Paula Oliveira Bezerra de Menezes
Paula’s practice encompasses domestic and international prosecution of patents, industrial designs, and trademarks; dispute work; and client counseling. She specializes in the development and management of trademark enforcement and anti-counterfeiting programs. She also has extensive experience in unfair competition cases and domain name and other Internet-related disputes. She advises clients on cross-border issues, including how import and export control requirements affect intellectual property rights.
She also counsels clients on enforcing their rights in coordination with Customs and regularly represents them before Customs proceedings. In her copyright practice, Paula assists clients in developing strategies to protect their copyrightable works. In addition, Paula works with clients in the development and implementation of sweepstakes and commercial promotions and advises them on compliance with the relevant regulations and on tax consequences.
Paula writes and speaks regularly on various intellectual property and business topics. Prior professional experience includes Trademark Department of Pfizer AG, Karlsruhe, Germany (2004) and Grünecker, Kinkeldey, Stockmair & Schwanhäusser – Anwaltssozietät, Germany (2003). She has a technical degree in Mediation, a Master in Legal Procedure with focus on Evidence Law and is currently pursuing a Ph.D. degree.
- Course on Quantitative Methods (Universiteit van Amsterdam, UvA), 2019
- University of Birmingham, UK. Part-time researcher pursuing a PhD degree with focus on judicial impartiality, implicit bias and debiasing techniques, since 2017
- Course on mediation of conflicts (Mediare), 2015
- University of the State of Rio de Janeiro (UERJ), Master in Law with focus on Procedure Law and Evidence Law, 2013
- University of the State of Rio de Janeiro (UERJ), Specialization in Industrial Property Rights, 2006
- University of Brazil, Faculty of Law (UFRJ), 2001
- Registered at the Brazilian Bar Association in the States of Rio de Janeiro and São Paulo
- Ranked as “Up and Coming” Intellectual Property Lawyer by Chambers and Partners Latin America 2010.
- Winner, Informa WORLDLeaders International IP Excellence in Patent Practice / Litigation Latin America 2009.
Select Publications and Engagements
- Author “UW-Google Intermediary Liability Research Project: Intermediary Liability and Hate Speech”. The Online Intermediary Liability Research Project, University of Washington, 2017
- Co-Author of “UW-Google Intermediary Liability Research Project – Privacy”. The Online Intermediary Liability Research Project, University of Washington, March, 2016
- Author of the chapter “Mediation of Conflicts in Intellectual Property and the New Civil Procedure Code”, in “Mediation under the New Civil Procedure Code”. Publisher Forense, 2015, 2016, 1 and 2 editions.
- Co-Author of “Analysis of Trade Dress Cases by Brazilian Courts”. Inta Bulletin, Nov. 2015
- Co-Author of “The reform of evidence law in civil procedure in Brazil”, third part, Expert Evidence, Publisher Revista de Processo, v. 242, 2015
- Author of the book “New paths on Expert Evidence”, Publisher 7 Letras, 2014.
- Author, The role of the parties involved in the production of Expert opinion aiming at obtaining the truth” – Revista Eletrônica de Direito Processual – REDP Vol 8º, July/December, 2011.
- Author, “Secrets About Patent and Trademark Litigation in Brazil. For your eyes only!” World IP Review. BRIC Supplement. Nov/Dec 2010.
- Co-author, “Criminal Prosecution for Counterfeiting in Latin America,” INTA Bulletin, Vol. 65, No. 2, January 15, 2010.
- Co-author, “Criminal Prosecution for Counterfeiting in Latin America,” INTA Bulletin, Vol. 65, No. 3, February 1, 2010.
- Author, “Expert Examination in Trademark and Trade-Dress Conflicts: Transferring the Decision on the Merits to a Non-legitimate Third Party?” ABPI Journal, November/December 2009
- Chocolates Garoto S.A. vs General Brands do Brasil Ind. Com. Prod. Alimentícios Ltda. Trade-dress enforcement
- Dell Inc. and Dell Computadores do Brasil Ltda. v USPSYS Comercial importadora de máquinas Ltda. ME. Trademark enforcement
- Boehringer Ingelheim Group vs. EMS S.A. (trade dress). Decided by the Board of Appeal.
- Pompéia S/A Indústria e Comércio vs Chocolates Garoto S/A (three dimensional mark).
- Nestlé Brasil Ltda. and Société des Produits Nestlé S.A. vs. CW Indústria e Comércio de Gelo e Bebidas Ltda. Me. (trademark infringement).
- Dell Computer Corp. (currently Dell Inc.) and Dell Computadores do Brasil Ltda vs. Rafael Gomes Garcia Me. (trademark infringement, trademark conflict, and domain name)
- Speaker on “Innovation Issues in Brazil” – Global Innovation Law Summit at the University of Washington in Seattle, July, 2016
- Who’s Who Legal WWL Brazil 2016, 2017, 2019, 2020.
- WTR 1000 in 2013, 2014, 2015, 2016, 2017, 2018, 2019, 2020.
- Managing Intellectual Property IP Stars Handbook 2014, 2015, 2016-2020.
- Speaker on “The control of production of expert evidence in actions that involve patent and trademark conflicts”. School of Judges of the State of Rio de Janeiro, 2014.
- Chambers Latin America 2010, 2011
- Speaker, “Non-traditional Trademarks,” INTA Annual Meeting, May 2010.