Industrial design in Brazil

Designs have the purpose of answering consumer needs, by enhancing the visual, functional and ergonomic aspects of a product, and giving enjoyable, safe and comforting shapes to users.

The industrial design rights or ‘design patents’ protect these visual features of a product (shape, configuration, ornament). Article 95 of the Brazilian Design Statute considers an industrial design as any ornamental plastic form of an object or any ornamental arrangement of lines and colours that may be applied to a product, providing a new and original visual result in its external configuration, and that may work as a type for industrial manufacture.

An industrial design is considered to be new when not comprising the state of the art (everything made accessible to the public before the date of filing of the application, in Brazil or abroad, by use or any other means).

An industrial design is considered original when it results in a distinctive visual configuration in relation to other prior objects. Therefore the design cannot be confused with any other previous product. Designs that are not entirely new but perform new arrangements of familiar elements can be registered.

“AN APPLICATION CAN BE PATENTED IF IT IS NEW AND INVENTIVE, CAN BE PROTECTED AS AN INDUSTRIAL DESIGN IF ITS EXTERNAL PLASTIC FORM IS NEW AND ORIGINAL, AND BY TRADEMARK.”

The statute also provides that any disclosure of an industrial design occurring within 180 days preceding the date of filing the application or of the priority claimed will not be considered as included in the state of the art, provided such disclosure is made by the inventor, by third parties on the basis of information received directly or indirectly from the inventor or as the result of his acts, or by the Brazilian IP Office (INPI), by means of the official publication of the application filed without the consent of the inventor and based on information obtained from him or as a result of his acts.

An application for an industrial design can be made by any national or foreign person. The foreign applicant is obliged to maintain an attorney in Brazil that will represent him administratively and before the courts.

Once granted, the registration will have a term of 10 years counted from the date of filing and will be renewable for three successive periods of five years each. The request for renewal must be made during the last year of the term of the registration and be accompanied by proof of payment of the respective fee. If the request for renewal is not filed prior to the end of the term of the registration, the applicant may make such a request within the subsequent 180 days, on payment of an additional fee.

The filing of an application before the INPI must contain the proof of payment of the filing fee, specific form, specifications (if applicable), claims (if applicable) and drawings or photographs. The documents comprising an application for registration must be filed in Portuguese.

The presentation of the specifications and claims are deemed necessary on the application requesting the registration of a product and can include up to 20 variations of the product, that should be planned to the same purpose and have the same prevailing characteristics.

The INPI does not make a substantive examination regarding the application. There is only a formal examination in order to check compliance of the application with the Design Statute. However, if industrial design rights are subjected to litigation, a substantive examination is mandatory prior to the court hearing.

A product can be protected by more than one industrial property right. For example, an application can be patented if it is new and inventive, can be protected as an industrial design if its external plastic form is new and original, and by trademark.

The INPI has always granted industrial design protection to components of a complex product, since they can be manufactured and sold as finished products. As examples, refrigerator doors, detachable heads of toothbrushes, shoe soles, furniture feet, steel profiles, headlights, taillights and bumpers of cars.

However, Brazilian federal courts are currently debating the possibility of obtaining industrial design protection for spare parts.

The issue started after the National Association of Autoparts Manufacturers (ANFAPE) filed a representation before the Administrative Council for Economic Defense (CADE) in order to ensure the independent sale of spare parts in the market, resulting in a dispute between the exclusive right to produce these parts by the automobile manufacturer companies, which obtained the registration as an industrial design, and the possible abuse of rights.