ELISA SANTUCCI

Practice Areas
Intellectual property

Throughout her 25 years in the area, a substantial part of her practice has been dedicated to national and international companies, trademark owners with medium or large portfolios, even though she has also had individuals as part of her clientele. Her expertise comprehends all administrative steps in trademark prosecution: from filing to renewal, passing by contentious procedures such as oppositions and administrative cancellations, all before the Brazilian Patent & Trademark Office – BPTO. When necessary, she has move forward taking matters up to Brazilian courts. In that regard, her experience amounts to infringement actions and cancellation lawsuits.

Still in the intellectual Property field, part of her routine is dedicated to drafting franchise agreements and related documents. Elisa also has expertise in drafting, revising and recording trademark/patent licensing, know-how and technical assistance agreements. She also deals with software protection before the BPTO and copyright protection before at the National Library, Nacional School of Fines Arts and National School of Music.

Elisa drafted, in 2009, upon request of the Brazilian Institute of Cachaça –IBRAC, the Regulation for the use of Cachaça by Cachaça producers, as part of the conditions for “CACHAÇA”, a geographical indication, to have uniform standards to deserve the GI status. Elisa also represented the Consejo Regulador del Tequila A C. in Brazil, preparing and filing in 2008, before the Brazilian Patent & Trademark Office, the request which would enable “TEQUILA” to be recognized as a Geographical Indication in Brazil.

Under her practice, even though less frequently, is her role as an Intellectual Property expert witness for the Rio de Janeiro State Courts and her role as a specialist in panels established by the Arbitration Chambers of the Brazilian Association of Intellectual Property for Domain Names Dispute Resolution.

She started in the area in 1993, when she accepted a position in the filing department of a large IP firm in Brazil. For 17 years, she has worked in 3 of the main Brazilian IP firms. Then, in 2009, she accepted a position as the IP Manager for Latin America in the Swiss agrochemical multinational Syngenta, whose Brazilian subsidiary is headquartered in São Paulo.

Publications and Seminars

  • “Arbitration in Brazil” © 1990;
  • “Roquefort não é um queijo” (Roquefort is not a type of cheese) © 2005.

AWARDS AND RECOGNITIONS

  • Recognized in 2017 and 2018 by the WTR (World Trademark Review) in the publication ‘WTR 1000” – The 1000 World’s Leading Trademark Professionals.

professional association

  • Member of the International Trademark Association – INTA – having participated in several committees such as the Regulatory Analysis Committee, Geographical Indications, Courts & Tribunals and Emerging Issues Committee (2002 to date).
  • Director Treasurer of Brazilian Association for Industrial Property Agents – ABAPI (1998 to date).
  • Member of the Brazilian Association for Intellectual Property – ABPI (1998 to date).
  • Brazilian Bar Association – OAB (1988 to date).

ACADEMIC EXPERIENCE

  • Professor of the Basic and Intermediary Courses for Intellectual Property professionals offered by Brazilian Association for the Industrial Property Agents – ABAPI (2000-2004).
  • Coordinator of the Basic Course for Intellectual Property professionals offered by Brazilian Association for the Industrial Property Agents – ABAPI (2004 – 2006).

education

  • Master in Laws (LL.M.) Tulane University, New Orleans, Louisiana – USA (1990).
  • Law School graduate from Catholic University of Petrópolis, Petrópolis, Rio de Janeiro (1988).

languages

  • Portuguese, English and Spanish.

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