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Superior Court of Justice applies the principle of patent territoriality in a case involving FIFA and the “vanishing spray” in football matches.

In a recent judgment, the 3rd Panel of the Superior Court of Justice (“STJ”) recognized that a Brazilian patent can only produce effects on acts that occurred in Brazil1.

The “vanishing spray” is a device used by referees to mark the distance from the barrier to the ball in situations of fault, developed in 2000 and which had its patent filed in 44 different countries, among them, Brazil.

According to Spuni Comércio de Produtos Esportivos e Marketing, holder of the patent PI 0004962-0 and plaintiff of the action, FIFA showed interest in acquiring the patent rights of the invention for the value of U$ 40 million, but the parties did not close the deal. According to Spuni, FIFA started using a third party’s “vanishing spray” in 2013, which constituted a violation of its patent rights and breach of contract.

FIFA filed a Special Appeal against the ruling of the Rio de Janeiro State Court of Justice, which upheld the decision that had granted urgent relief, determining that the federation itself, “be ordered to cease, within 5 days, under penalty of fine to be arbitrated for an event of no less than R$ 50,000.00 (fifty thousand reais), the use of marking spray or marking in competitions organized by it or by its affiliated Confederations or Associations”.

In its reasons, FIFA, in addition to challenging the granting of emergency relief, also claimed the lack of Brazilian jurisdiction, which would lead to the dismissal without prejudice. However, on July 10, 2020, the claim was denied, and the interlocutory relief and the order to abstain from using vanishing spray, by FIFA, in Brazil was revoked. In this way, the special appeal has lost its purpose with regard to the interlocutory relief.

For this reason, the appellant interest remained only with regard to FIFA’s claim about the lack of Brazilian jurisdiction. Spuni intended that the abstention order covered football federations and associations around the world. However, the Reporting Justice Paulo de Tarso Sanseverino pointed out that, in this case, the Brazilian judicial authority has jurisdiction to judge only the patent infringement allegedly occurred in the national territory, including football matches held in Brazil and the pre-contractual negotiations initiated in the country.

In view of this, he clarified that the Brazilian authorities have no jurisdiction to examine the facts that occurred outside the national territory, since they would represent an alleged violation of patents granted by other countries, and it is necessary to seek their protection from the judicial authority of each of these States.

As a result, the Reporting Justice heard part of the Special Appeal, partially granting recognition of the jurisdiction only with regard to the patent granted by Brazil, the effects of which are limited to the national territory.

Special Appeal 1.888.053

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