Patents, trade marks, copyright and designs in Brazil: overview

A guide to intellectual property law in Brazil. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Luiz Henrique O. do Amaral, Dannemann Siemsen
Contents

Patents

1. What are the legal requirements to obtain a patent?

A patentable invention must satisfy all of the following requirements:

  • Novelty.

  • Inventive step (not obvious to a person skilled in the art).

  • Industrial application.

 
2. What categories are excluded from patent protection?

The following categories are excluded from patent protection:

  • Discoveries, scientific theories and mathematical methods.

  • Purely abstract concepts.

  • Schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature.

  • Literary, architectural, artistic and scientific works or any aesthetic creation.

  • Computer programs per se.

  • The presentation of information.

  • Rules of games.

  • Operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body.

  • Natural living beings, in whole or in part, and biological material, including genome or germ plasm of any natural living being, when found in nature or isolated from it, and natural biological processes.

  • Items which are contrary to morals, good customs and public security, order and health.

  • Substances, materials, mixtures, elements or products of any kind, as well as the modification of their physical-chemical properties and the respective processes for obtainment or modification, when resulting from the transformation of the atomic nucleus.

  • Living beings, in whole or in part, except transgenic micro-organisms meeting the three patentability requirements (novelty, inventive activity and industrial application), which are provided for in Article 8 of Law No. 9279/96 and which are not mere discoveries.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Brazilian Patent and Trademark Office (BPTO) (Instituto Nacional Da Propriedade Industrial (INPI)) grants and registers patents. The BPTO's website provides guidance on the application procedure: www.inpi.gov.br/portal/artigo/guia_basico_patentes.

 
4. On what grounds and when can third parties oppose a patent application?

Third parties can oppose a patent application on the ground that the invention is non-patentable. Third parties have three separate times at which they can oppose to the grant of a patent by submitting the relevant documents and information which prove that the invention is non-patentable:

  • Between the publication of the application and the end of the examination by the Patent Examiner.

  • Within a period of 60 days after the publication of any administrative appeal filed by the applicant from a first instance decision by the Patent Examiner.

  • In a post-grant administrative invalidity proceeding, which must be filed within six months from the grant of the patent.

 
5. When does patent protection start and how long does it last?

A patent protecting an invention has a term of 20 years from the date of filing, and a utility model patent has a term of 15 years from the date that of filing.

The term of protection will not be less than ten years for patents protecting an invention and seven years for utility model patents, counted from grant, except when the BPTO is prevented from proceeding with the examination as to the merit of the application, due to either a proven pending litigation or for reasons of "force majeure".

 
6. On what grounds can a patent infringement action be brought?

A patent infringement action can be brought where either:

  • The patent has literally been infringed.

  • There is an equivalent patent that has already been issued.

The burden of proof falls on the claimant (except in the case of the infringement of a process patent). IP law states that patent infringement can be also found "even if the violation does not affect all the claims of the patent or if it is restricted to the use of means equivalent to the subject matter of the patent".

 
7. Which courts deal with patent infringement actions?

Enforcement is usually a matter of state jurisdiction, unless a Federal entity is the alleged infringer. Infringement lawsuits can be filed either:

  • In the state where the accused infringer has its principal place of business.

  • In any place where the infringing acts occurred.

  • In the state where the patent owner is seated (where it is a Brazilian company).

 
8. What are the defences to patent infringement actions?

A person accused of patent infringement can use the following defences to a patent infringement action:

  • Its product or process does not fall under the same patent scope as the patent claiming infringement, and so there is no infringement.

  • The patent claiming infringement is itself null and void.

In addition, a person who, in good faith (that is, someone who is unaware that the patented process or product was developed) exploits the patented product or process before the patent application's filing date or priority date has the right to continue to exploit the patent under the same terms and conditions that he has previously done so.

 
9. What are the remedies in patent infringement actions?

The following remedies are available where a patent has been infringed:

  • Preliminary and permanent injunctions.

  • Search and seizure orders.

  • Damages for losses suffered.

Under the section concerning crimes against patents of the Brazilian Patent Law, a crime is committed against a patent of invention or a utility model patent by anyone who either:

  • Manufactures a product that is the subject matter of a patent of invention or a utility model patent without the patent holder's authorisation.

  • Uses a means or process that is the subject matter of a patent of invention without the patent holder's authorisation.

The penalty for this crime can be between three months' to one year's imprisonment, or a fine.

Additionally, supplying a component of a patented product, or material or equipment for carrying out a patented process, without authorisation, provided that the final application of the component, material or equipment necessarily leads to the exploitation of the subject matter of the patent, also constitutes a crime (which carries the same penalty as above).

The above crimes are committed even if the violation does not affect all the claims of the patent, or if it is restricted to the use of means equivalent to the subject matter of the patent.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no fast-track or small-claims procedure for patent infringement actions.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

The mark must be visually perceptive and a distinctive, original sign to be eligible for registration as a trade mark. In addition, the mark must not be prohibited from trade mark protection under the provisions of section 124 of the Brazilian IP Law No. 9279/96.

 
12. Is it necessary or advisable to register trade marks?

It is advisable to register a trade mark because Brazil adopts the first-to-file principle. However, unregistered marks are still protected under section 126 of the Brazilian IP Law No. 9279/96 in accordance with Article 6 bis (I) of the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention) and also under the law of unfair competition.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The Brazilian Patent and Trademark Office (BPTO) (Instituto Nacional Da Propriedade Industrial (INPI)) registers trade marks. The BPTO's website provides guidance on the application procedure: www.inpi.gov.br/portal/artigo/guia_basico_de_marcas.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The BPTO can reject marks described as non-registrable under section 124 of Brazilian IP Law No. 9279/96.

The main non-registrable marks are as follows:

  • Reproductions or imitations of a characteristic or distinguishing element of an establishment or business name belonging to third parties, which are likely to lead to confusion or association with distinctive signs (section 124, V).

  • Signs of generic, necessary, common, usual or merely descriptive nature, when related to the product or service as to its nature, nationality, weight, value, quality and moment of production or service rendering, except when presented in a sufficiently distinctive manner (section 124, VI).

  • Signs or expressions used only as a means of advertising (section 124, VII).

  • Personal names (or signatures of personal names), family or patronymic names and images of third parties, except with the consent of the proprietor, his heirs or successors (section 124, XV).

  • Reproductions or imitations, in whole or in part, even with additions, of a mark registered by a third party, to distinguish or certify a product or service that is identical, similar or akin and which are likely to lead to confusion or association with the third party's mark (section 124, XIX).

 
15. On what grounds and when can third parties oppose a trade mark application?

Third parties can oppose a trade mark application where either (section 124, Brazilian IP Law No. 9279/96):

  • The mark does not meet the legal requirements for registration.

  • The third party has a prior right to that trade mark application.

Third parties can file an opposition to a trade mark application within a 60-day period from the date that the trade mark application is published in the IP Journal.

 
16. When does trade mark protection start and how long does it last?

Protection starts from the date that the trade mark is granted and lasts for ten years. This term can then be renewed indefinitely for further ten-year periods.

 
17. On what grounds can a trade mark infringement action be brought?

An infringement action can be brought on the following grounds:

  • The trade mark is reproduced, or imitated, without the trade mark owner's authorisation (section 129, Brazilian IP Law No. 9279/96).

  • The trade mark already affixed to a product placed on the market is altered, causing confusion or unfair association among customers (section 189, Brazilian IP Law No. 9279/96).

 
18. Which courts deal with trade mark infringement actions?

The state court usually deals with infringement actions, unless a Federal entity is the accused infringer.

However, the Federal court deals with registrability matters which involve reviewing the BPTO's decisions.

Infringement actions can be brought:

  • In the state where the accused infringer has its principal place of business.

  • In any place where the infringing acts occurred.

  • In the state where the mark owner is seated (where it is a Brazilian company).

 
19. What are the defences to trade mark infringement actions?

The main defences to trade mark infringements actions are:

  • The lack of similarity between the marks.

  • The mark accused of infringement does not cover the same products or services as the trade mark.

 
20. What are the remedies in trade mark infringement actions?

Generally, the remedies available in trade mark infringement actions are:

  • Indemnification with a preliminary injunction to cease the infringement.

  • Search and seizure orders.

  • Monetary damages.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no fast-track or small-claims procedure for trade mark infringement actions.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

To obtain copyright protection, the work must be both original, and expressed or fixed in any tangible form known, or which may be invented in the future.

Section 7 of Law No. 9610/98 defines what works can be protected by copyright.

 
23. Can copyright be registered?

Copyright protection arises automatically from the creation of the work. Although registration is not mandatory, the author can register his work in order to establish the prior date of his creation. Literary works must be deposited with the Copyright Office of the National Library for the purposes of controlling Brazilian literary heritage, as well as ensuring the defence and preservation of the national language and culture.

There is no specific central entity for the registration of all copyright works, since the copyright that applies will depend on the nature of the work. For example:

  • Musical works must be deposited with the School of Music.

  • Works of visual art must be deposited with the School of Beaux-Arts of the Federal University of Rio de Janeiro.

  • Audiovisual works must be deposited with the National Film Institute.

 
24. When does copyright protection start and how long does it last?

Generally, the author's property rights last for 70 years as of 1 January of the year following the author's death.

However, there are some exceptions to this rule contained in section 41 of Law No. 9610/98. For example, when a literary, artistic or scientific work is created by two authors, it will last until the death of the last author in compliance with section 41. Another example is when the work is created either anonymously or under a pseudonym, where protection last for 70 years from 1 January of the year following the first publication of the copyrighted work.

 
25. On what grounds can a copyright infringement action be brought?

Section 29 of Law No. 9610/98 contains a list of certain actions which will constitute copyright infringement where they are committed without the copyright owner's express authorisation, including:

  • Complete or partial reproduction of the works.

  • Publication of the works.

  • Translation of the works into another language.

A copyright infringement action can also be brought on the grounds of plagiarism.

 
26. Which courts deal with copyright infringement actions?

The state court deals with copyright infringement actions. The Federal court will only become involved where the Federal Government is the accused infringer.

Infringement actions can be brought:

  • In the state where the accused infringer has its principal place of business.

  • In any place where the infringing acts occurred.

  • In the state where the mark owner is seated (where it is a Brazilian company).

 
27. What are the defences to copyright infringement actions?

The main defences to copyright infringement actions are that:

  • The work claiming the infringement has no originality and is not itself suitable for copyright protection.

  • The work accused of infringement is sufficiently different from the copyrighted work so that copyright is not, in fact, infringed.

 
28. What are the remedies in copyright infringement actions?

Generally, the remedies available in copyright infringement actions are:

  • Indemnification with a preliminary injunction to cease the infringement.

  • Search and seizure orders.

  • Monetary damages.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no fast-track or small-claims procedure for copyright infringement actions.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

A design must have the following qualities to obtain an industrial registered design right:

  • Novelty.

  • Originality in an ornamental plastic form of an object, or any ornamental arrangement of line and colours, that provides a new and original visual result in its configuration.

  • Be capable of industrial manufacture.

 
31. Which authority registers designs?

The Brazilian Patent and Trademark Office (BPTO) (Instituto Nacional Da Propriedade Industrial (INPI)) registers industrial designs. The BPTO's website provides guidance on the application procedure: www.inpi.gov.br/portal/artigo/guia_basico_desenho_industrial.

 
32. On what grounds and when can third parties oppose a registered design application?

There are no grounds for opposing an application for a registered industrial design right. However, once the registered industrial design has been granted, third parties can commence nullity proceedings within a five-year period from the date that the registered industrial design is granted.

Any ground showing that the registration was granted contrary to the legal provisions can be used. Usually, these grounds consist of a lack of novelty or originality. However, other issues can be argued, including:

  • The design is contrary to morals and good customs.

  • The design offends the honour or image of people.

  • The design is contrary to the liberty of conscience, belief, religious cults or ideas and feelings worthy of respect and veneration.

  • The design refers to the necessary common or ordinary shape of an object or, further, which is determined essentially by technical or functional considerations.

 
33. When does registered design protection start and how long does it last?

A registered industrial design will be protected for a period of ten years from the date of filing, and this protection can be renewed for three successive periods of five years each.

 
34. On what grounds can a registered design infringement action be brought?

A registered industrial design infringement action can be brought on the following grounds:

  • The registered industrial design has been used without authorisation.

  • The registered industrial design has been incorporated without authorisation.

  • The registered industrial design has been substantially imitated, and that imitation could cause confusion among customers.

 
35. Which courts deal with registered design infringement actions?

The state court deals with registered industrial design infringement actions. The Federal court will only become involved where the Federal Government is the accused infringer.

Infringement lawsuits can be filed either:

  • In the state where the accused infringer has its principal place of business.

  • In any place where the infringing acts occurred.

  • In the state where the registrant owner is seated (where it is a Brazilian company).

 
36. What are the defences to registered design infringement actions?

The following defences are available to a registered industrial design infringement action:

  • The registered industrial design claiming infringement is null and void.

  • The industrial design accused of infringement is different from the registered industrial design so that there is no infringement.

 
37. What are the remedies in registered design infringement actions?

The following remedies are available in registered industrial design infringement actions:

  • Preliminary and permanent injunctions.

  • Search and seizure orders.

  • Damages for losses suffered.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no fast-track or small-claims procedure for registered industrial design infringement actions.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

An unregistered design can be protected under the law on unfair competition (Article 195, Brazilian IP Law No. 9279/96).

 
40. When does unregistered design protection start and how long does it last?

There is no specific term of protection for unregistered design rights.

 
41. On what grounds can an unregistered design infringement action be brought?

An unregistered design right infringement action can be brought on the ground that the use of the unregistered design constitutes unfair competition.

 
42. What are the defences to unregistered design infringement actions?

The only available defence to an unregistered design infringement action is that the use of the unregistered design does not constitute unfair competition.

 
43. What are the remedies in unregistered design infringement actions?

The following remedies are available in unregistered design infringement actions:

  • Preliminary and permanent injunctions.

  • Search and seizure orders.

  • Damages for losses suffered.

 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

In general, there are two situations in which obtaining the use of a trade secret and/or confidential information is illegal:

  • Where it is acquired through improper means.

  • Where its acquisition involves a breach of confidence.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

Confidential information and/or trade secrets are generally protected by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS) and Brazilian intellectual property law. TRIPS has been incorporated into domestic legislation by Federal Decree No. 1,355/94, and provides, in Article 39:

  • In the course of ensuring the effective protection against unfair competition as provided in Article 10 of the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention), members shall protect undisclosed information.

  • Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information:

    • is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

    • has commercial value because it is secret; and

    • has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

In addition, Federal Decree No. 1,355/94 states that violations of confidential information and/or trade secrets are considered unfair competition (Article 195). A crime of unfair competition is committed by a person who:

  • Uses fraudulent means to divert, for his own or a third party's benefit, another's clientele.

  • Discloses, exploits or uses, without authorisation, confidential knowledge, information or data, usable in industry, commerce or the providing of services, except that which is of public knowledge or which is obvious to a person skilled in the art, to which he has had access by means of a contractual or employment relationship, even after the termination of the contract.

  • Discloses, exploits or uses, without authorisation, knowledge or information as mentioned in the bullet point directly above, when obtained directly or indirectly by illicit means or to which he has had access by fraud.

 
46. Which courts deal with actions for unauthorised use of confidential information?

In general, lawsuits involving violations of confidential information and/or trade secrets are prosecuted before the state courts in Brazil. These actions are only prosecuted before the Federal courts when one of the parties is a Federal entity (in this case, the lawsuit must be filed at a Federal court).

Infringement actions can be brought in any of the state courts in Brazil (normally, the venue is where the infringer is domiciled or where the infringement is taking place).

 
47. What are the defences to actions for unauthorised use of confidential information?

The potential infringer can allege that it has obtained the confidential information or trade secret by lawful means (such as independent discovery, reverse engineering, and inadvertent disclosure resulting from the trade secret holder's failure to take reasonable protective measures). A potential infringer can also argue that the use of the confidential information does not constitute unfair competition.

 
48. What are the remedies in actions for unauthorised use of confidential information?

There is a dearth of case law dealing with the calculation of damages in these cases. In any case, any action will presumably take into account the three criteria for calculating damages provided for in Article 210 of Federal Decree No. 1,355/94, with those being:

  • The benefits that would have been gained by the injured party if the violation had not occurred.

  • The benefits gained by the person violating the rights.

  • The remuneration that the person violating the rights would have paid to the proprietor of the violated rights for a licence which would have legally permitted him to exploit the subject of the rights.

In addition to damages, injunctions are also available.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

Even though the Procedural Code provides some expedited procedures (summary procedures), these procedures are only allowed for those cases which have a reduced amount of damages (limited to 60 times the amount of the minimum wage in Brazil). As most IP cases usually involve higher amounts for damages, these lawsuits tend to follow the ordinary procedures.

 

The regulatory authority

Brazilian Patent and Trademark Office (BPTO) (Instituto Nacional Da Propriedade Industrial (INPI))

W www.inpi.gov.br

Main areas of responsibility. Any matter in relation to intellectual property.

Guidance on application procedure. The BPTO's website provides guidance on the application procedures for trade marks, patents, industrial designs, geographical information, and computer programs.



Contributor profile

Luiz Henrique O. do Amaral, Partner

Dannemann Siemsen Advogados

T +55 21 2237 8716
F +55 21 2237 8922
E amaral@dannemann.com.br
W www.dannemann.com.br

Professional qualifications. Graduated from the Cândido Mendes Law School, Rio de Janeiro,1985

Areas of practice. Litigation; corporate law; unfair competition; intellectual property (including copyright and trade marks); transfer of technology and licensing of rights; franchising; consumer law; geographical indications; information technology; competition law.

Languages. English, Portuguese, French

Professional associations/memberships.

  • Partner and Executive Committee Member of the Law Firm Danneman Siemsen Advogados and of the industrial property firm Dannemann, Siemsen, Bigler & Ipanema Moreira.
  • Leading litigator of the firm's enforcement and anti-piracy group and head of the licensing group.
  • President of the Brazilian Intellectual Property Association (ABPI).
  • President of the AIPPI Brazilian Group (Association Internationale pour la Protection de la Propriété Intellectuelle).
  • President of LIDC Brazilian Group (Ligue de Droit de la Concurrence).
  • Board Member of the Global IP Network.
  • General Counsel of the Brazilian Franchising Association (ABF).
  • Secretary General of the World Franchising Council (WFC) for 2009/2010.
  • Member of the CNCP (National Council for Piracy Combat of the Ministry of Justice).
  • Member of the Biotechnology Information Counsel (CIB).
  • Member of the Intellectual Property Committee of the American Chamber of Rio de Janeiro.

Publications. Franchising: Aprenda com os especialistas (Learn from the experts), Beto Filho et al, 1 ed, Rio de Janeiro, ABF-Rio, 2013.


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