How do you register or secure patent rights, and is national or international coverage most appropriate?
Applicants must file patent applications at the Brazilian Patent and Trademark Office (INPI). A patent application will undergo both formal and substantive examinations before being accepted.
Patent rights are restricted to Brazil’s territory. However, Brazil is a member of the Paris Convention and is one of the Patent Cooperation Treaty contracting states, allowing applicants to claim foreign priorities.
Where can you find information on existing patents in your jurisdiction?
Patent information is scarce. The best place to access it for the time being is in the INPI’s database.
Applicants must be aware that many files (particularly old patent applications) are not electronically available.
Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?
Our patent law is well harmonised with corresponding foreign laws, especially with the European Patent Convention. For pharmaceutical cases, however, we have interference of the Brazilian food and drug administration (ANVISA) during prosecution of patent applications. According to our patent law, ANVISA must grant prior approval before a patent is granted. ANVISA’s analysis should be limited to public health issues only, but the fact is that ANVISA is relying on patentability requirements for denying approval. Its goal is to prevent patents for important drugs or those bought by the Brazilian Ministry of Health from being granted.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
The INPI is one of the threats. The average backlog at the office for having a patent granted is 11 years. This term might even be higher in specific technological domains (14 to 15 years for telecom and pharmaceutical applications, for example).
On the court side Brazil is a very friendly country to carry out intellectual property enforcement inasmuch as we have specialised courts in IP for both cancellation and infringement actions (based in Rio de Janeiro and São Paulo). Preliminary injunctions are widely available and the recently enacted Civil Procedural Code has widened the possibilities for requesting a preliminary order to ascertain whether an infringement has taken place, even if there is no urgency in the request.
How do you register or secure trademark rights and what protection do they grant?
Brazil is a first-to-file country and trademark rights are acquired only upon registration.
"Preliminary injunctions are widely available and the recently enacted Civil Procedural Code has widened the possibilities for requesting a preliminary order to ascertain whether an infringement has taken place."
The owner of a trademark registration is allowed to use the corresponding trademark and prevent other parties from using and/or registering identical or similar trademarks for identical or related products.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
Failing to register a trademark at an earlier stage can be one of the biggest treats given that Brazil is a first-to-file country and therefore a third party may beat a trademark’s rightful owner to securing a registration.
The best strategy is to file a trademark application as soon as possible and have a clear and consistent enforcement policy.
What are the most common mistakes trademark owners make?
Not conducting prior trademark searches. Although not mandatory, searches are important bearing in mind the huge backlog of work at the INPI.
Have there been any changes to the trademark law(s) in the last 12 months?
The trademark law has not changed in the past year but the INPI’s guidelines are dynamic and can change regularly.
Additionally, the INPI creates regulations by means of resolutions regarding subjects that are not fully addressed by the local IP law.
Are there any nuances in the trademark law(s) that foreign companies should be aware of?
Multiclass applications are not allowed in Brazil. For each class of interest an individual application is required.
No proof of use is required either for the filing of an application or for the granting of the corresponding registration. However, a registration becomes vulnerable for cancellation on the grounds of non-use if it is not initiated within five years of being granted or is discontinued for more than five years after it has been granted.
Generic or descriptive signs, which do not carry sufficient distinctiveness, are not registrable as trademarks in Brazil. .
How big a problem is counterfeiting in your jurisdiction?
With the increase of the Brazilian market and economy in the past years, the country faced an increase in counterfeiting activities. A report published in September 2014 by the Brazilian Institute for Ethical Competition and the National Forum Against Piracy, found that trademark counterfeiting, smuggling and piracy might have caused R$30 billion ($8.5 billion) in losses for the Brazilian industry in 2013.
What industries are particularly at threat?
The most affected areas are the tobacco industry (which has estimated losses of R$ 4.5 billion per year); automobile parts (R$ 3 billion per year); and luxury items (R$ 2.8 billion per year). Other areas that have been impacted include gasoline and fuel, computers and software.
What are the best strategies for dealing with the problem?
As most counterfeit products are manufactured abroad, IP owners should always take border actions in Brazil. Submitting an application for the National Directory to Combat Trademark Counterfeiting is suggested as an initial course of action. Enforcement provisions in Brazil allow IP owners to take action in both the criminal sphere (for convicting infringers and imposing the penalties established by the law) and the civil sphere (to recover damages incurred from infringements).
How can public-private partnerships to tackle counterfeiting be improved?
Organising training sessions at customs and police units is a very effective method for making public authorities familiar with products and IP rights that are being infringed and to improve surveillance. IP owners can also conduct market surveys and provide the collected evidence to the police so that they can initiate an investigation.
A few states in Brazil (including Rio de Janeiro) have created specialised police units for IP enforcement, which is something that simplifies public-private partnerships. Trademarks can be criminally enforced through court actions in Brazil.
What are the key challenges to copyright owners in your jurisdiction?
The widespread reproduction of video and audio content in digital media. In big cities it is still possible to find massive street shops dedicated to selling counterfeit goods that are protected by copyright.
How should people ensure they are protected against copyright infringement?
Copyright is protected in Brazil regardless of a registration but it is advisable to obtain registration at the appropriate agencies.
What is the best way to deal with infringement?
Copyright infringements are both a civil tort and a crime in Brazil. It is possible for the copyright owner to file a civil court action to obtain an injunction. In parallel, a criminal court action can be triggered in order to prosecute the individuals responsible with penalties of up to four years in prison.
André Venturini is head of patent prosecution at Daniel Advogados and has more than a decade of experience working with patents and industrial designs. He has an in-depth knowledge of drafting patent applications and of patentability, nullity, and infringement analyses. He can be contacted at: firstname.lastname@example.org
Isabella Cardozo is a partner at Daniel Advogados and has worked with intellectual property since 1998. She is a member of the Rio de Janeiro office and possesses deep knowledge of the industrial property laws of Brazil, specifically in the area of trademarks. She can be contacted at: email@example.com
Daniel Advogados, INPI, patent, trademark, copyright, ANVISA, André Venturini, Isabella Cardozo, infringement,