
solution given to the trademark problem. This suggestion is based on
4 main reasons.

4.1. Apparently, the domain (wikipedia.com.br) is
reserved by the CGI.br, while the trademark registration processes
are in course of analysis. Therefore, these trademark applications
are subject to approval at any moment.

4.2. The companies that filed the trademark
applications at the Industrial Property National Institute (INPI -
Instituto Nacional da Propriedade Industrial) probably intend to use
the registration assent as evidence and justification to disengage
the domain that is currently reserved by the CGI.br.

4.3. The Wikimedia Foundation (or the local chapter
with the respective trademark license agreement) will be able to
easily disengage the domain by presenting to the CGI.br the trademark
officially registered by the Wikimedia Foundation itself at the INPI.

4.4. If the Wikimedia Foundation clearly consolidates
position on its own trademarks in Brazil (by officially registering
them at the INPI, in addition to all other international
registrations), the CGI.br will prevent anyone other than Wikimedia
from registering any domain that contains trademark owned by the
Wikimedia Foundation.

5. In any way, the Wikimedia Foundation may consider the
possibility of registering the domain in a temporary condition (item
2 above), while dealing with the trademark issues and waiting for the
registration of the Brazilian Chapter as legal person. After the
registration of the Wikimedia Brasil with our local authorities, the
Brazilian Chapter may succeed the Wikimedia Foundation as legal
holder of the domains in Brazil. This succession must occur within
the 12-month period granted to temporary registration.

6. We apologize for presenting more problems than solutions,
but we believe that you should have a clear idea of the whole
situation. As said before, we are at Alisa disposal to assist her
with any issue related to the Wikimedia projects in Brazil. And I am
beginning to translate to English some regulations for registration
of domain names in Brazil, in case you, Alisa and Doug need them to
decide how to proceed.

Best regards,

Joaquim

________________________________
De: Mike Godwin <mgodwin em wikimedia.org>
Para: Joaquim Mariano da Costa Neto <joaquimmariano em yahoo.com.br>
Enviadas: TerÃ§a-feira, 23 de Dezembro de 2008 20:53:56
Assunto: Re: WF Trademarks - Unauthorized registration attempt in Brazil

Joaquim,

Can
you determine what we need to do to obtain wikipedia.com.br?  If the
registration needs to be made by a local entity, we would be happy to
support your chapter in doing so.

--m

________________________________
De: Mike Godwin <mgodwin em wikimedia.org>
Para: Joaquim Mariano da Costa Neto <joaquimmariano em yahoo.com.br>
Cc: Wikimedia Brasil <wikimediabr-l em lists.wikimedia.org>; Alisa C. Key <AKey em ssd.com>; Doug Isenberg <disenberg em GigaLawFirm.com>
Enviadas: TerÃ§a-feira, 23 de Dezembro de 2008 18:55:03
Assunto: Re: WF Trademarks - Unauthorized registration attempt in Brazil

Dear Joaquim,

Alisa Key, whom I have cc'd on this e-mail, will be the lawyer in charge of challenging the registration of wikipedia.com.br and wikipÃ©dia trademarks in Brazil.  As part of this process, I have authorized her to begin pursuing our own trademark application in Brazil.  Please feel free to share with Alisa any information she requests about the trademark process as it is proceeding now, and please copy me on any correspondence.

Doug Isenberg will determine what to do with regard to the domain name wikipedia.com.br -- I hope that the Foundation can register it directly, but, if not, we may ask your chapter to help us.

We're very grateful that you brought this to our attention!

--Mike Godwin
General Counsel
Wikimedia Foundation

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 wikipÃ©dia. 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 ServiÃ§os Ltda. ME (900080442) (10.nov.2006)
> - wikipÃ©dia - WikipÃ©dia DistribuiÃ§Ã£o de ConteÃºdo EletrÃ´nico Ltda. (900632860) (29.nov.2007)
> 
>     The Brazilian Internet Steering Committee (CGI.br - ComitÃª 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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