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Brazil

Published on Thursday 7th June 2018

    • Brazil

      Under the patent regime, the Brazilian Intellectual Property Law (Law No. 9279/1996 – BIPL) allows the granting of utility models (UM) and patent of invention (PI).

      In order to be endowed with the privilege of a PI, the law determines that the invention needs to fulfil three prerequisites: novelty, inventive step and industrial application.

      On the other hand, to have a UM granted, the law determines three other requisites: novelty, inventive act and industrial application.

      To prove that a given object does not fulfil the novelty requirement, it suffices to provide a single prior art document that reveals the exact same object claimed in a patent application.

      However, to prove that a given object does not include an inventive step or inventive act, usually two or more documents are required. 

      The doctrine says that the requisite of inventive act is similar to the inventive step, but appreciated on a smaller scale. In other words, the inventive act would be somewhere on the scale between the novelty requisite and the inventive step requisite. It is worth stating that our practice reveals that it is far easier to obtain a UM than a PI.

      According to Antonio Abrantes, a senior patent examiner at INPI (the Brazilian Patent and Trademark Office), the inventive step requisite in Brazil is harder to achieve than in Europe. Proof of that, says Abrantes, are the following patent applications, which were granted by the EPO as patent of invention while their Brazilian counterparts were granted as utility models: MU8003210 / EP1020327; MU7903354 EP1078349; MU7903356 / EP0943255; MU7903357 / EP1056526; MU7802870 / EP0952936; MU7802869 / EP1028854; MU7802859 / EP1018577B1; MU7903329 / EP0963874B1; MU7703227 / EP0981285B1; MU7402488/ EP0717680B1; MU8003213 / EP1227742B1; MU8003219 / EP1149208B1; MU7703298 / EP0810690B1; MU7802883 / EP0898329B1; MU7802885 / EP0902506B1; MU7703296 / EP0837543B1; MU8003231 / EP1218129B1; MU8103417 / EP1166873B1; MU8003226 / EP1231955B1; MU8103425 / EP1353579B1.

      Last verified on Tuesday 5th June 2018

    • Brazil

      According to the INPI’s examination guidelines, the basic criteria involves three different steps:

      • identifying the closest prior art document;
      • determining the differences between the prior art and the invention; and
      • determining whether the same problem solved by the invention would be solved based on the knowledge derived from the closest prior art.

      When two or more prior art documents are combined, their combination will be considered proof of lack of inventive step if:

      • a person skilled in the art would be prone to combine both techniques when facing the same problem that is being targeted by the invention; and
      • the prior art documents are comprised by the same technical area.

      Last verified on Tuesday 5th June 2018

    • Brazil

      • Patent of invention – PI: covers any kind of invention, including products, parts, processes, embedded software, chemical formula, new materials or a combination of these;
      • Utility model – UM: according to article 9 of the BIPL, applicable only to objects with a new form or arrangement involving inventive act resulting on improvements on their use or manufacture;
      • Industrial design – ID: according to article 95 of the BIPL, the industrial design is an ornamental plastic form of an object having an original marking that may be manufactured on a large scale by the industry; and,
      • Designs of integrated circuits: integrated circuit design involves the creation of electronic components onto a piece of silicon; the protection conceived by the law rests upon a set of 2D drawings and photographs of the circuit.

      Last verified on Tuesday 5th June 2018

    • Brazil

      According to article 40 of BIPL, PIs have 20 years from the filing date and UMs just 15 years. However, there is an exception to the rule: in the event that INPI takes more than 10 years to grant the PI or over eight years to grant the UM, the assignee is rewarded with 10 years of duration after the granting date for the PI and seven years for the UM (in fact, the exception is becoming the rule, considering that INPI's backlog is roughly 11 years for PIs).

      Note that “filing date” means the date of application filing in Brazil for Paris Union Convention applications, or the international filing date, for PCT applications. 

      The duration of protection of ID registration is 10 years after the filing date, plus three successive periods of five years each (upon payment and request of the assignee).

      Last verified on Tuesday 5th June 2018

    • Brazil

      According to the provisions of article 10, items III and V of the Brazilian Industrial Property Law, business methods and computer programs per se are regarded neither as inventions nor as utility models, and, therefore, are not patentable. Computer programs are protected by a specific, copyright-based law, Federal Law No. 9,609 of 1998 (the Brazilian Software Law).

      Regarding software inventions, which combine process and product characteristics with computer program steps, according to the BPTO’s criteria, if the inventions are novel, solve a technical problem encountered in the art and result in new technical effect, they may be patentable, providing that they are not limited to a business method. In other words, if the system is known and only the method is novel or if the inventive activity involved results only from the used method, it is considered a business method and the application will not be allowed.

      Besides business methods and computer programs per se, article 10 of the BIPL defines additional matters that are regarded neither as inventions nor as utility models. The list includes, inter alia:

      • discoveries, scientific theories and mathematical methods; purely abstract concepts;
      • schemes, plans, principles or methods for commerce, accounting, financing, education, advertising, lottery and control;
      • literary, architectural, artistic and scientific works or any aesthetic creation;
      • the presentation of information; rules of games;
      • operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and
      • natural living beings, in whole or in part, and biological material, including the genome or germ plasma of any natural living being, when found in nature or isolated therefrom, and natural biological processes.

      Non-patentable matters are listed in article 18 of the BIPL, as follows: that which is contrary to morality, good custom and public security, order and health; substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and living beings, in whole or in part, except transgenic microorganisms meeting the patentability requirements of novelty, inventive step and industrial application and that are not mere discoveries.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Item III, article 10 of BIPL does not allow the granting of “business methods”, as well computer programs per se, as mentioned on Item V – which means the programming code itself.

      According to the letter of the law, case law and Resolution No. 158/2016 from INPI, business methods are not patentable in Brazil in any shape or form; on the other hand, computer programs may be patentable in Brazil as long as they fulfil at least one of the following requisites:

      A) the software is an embedded software, such as the software comprising a welding robot. Note that, in such case, only the combination of object + software (welding robot + software) is the patentable matter; or

      B) the software may be described as a more comprehensive method, which may be executed by different means, one of them being the software itself. For example, think about a method of guiding vehicles inside an open pit mine, this method being able to be planned and performed by means of clipboards, pens and paper, or by means of desktop running software. In such case, the broad method, which comprises the execution by means of software, is patentable.

      All non-patentable matter is listed in articles 10 and 18 of the BIPL:

      10. The following are not considered to be inventions or utility models:

      I. discoveries, scientific theories and mathematical methods;

      II. purely abstract conceptions;

      III. commercial, accounting, financial, educational, advertising, raffling and inspection schemes, plans, principles or methods;

      IV. literary, architectural, artistic and scientific works, or any aesthetic creation;

      V. computer programs per se;

      VI. presentation of information;

      VII. rules of games;

      VIII. surgical techniques and methods, as well as therapeutic or diagnostic methods, for application to human or animal body; and

      IX. all or part of natural living beings and biological materials found in nature, even if isolated therefrom, including the genome or germoplasm of any natural living being, and the natural biological processes.

      18 The following are not patentable:

      I. anything contrary to morals, standards of respectability and public security, order and health;

      II. 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; and

      II. all or part of living beings, except transgenic microorganisms that satisfy the three requirements of patentability – novelty, inventive step and industrial application – provided for in article 8 and that are not mere discoveries.

      For the purposes of this Law, transgenic microorganisms are organisms, except for all or part of plants or animals, that express, by means of direct human intervention in their genetic composition, a characteristic normally not attainable by the species under natural conditions.

      From the list above, we would like to emphasise the prohibition of patents regarding rules for games (the famous Monopoly game, for instance, would not be considered as a patent in Brazil) and patents regarding therapeutic methods – although the last is not allowed, INPI is willing to grant patents with Swiss-type claims, as long as they do not bring the word “treatment” into the claims.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In Brazil, patent infringement has both civil and criminal consequences. For the holder, civil remedies include: a court order (preliminary injunction or sentence) for the immediate cessation of the infringing act, search and seizures, and damage compensation.

      As for the establishment of the damages for any infringement of IP right, BIPL states that the criteria shall be the most favourable criterion to the infringed party, as follows.

      The penalty in Brazil as defined by the BIPL is three months to one year's detention or a monetary fine, but considering that in Brazil criminal penalties of fewer than three years may always be converted in alternative measures (such as the payment of staple food baskets to the needy people, performing social work and so forth) criminal penalties are not as effective as civil outcomes in Brazil when dealing with IP rights.

      Last verified on Tuesday 5th June 2018

    • Brazil

      On the other hand, the BPTO is implementing measures to speed up the analysis of patent applications, such as hiring more examiners and entering into cooperation agreements with other foreign Trademark and Patent Offices, including for the Patent Prosecution Highway (PPH) purposes (agreements were signed with USPTO, Japan Patent Office, China Patent Office and others with the UK Intellectual Property Office and Denmark Patent Office are being discussed).

      However, INPI and Sebrae recently implemented a bill to facilitate the insertion of innovative products and services developed by small and medium-sized Brazilian enterprises seeking the patent granting in the shortest time possible.

      The priority exam is focused on innovative products and services developed by ICTs – science and technology institutions.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Yes, as seen in article 43, Item IV of BIPL. An exception to the rule is established by article 42: the right of preventing third parties contributing to [the infringement] is assigned to the patent assignee. At the same time, article 185 establishes as a federal crime providing a component comprising a patented product, so long as the component induces the exploitation of the patent’s object.

      Although it is not a solid consent (we do not know of a single piece of case law to justify either position), part of the doctrine considers as contributory infringement a situation where someone buys a patented object and replaces a part comprising this object with a tailor-made part ordered by the original owner of the good.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Even though Brazil is not yet a signatory to the Madrid Protocol, the negotiations for entry as a member are ongoing. On 9 April 2017, the Council of Ministers of the Brazilian Board of Foreign Trade (CAMEX) set up a meeting in which Brazilian adhesion to the Madrid Protocol was duly recommended. The Minister's recent proposal will be sent to the Civil House of the Presidency, which is responsible for sending the text to the National Congress for assessment and approval.

      However, Brazil has been a signatory to the TRIPs agreement since 1994, when the Brazilian Congress approved the agreement, which was promulgated by the presidency on the same year.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Article 133 of BPLI provides that trademark rights protection is 10 years from the granting date, which is renewable for equal successive periods, indefinitely. The renewal of a trademark registration must be requested by the holder during the final year of the term with payment of a renewal fee to INPI.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In accordance with the article 5, Item D, of the Paris Convention for the Protection of Industrial Property (CUP), to which Brazil is a signatory, there is no obligation to use the registered trademark symbol, ®, or any other sign or mention of the trademark registration in order to recognise the holder’s rights.

      However, Brazilian law establishes that the registered trademark symbol, ®, can be used just for those who effectively have a registered trademark, and the ™ symbol is applicable to those trademarks that are still awaiting INPI’s decision.

      If a pending trademark holder uses it with the registered trademark symbol, however, this practice can be characterised as a crime of unfair competition under BIPL, as a fake claim, if an effective damage could be proven by a third party regarding this dishonest use.

      Last verified on Tuesday 5th June 2018

    • Brazil

      These are trademark infringement, the manufacturing and importation of counterfeit goods and, lastly, the negative media buzz by consumers and digital influencers, which has increased considerably over the past two years.

      While the first and two are well known by trademark owners, having appropriate legal remedies and favourable doctrine in most cases, the last is a recent development of the complex Brazilian internet environment, anyone with a smartphone can be considered as an influencer, therefore giving opinions regarding brands, products and services, even if they are sponsored by their competitors.

      This is a challenge for brand owners in Brazil and abroad but, owing to our practice on trademark crisis control, we have understood that legal procedures shall be the last-case option for these matters. The brand owner shall develop a relationship with the influencer, not necessarily paying for the brand, but including creative marketing and CRM strategies. If the influencer goes further, there are appropriate legal remedies to stop the spread of any kind of damages or fake allegations. 

      Counterfeiting advertising in social media is also a trend in Brazil – understandably mostly in the fashion industry. With a thriving e-commerce based on social media, several brands are facing widespread counterfeit product advertising (and not user content) on social networks and search engines. The way to deal with this is to send warning notices to the owners of such social media and search engines, which also benefit from the revenues of this counterfeit chain.

      Also, in general, either at ports or airports, Brazilian customs authorities assist in preventing the entry of counterfeit products into the territory.

      Last verified on Tuesday 5th June 2018

    • Brazil

      According to article 140 of BIPL, to be public and consequently enforceable against third parties, trademark licensing agreements shall be recorded with the INPI, even by national parties that are able to publicise the licence on Brazilian territory.

      The licence shall be valid from the effective date between the signatory parties, but against third parties licence rights are opposable from the date of publication in the Official Gazette – which shall take 60 days from the date of filing, in a regular procedure.

      Registering the licensing agreement is also requirement to send royalties paid under the agreement abroad (together with registering it and the remittance transactions with the Brazilian Central Bank – BACEN) and to permit tax deduction of part of the royalties remitted. However, there are some requirements to be fulfilled by the recording parties in order to have the agreement duly registered. See question 26 for more information.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Border measures with customs, including in Brazilian ports. Several companies have used lawyers and marketers to train customs authorities to recognise counterfeit products, which has considerably reduced the entry of some types of illegal goods into the country.

      Also, in October 2004, the Brazilian Justice Ministry set up the National Council of Piracy Combat (CNCP), an independent official body with autonomy to deal with and set out regulations for combatting counterfeiting, as well executing the National Borders Plan, with a focus on the Brazil–Paraguay border. However, CNPC activity has decreased in recent years.

      Recently (March of 2018) the Brazilian House of Representatives approved a draft bill (Projeto de Lei 1.530/15) that establishes the cassation of the driver’s license that is arrested with counterfeiting, as well as the cancelation of the taxpayer’s ID (CNPJ) of companies that transport, distribute, store or market goods that are the product of smuggling, theft, misappropriation or counterfeiting. The bill has been presented to the senate for a vote.

      Furthermore, companies shall ramp up their efforts in monitoring trademarks on internet, e-commerce platforms and social media, since consumers are changing the way they buy counterfeit goods, mostly because the internet is a more convenient and safe way to do so. 

      Last verified on Tuesday 5th June 2018

    • Brazil

      We do recommend this. Although “top” domain names value have considerably decreased in recent years owing to new .br domain categories (such as adv.br for lawyers and law firms), rendering cybersquatting a less fruitful illegal practice, we have always recommended that companies register domain names related to the most important trademarks from their portfolio.

      The costs of registration and maintenance for domain names are very low, unless the company is not duly established in Brazil while offering products or services in the country – in this case, the company must appoint a legal representative to hold the domain name registration, which can sometimes be expensive, depending on the risks to the client’s activity. 

      It is worth stating that Brazil uses the first come, first served principle on domain name registration, so if another trademark holder, applicant or user registers a domain name composed totally or partially of a third-party trademark, if the registration was made in good faith, the registration shall be considered valid for all purposes.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In contrast to countries where it is possible to make a reference to competitors’ trademarks in comparative advertising – such as the US – according to articles 131 and 132 of BIPL, the owner of a trademark can enforce rights against a competitor using its trademarks in advertising.

      However, the Brazilian Self-Regulation Code on Advertising authorises the use of comparative advertising if its main purpose is consumer clarification and protection, with simple and verifiable comparison with objective aspects and as regards intellectual property rules against unfair competition.

      Given this contradiction between IP law and advertising self-regulation, court decisions regarding comparative advertising are still expected to facilitate a solid and comprehensive understanding.

      Last verified on Tuesday 5th June 2018

    • Brazil

      A comprehensive search is always recommended due to INPI’s backlog in trademark application examination. Considering the rights prior to application principle (article 129 of BIPL), the search shall also include internet searches.

      Applicants must request trademark registration in accordance with the scope of their activity or business, which applies to companies and natural persons, with, however, the recommendation that applications cover future activities.

      Pharmaceutical trademarks must comply with the ANVISA's sanitary norms, depending on the type of medication.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In contrast to some countries and community systems, such as the European Community, Brazilian trademark law does not accept multi-class applications. Therefore, applicants shall file a separate trademark application for each form of trademark in each class.

      However, Brazilian participation in the Madrid Protocol is set to change this, enabling multi-class applications in Brazil. INPI, which has already started to restructure in order to accede to the Madrid Protocol, estimates that this will occur in 2019.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Article 158 of BIPL provides for opposition proceedings. After the publication of the trademark application in the Official Gazette, which normally takes three weeks, a 60-day deadline will ensue for third parties with a legitimate interest to file oppositions against it.

      INPI will publish the opposition within approximately five months and the applicant will have the same deadline to present its defence against the opposition.

      Regarding deadline extensions, article 221 determines that extensions can be granted by INPI in cases of fair reason (ie, when the party has lost the deadline not owing to his or her own negligence or action).

      Also, INPI recently published Resolution No. 178/2017, which provides that deadline extension requests shall be filed up to the fifth day after the deadline and it also regulates systems that fail to meet the petition filing deadline with INPI.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In order to combat the entry of counterfeit goods into Brazil, article 198 of BIPL, the Customs Regulation (RA/2009) and the TRIPS agreement, to which Brazil is a signatory party, are the main legal instruments that have been set up and used by the government to allow the seizure of counterfeit goods by customs authorities, either at ports or airports, refining a procedure that will culminate in the destruction of all seized goods, in general.

      Although there are several cooperation initiatives between trademark owners and authorities to prevent the entry of counterfeit products, there is no a specific judicial procedure or system for this practice, as seen in other emergent countries.

      Last verified on Tuesday 5th June 2018

    • Brazil

      As said above, there are some requirements to be fulfilled by the parties in order to have the agreement duly registered with the INPI, producing effects against third parties (see question 17), which was published in April 2017, Normative Instruction (NI) No. 70/2017.

      This NI changed a material aspect of agreement registration examinations: in the past, INPI extensively limited the amount of royalties to be remitted as regards tax laws on the remittance of capital, often imposing control over or questioning the interests of the parties under the agreement. Also, the document known as an explicative letter is no longer mandatory.

      On the other hand, the NI established that even sub-licence agreements shall be registered with the INPI to produce effects against third parties, given that the sub-licensor is able to sub-license the trademark.

      To send royalties abroad, parties must wait for the registration being granted via publication in the Official Gazette. Until that time, payments shall be retained in Brazil. With the granting publication, parties shall register the agreement with the Brazilian Central Bank, BACEN, also registering the payment transaction (via wire transfer or other form) under the Registration of Financial Transaction. The entire procedure with BACEN shall take a period of seven to 15 business days.

      There are no restrictions on or even mentions of naked licences in Brazilian IP laws.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Under Brazilian laws there is no specific limitation of licensee indemnification in regard to such matters. The Civil Code, which regulates and sets out the main contractual principles applied in private relations in trademark licence agreements, gives the contracting parties the freedom to set forth all the limits of the agreement, with a view to fairness.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Franchise activities are regulated by Law No. 8.955/1994, the Brazilian Franchise Law, which appoints the Letter of Franchise Offer as a mandatory document to be presented by any and all franchise companies before the signing of a franchise agreement.

      The Letter of Franchise Offer shall contain information regarding the status of the trademarks, patents or other registrable IP rights comprising the franchise business, along brief information regarding know-how and other technologies.

      But it is the franchise agreement that will bring in provisions regarding IP licensing, including trademarks and their limitations of use in connection with the franchise business.

      Last verified on Tuesday 5th June 2018

    • Brazil

      In accordance with the BIPL, the first circumstance in which a trademark can be legally deemed abandoned is in failing to pay its final official fees, which can be done by the trademark holder on two different deadlines legally authorised under article 162. The first (ordinary deadline) is 60 days upon the publication of the granting on the Official Gazette, and the second (extraordinary deadline) in 30 days upon the final date of the ordinary deadline. 

      When the official final fees are paid on time, the trademark may be deemed abandoned if its holder does not request its renewal during the final year (ordinary deadline) of the rights protection term (10 years from the application granting date) under the payment of the correspondent renewal fees. If the holder fails to lodge a renewal request and make a fee payment by the ordinary deadline, the BIPL grants an extraordinary deadline that has to be complied with within six months of the date of the ordinary deadline. 

      Lastly, article 143 of such Law prescribes that if the use of the trademark has not been initiated in Brazil after five years from the granting date, or if the use has been interrupted for the same period or, also, the trademark has been used with a modification to its original distinctive sign as filed and granted, any persons with a legitimate interest may file a forfeiture under INPI, requesting such trademark to be deemed as abandoned.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Even though the registration of copyright to ensure protection in Brazilian territory is not mandatory, proceeding with registration is recommended in order to demonstrate authorship and the creation date of the material in case it is needed as a proof against third-party violation.

      Depending on the kind of packaging, registration with the INPI is recommended to proceed as an industrial design, common for cosmetics and fragrances. For marketing materials, the National Library Foundation in Rio de Janeiro, is the appropriate registrar.

      Last verified on Tuesday 5th June 2018

    • Brazil

      As in most jurisdictions, Brazilian Copyright Law sets forth two kinds of protection: moral rights, which do not expire, and economic rights, valid for a period of 70 years from 1 January of the year following the author’s death. However, there are some exceptions, with two worth mentioning being:

      • for audio-visuals and pictures, the deadline it is counted from 1 January after its divulgation; and
      • for anonymous or under pseudonym works, it is counted from 1 January after the publication.   

      Last verified on Tuesday 5th June 2018

    • Brazil

      Along with freedom of expression and other constitutional guarantees, the Brazilian Internet Act (Law No. 12.965/2015) states that internet service providers (ISP) cannot be liable for damages resulting from user content without the issuance of a valid court order to remove the content. Therefore, liability from ISPs arises after an eventual failure to comply with a court order. The exception comes from sexual shaming, which shall be removed after notification of the party in question.

      The Internet Act protects and fosters the fundamental rights and freedom for the internet. However, in 2016, Brazil was in the news for judicial decisions regarding the temporary taking down of social networks because of their owners failing to hand over information requested in a criminal procedure – the Act recognises the need to guarantee protection of privacy and personal data (article 3), although article 12 establishes sanctions for non-compliance, including temporary suspension of data processing activities.

      It is worth stating that, in 2015, the Superior Tribunal de Justiça (STJ) the highest appellate for non-constitutional questions in Brazil, awarded a decision in a leading case discussing the liability of ISPs for user-generated content, ruling that they cannot be held liable for copyright violations committed by third parties if they do not profit from the violation (Special Appeal No. 1512647/MG).

      This year, the Federal Supreme Court (STF) announced that it will decide on the constitutionality of article 19 of the Civil Internet Framework, which requires a prior and specific court order for the exclusion of third-party content by ISPs – only in the event the court order is not complied, the ISP shall be considered liable for the content. 

      The lawsuit was recognised as having general repercussions and has Facebook, Inc as defendant (Extraordinary Appeal No. RE 1037396).

      Last verified on Tuesday 5th June 2018

    • Brazil

      The Brazilian Copyright Law does not have provisions regarding the “first sale”, although it is broadly accepted in doctrine, contrasting with articles 29 (previous authorisation for distribution of goods containing copyrights) and 49 (validity of copyrights assignment).

      However, excessive attempts to extend exclusive rights relating to the work may be considered abusive – for example, preventing the buyer of a book or disk from reselling it in the market or acting against the fair use of the copyright, according to article 46 of the Brazilian Copyright Law.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Under civil liability and damage principles in the Brazilian legal framework, civil sanctions regarding copyright infringement are applicable to all agents involved in the violation who have the intent of gaining revenue or benefit.

      Regarding contributory infringement practices, with the ascendance of the e-commerce market and internet advertising in several platforms, marketplaces have been set up and had been widely used in Brazil for marketing third parties’ products.

      Most of these marketplaces have weak intellectual property surveillance, making them an appropriate environment for copyright infringement. As seen in our practice, well-known marketplaces focused on individual sellers and craftsmen are being used to market (using their automatic broad advertising services) counterfeit goods with copyright violations. 

      Music, cinema, TV, toys and the gaming industry are the most affected. According to article 104 of Brazilian Copyright Law, in view of the natural duty of control over owner and authorship of the trade goods in the website, these companies, depending on the circumstances of the case, may have a joint liability for the infringing acts of its members.

      Last verified on Tuesday 5th June 2018

    • Brazil

      The legal provisions that typify intellectual property infringements are found in the Brazilian Industrial Law (Law No. 9.279/1996), Copyright Law (Law No. 9.610/1998), the Software Law (Law No. 9.609/1998) and the Criminal Code. The sanctions are provided in accordance with the type and degree of the crime, varying from prison penalties, to a fine and seizure of counterfeited goods.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Name, image (including voice) and likeness are considered rights of publicity, being defined as inalienable and non-transferable rights, according to Brazilian law. Any commercial exploitation must be previously authorised.

      However, the STJ decided in ADIn 4.815 that, according to the Constitution and articles 20 and 21 of the Civil Code, previous authorisation is not necessary for the publication of biographies, based on the constitutional right of freedom of speech.

      In cases of violation of privacy, honour and image of biographies, damages and seizure shall serve as legal remedies.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Mediation and arbitration may be used in Brazil under mutual agreement and for civil settlement – which shall involve criminal aspects, such as negotiations to avoid criminal procedures. However, criminal claims may not be solved through arbitration.

      The new Brazilian Civil Procedure Code recognises arbitration as a valid means of resolving a civil dispute, with the same level of power as a civil court decision – in fact, Law No. 9.307/1996 already recognised that. 

      In Brazil, arbitration disputes may be determined by an arbitration clause, stated on a previous agreement between parties (between buyer and seller, for instance) or right after both parties are aware of the dispute and agree to hand over the conflict to experts, instead of handing the decision to a regular judge.

      If previously agreed by both parties, the arbitration may even use the IP law of another country to determine the dispute’s resolution. Further, the law also allows for the parties to pick a foreign arbitrator, as long as this decision is mutually agreed by both parties. 

      The benefits of arbitration are far more appealing than using conventional court measures: arbitrators shall have in-depth knowledge on the field of the dispute, while judges in Brazil rarely see IP disputes in their courts, not that IP is not a mandatory field of study in most Brazilian law schools. Second, arbitration decisions in Brazil are much faster than regular court decisions, which may take between three and eight years or more, depending on their complexity.

      Last verified on Tuesday 5th June 2018

    • Brazil

      With reference to question 18, the CNCP together with INPI developed a database to optimise and allow the holders of trademark applications or registrations with INPI to send alerts on the combat of counterfeit goods, which are made available to the public agents of the Customs and Border Control. The database can be filed with comparative examples, such as image files of the original counterfeit goods.

      However, there is a common, but informal, practice among lawyers involved in border measures, which is to leave free samples of original goods and counterfeited goods with the Customs Authorities in order to enhance officials' familiarity with the products and increase the chances of spotting counterfeit goods.

      Last verified on Tuesday 5th June 2018

    • Brazil

      The BIPL was published in 1996 and its text remained roughly the same until the present date, with the exception of the following minor amendments: Item VII of article 43 (regarding exceptions to the patent protection ground); articles 229, 229-A and 229-B (regarding transitory measurements); and 229-C (the infamous previous consent of ANVISA for patent examination) all dated 2001.

      Some legislative proposals being studied in Congress regarding patent rights are:

      • LP 5402/2013 regarding extension ad flexibility of compulsory licence measures for matters of public interest (such as antiretroviral drugs); and
      • LP 5557/2016 proposes minor amendments on article 18 da of L. 9.279, regarding transgenic micro-organisms.

      Other recent and emergent material developments were described in question 8 (the agreement entered by and between INPI and ANVISA with views to exam of patentability requisites on pharma applications), question 12 (regarding Brazil's forthcoming entrance into the Madrid Protocol) and question 17 (Normative Instruction No. 70/2017, regarding transfer of technology and examination of licensing agreements by INPI).

      Also, according to Brazilian Intellectual Property Association (ABPI), a lot of effort is being put into discussing the following topics on Brazilian Congress agenda:

      • Reduction of patent and trademark concession time and INPI strengthening, through the effective structural and financial autonomy of the entity, promoting modernisation of its structure, hiring and training of personnel and reduction of deadlines for analysis and granting of industrial rights.
      • Improvement of the Innovation Law and the Industrial Property Law by means of (i) regulation for research and development activities and patent application arising from biodiversity and genetic resources; (ii) facilitation of credit for innovation, by means of accounting valuation of industrial assets; (iii) programmes to encourage innovation and patent application of "green" technologies; (iv) and enabling the registration of sensorially perceptible marks.
      • Updating the law for the certification of Technology Transfer Contracts and reviewing the tax treatment of revenues and payments related thereto, as well as redefining the performance of INPI in this area.

      Last verified on Tuesday 5th June 2018

    • Brazil

      The Brazilian Superior Court of Justice (STJ) has judged some unprecedented appeals that gave new parameters for the interpretation and application for intellectual property laws in Brazil.

      In a unanimous decision, the Court recognised the legality of INPI intervention in terms of a technology transfer agreement. In this case (Special Appeal – REsp 1.200.528/RJ), in which INPI ordered the registration of the agreement for use of a trademark to substantial changes in some of the agreement's clauses, the contracting parties required the annulment of INPI's decision under the argument of illegal intervention against the freedom to contract. This decision contrasts with INPI’s Normative Instruction No. 70/2017, published in April, as explained in question 26.

      Other important decision given by the STJ was on Special Appeal – REsp 1.559.264/RJ, related to public executions of copyrights on streaming platforms and its interpretation by the Brazilian Central Office for the Collection and Distribution of Rights (ECAD), entity responsible for the collection and distribution arising from public executions.

      The lawsuit was brought by ECAD against a major private telco. First and second instances has decided by the illegality of ECAD collections on streaming; however, the STJ has considered it legal, recognising that streaming services shall pay rights to ECAD even before its execution by the user. 

      Another important recent decision last year was Procedure 08012.002673/2007-51 where the Administrative Council for Economic Defence (CADE, the Brazilian Antitrust Authority) decided that there was an abuse of rights performed by car parts manufacturers against their small competitors.

      In short, said manufacturers hold several industrial designs applications covering auto parts, while small competitors were selling reproductions of the same parts in the market at much more affordable prices. The manufacturers went to court to request preliminary injunction measures against the small competitor. The matter was brought before CADE in 2007 and, more recently, in June 2016, the authority concluded that, although the manufacturer had a legitimate right to hold intellectual property related to auto parts, said companies had abused their rights to create monopolies in each of their segments.

      Last, but not least, a global healthcare company claimed the ceasing of production by a Brazilian generics manufacturer, alleging that it would be infringing its rights from patents with INPI examination pending. In a surprising non-unanimous decision given by the Specialised Chamber of Corporate Law of São Paulo State Courts (AI 2205036-49.2016.8.26.0000), the Brazilian manufacturer was ordered to cease production based on a patent pending, against the wishes of the BIPL, which determines that rights over patents can be exercised only after the patent has been granted.  

      Last verified on Tuesday 5th June 2018

    • Brazil

      For registration purposes, the agreement and the Power of Attorney must be notarised and/or apostilled (please note that Hague Convention has recently entered into effect in Brazil) if signed outside Brazil. If signed in Brazil, INPI requires the signature of two witnesses, for which we recommend notarisation.

      Also, if the original document is not in Portuguese, simple translations must be presented.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Law No. 12.737/2012, popularly known as Law Carolina Dieckmann (a famous Brazilian actress who was the victim of an intrusion and misappropriation that led to the enactment of this law), establishes as a crime any intrusion into computers or digital equipment, whether or not connected to the internet, or installing any kind of vulnerabilities, as well editing, obtaining or deleting information without authorisation – but only if the perpetrator had to “violate a security mechanism”.   

      The same law established that it is also a crime to obtain private communication content, confidential information or trade secrets with the aim of obtaining certain advantages, with the penalty being prison detention plus a fine. If the perpetrator discloses, commercialises or transfers the illegal content to any third party, the penalty increases.   

      According to articles 186 and 927 of Brazilian Civil Code, if the victim incurs losses arising from the crime, a civil procedure seeking damages can lead to compensation. Also, in our understanding, if the crime was perpetrated by a competitor or any third party seeking to harm the victim’s reputation in commerce, we can also apply article 209 of BIPL, which provides for damage arising from IP violation and unfair competition acts not listed in the letter of law.

      Last verified on Tuesday 5th June 2018

    • Brazil

      Brazilian Tax Law establishes tax deductibility limits applicable to royalties arising from IP licensing agreements, equivalent to 1–5 per cent of the net income obtained from the sale of the products or services with the licensed IP (ie, trademarks, patents, designs and copyright).   

      If the licensor is a foreign party and royalties shall be remitted, the payments are subject to withholding income tax at a 15–25 per cent rate. In cases involving Brazil and parties from countries with a convention to avoid double taxation, tax benefits may apply.   

      Royalties are also subject to CIDE levies at a rate of 10 per cent PIS/COFINS (9.25 per cent) and municipal taxes (ranging from 2 per cent to 5 per cent).

      Last verified on Tuesday 5th June 2018

    • Brazil

      IP and competition walk side by side in Brazilian laws. BIPL set forth provisions regarding unfair competition whether related or not to violation of intellectual property, with a view to, in short, protect consumers and IP owners from acts to confuse, of similarity and false allegations.    

      On the other hand, we have an Antitrust Law (Law No. 12.529/2011), which established in its article 36 that any abusive exploitation or exercise of IP rights shall be considered a violation of the economic order, with CADE responsible for analysing and deciding competition matter on its duty of supervising, preventing and detecting abuses of economic power. For example, CADE has powers to grant compulsory licence of IP rights when the infraction by the agent is related to the use of that right. An overlap between intellectual property and competition law is rarely seen in Brazil when compared to developed countries, owing to IP disputes. Indeed, in 2015 we had the first (and last) case regarding “essential patents” decided by CADE, involving two foreign telecommunications companies.    

      Other important administrative decision given by CADE was regarding abuse of rights performed by car parts manufacturers against their competitors. See question 42.

      Last verified on Tuesday 5th June 2018

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