Biography

In October 2018 Luis was appointed to the post of Departmental Lecturer in Intellectual Property at the Law Faculty. He currently teaches across all areas of IP on the FHS (Copyright, Trade Marks and Allied Rights; Copyright, Patents and Allied Rights) and BCL/MJur (Intellectual Property Law) course options.

Luis practised law in Brazil as a legal advisor and litigator for more than ten years in the field of intellectual property, notably trade marks, patents, intermediary liability and unfair competition. His practice encompasses experience in international arbitration covering  distribution and technology transfer agreements, confidential information and IP rights. More recently, Luis co-authored an amicus brief in a high-profile constitutional challenge before the Brazilian Supreme Court dealing with patent law, TRIPS compliance and industrial policy.

In the past years, Luis acted as a GTA teaching patents and copyright tutorials in both FHS IP options at Oxford (2016-2017), and as a Lecturer in the Intellectual Property Postgraduate Program at Pontifícia Universidade Católica do Rio de Janeiro (2008-2016). He was a Visiting Teacher at the London School of Economics for the 2017-2018 academic year, leading copyright and patents seminars in the Intellectual Property Law undergraduate course. Luis also taught exchange students across various Oxford colleges.

Luis holds an LLB degree from Pontifícia Universidade Católica do Rio de Janeiro (Brazil), awarded with a full-tuition merit scholarship, and MJur and MPhil (Distinction) degrees from the University of Oxford. He has recently completed the DPhil and his doctoral research explored the interplay between the functions theory and scope of protection in European trade mark law. Luis' other research interests include patents, law and (behavioural) economics, and legal theory applied to Intellectual Property. He is also an Academic Advisor to the Hibernian Law Journal, edited by the Irish Law Society.

Languages: English, Portuguese

Publications

Displaying 1 - 13 of 13. Sorted by year, then title.
Filter by
  • L H Porangaba, 'Acquired Distinctiveness in the European Union: When Nontraditional Marks Meet a (Fragmented) Single Market' (2019) 109 Trademark Reporter 619
    This article examines the emergence of a territoriality-centered approach to acquired distinctiveness of European Union ("EU") trademarks, which devolves into a formalistic exercise of assessing market conditions of all Member States individually. In so doing, it challenges the conventional wisdom that nontraditional marks (e.g., shapes and colors) are best kept away from the EU register. The issue of acquired distinctiveness cannot be framed as a binary choice between keeping such marks freely available for use by everyone or their complete removal from the European single market; coexisting national rights and unfair competition laws make a patchwork that most companies find difficult to navigate. This legal patchwork raises a set of considerations that the current approach, recently upheld in Nestlé v. Mondelez, fails to address. Rather, the all-or-nothing rationale prevailing at registration has little reason to survive in light of recent CJEU jurisprudence on the scope of protection of EU trademarks. A better solution may be attained through application of the functions theory, by allowing national courts to derogate from the equal effect norm at the infringement stage.
  • L H Porangaba, 'A Contextual Account of the Trade Mark Functions Theory' (2018) Intellectual Property Quarterly 230
    The functions theory continues to be one of the most contentious issues in contemporary European trade mark law. In this article, I propose a reading of the CJEU jurisprudence by emphasising the theoretical distinction between trade mark use doctrine, as a defensive theory of immunisation, and functions theory operating through a contextual assessment. By focusing on confusion-based claims, I argue that the development of the functions theory is intertwined with and most productively understood alongside the increasing role of context in trade mark infringement. It should be seen as a doctrinal device that, together with a more realistic (or hybrid) construction of the average consumer, enabled infringement assessment to be infused with market realities, in response to the problems of abstraction that an expansionary trade mark doctrine had created. The emerging approach to the origin function has important lessons for how other functions ought to be assessed during infringement analysis.
  • L H Porangaba, Actavis v Eli Lilly – Has Equivalence Lost Its Purpose?, paper presented at Oxford Intellectual Property Discussion Group, Apr 2018
    Until recently, the question of infringement in UK patent law had been one of purposive construction of the claim. Whether the underlying invention was a lintel used in construction, a handheld epilator or a method for the production of a hormone, scope of protection would ultimately turn on ‘what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.’ Although such an approach promised to deliver a simpler, more predictable assessment, it attracted heavy criticism for providing only limited protection against infringement by equivalent means. In order to be infringing, immaterial variants – that is, modifications with no significant effect on how the invention works – still had to fall within the language of the claim. Hence extending vertically could mean something other than a 90-degree angle, but a helical spring would never be a rubber rod in the eyes of the skilled reader. This limiting character of purposive construction led a commentator to define it as ‘contextual literalism’, and many decried the UK approach as being inconsistent with the Article 69 Protocol to the European Patent Convention. In Actavis v Eli Lilly, the UK Supreme Court parted ways with tradition to embrace a self-standing doctrine of equivalents. Following a doctrinal distinction between the issues of (1) interpretation of patent claims and (2) scope of protection, infringement now unfolds into a two-stage assessment which notionally suggests a closer alignment with other European jurisdictions. But what may be seen as a methodological shift to ensure compliance with international obligations – and a laudable harmonisation effort in itself – may bring about a more significant change to the law of infringement. This paper attempts to investigate the potential impact of the Supreme Court’s decision on patent policy and, in particular, the extent to which some of the normative propositions injected into this new equivalence regime are justified.
  • L H Porangaba, Product Design and Trade Mark Use, paper presented at Indiana University Maurer School of Law, Mar 2017
  • L H Porangaba, 'Cartier v British Sky e as Ordens de Bloqueio Dirigidas a Provedores de Acesso à Internet – Uma Lição a Ser Aprendida? (Cartier v British Sky and ISP Blocking Injunctions – Is There a Lesson to Be Learned?)' (2015) 135 Revista da Associação Brasileira da Propriedade Intelectual 39
    Available in Portuguese only.
  • L H Porangaba, The Market Concept of Trade Mark Law, paper presented at OHIM Universities Network, May 2014
  • L H Porangaba, 'Breve Estudo Acerca do Princípio da Exaustão e dos Direitos Residuais sobre a Marca (Brief Study on the Exhaustion Doctrine and Residual Trade Mark Rights)' (2013) 122 Revista da Associação Brasileira da Propriedade Intelectual 65
    Available in Portuguese only.
  • L H Porangaba, Signos Distintivos e Direito da Concorrência (Distinctive Signs and Competition Law), paper presented at Instituto dos Advogados Brasileiros, Jan 2013
  • L H Porangaba and M Goyanes, 'Data Protection Multi-Jurisdictional Guide (Brazil)' (2012) Practical Law Company, Thomson Reuters
  • L H Porangaba, 'Princípio da Exaustão e os Direitos Residuais sobre a Marca (Exhaustion Doctrine and Residual Trade Mark Rights)' (2011) Revista da Escola da Magistratura Regional Federal da 2ª Região 265
    Available in Portuguese only.
  • L H Porangaba and M Goyanes, 'Multiple Rights Agreements in Brazil' in Julian Bentley (ed), Multiple Rights Deals in the Music Industry (Five Eight 2009)
  • L H Porangaba, M Goyanes and L D Pereira, 'Uma Instrução que Não Estava Prevista no Script' (2008) Revista Propriedade Etica 70
    Available in Portuguese only.
  • L H Porangaba and M Goyanes, IFTA Arbitration Award Enforcement Booklet (Brazil) (Independent Film & Television Alliance 2007)
    Contribution to handbook (Brazilian law chapter).

Centres

Research Interests

Intellectual Property; Trade Mark Law; Patent Law; Comparative Law

Options taught

Copyright, Patents and Allied Rights, Copyright, Trade Marks and Allied Rights, Intellectual Property Law

Research projects