Trade Marks 2021 Comparisons

Last Updated March 03, 2021

Law and Practice

Authors



Peduti Sociedade de Advogados is a law firm specialised in intellectual property, entertainment and information technology fields. With 40 years of experience in such fields of law, the firm's tradition arises from the excellent standards pursued by the practice and from the expertise and deep knowledge of the team of professionals. Peduti covers all aspects of patent, trade mark, copyright, software, domain names, advertising and trade secret law, including advising, counselling, prosecution, licensing and litigation. The team consists of 29 people, ranging from paralegals to technicians, trainees to partners – all of them focused in the IP practice. The lawyers graduated from top law schools in Brazil and most attorneys have LLM degrees in intellectual property or in internet law. All of them are registered on the Brazilian Bar. There are also patent attorneys specialised in science and engineering fields.

The trade mark cases in Brazil are governed mainly by the IP law – Law No 9279/1996. Additionally, the Brazilian Trademark and Patent Office (INPI) has several rules and regulation regarding the trade mark examination. Brazil is part of the Paris Union Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Madrid Protocol. The treaties are not self-executed and must be ratified by the National Congress.

The Brazilian IP Law states that all visually perceptible distinctive signs that do not fit into any legal prohibition are registrable as trade marks. The following three types of trade marks can be registered before the Brazilian Industrial Property Office (INPI):

  • product or service marks used to identify products or services from others and they may be a word, word plus device, figurative or three-dimensional marks;
  • certification marks used to attest the conformity of a product or service with certain norms of technical specifications, especially with respect to quality, nature, material and methodology; and
  • collective marks used to identify products or services originating from members of a certain entity.

Well-known marks are protected under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), in their field of activity irrespective of any registration in Brazil, while highly renowned marks, provided that they are registered with the INPI as such, will enjoy special protection in all fields of activity. Trade dress is not registrable with the INPI, but it may be protected or enforced according to Brazilian case law, which considers the violation of trade dress as unfair competition.

In 2012, Brazil published the General Law of the World Cup (Law 12.663/2012) and in 2016, the General Law of the Olympic games in Rio. These laws established special protection for the trade marks registered by FIFA and the Olympic Committee. The year of the events, the trade marks were considered highly renowned marks and received protections in all classes of products and services.

Well-known trade marks are protected in Brazil according to the Article 06 bis of the Paris Union Convention, even when they are not registered. If a third party registers a well-known trade mark, the trade mark can be annulled. 

The term of protection of a trade mark is ten years, counted from the publication of the granting decision. This term can be renewed indefinitely for successive periods of ten years.

To request the renewal of the validity term, the owner must pay official fees to the INPI during the specific period to do so (starting one year before the expiry of the ten-year term and extending for six months after the validity term).

According to the Brazilian Law, the owner of a trade mark cannot:

  • prevent traders or distributors from using their own distinctive signs to promote and advertise their products together with the owner’s trade mark;
  • prevent accessory manufacturers from using the trade mark to indicate the destination of some manufactured product;
  • prevent the free selling of products put into the national market by the trade mark owner itself; or
  • prevent the citation of the trade mark in speeches, scientific or literary works, or any other publications, provided it is without commercial connotation and without prejudice to the trade mark’s distinctive character.

All trade marks registered before the INPI can use the symbol ®. This is not mandatory. However, the symbol cannot be used in connection with a non-registered or applied-for trade mark.

The assignee must record the assignment before the INPI. It could be of a trade mark application and/or a registered trade mark. The request must meet some specific requirements, namely:

  • the agreement must be signed by both parties’ representatives and their full names, data and offices must be included below their signatures;
  • if the agreement is signed in Brazil, is must be signed by two witnesses;
  • both the assignor and assignee must prove that the signatory representatives have powers to sign the agreement on their behalf;
  • the assigned trade marks must be indicated in the agreement, or in an annex;
  • if the agreement is drafted in any language other than Portuguese, it must be translated into Portuguese or drafted in both languages; and
  • the party that requests the INPI’s approval must fill in a specific form requesting the exam of the assignment agreement and its approval – if this requirement is filed by an attorney, a power of attorney is also needed, furthermore, official fees are due to the INPI for this request.

After the presentation of these documents, the INPI will review the assignment agreement to check if all legal requirements were met. If everything is correct, INPI will approve the assignment, record the trade mark’s assignment and publish it for public knowledge.

The licensing of a trade mark is allowed by the Brazilian Law for applications or registrations. It is worth mentioning, however, that the payment of royalties abroad due to a trade mark licence agreement can only encompass trade marks duly registered in Brazil.

The licence agreement must be filed before the INPI to allow the remittance of royalties abroad and deduction as operational expenses for tax purposes. The licence can be exclusive or non-exclusive.

The only restriction is applied on the royalty percentage. In principle, parties can agree any value as royalty fees; however, there is a legal limitation for deduction of the royalty payments as operational expenses (a maximum of 1% over the net sales of products or services).

According to the new INPI regulation, all tax aspects of any agreement submitted for the INPI’s approval will be exclusively examined by the Federal Revenue and all currency aspects will be examined by the Brazilian Central Bank. The duration of the licence should respect the term of the trade mark register.

The assignment must be registered and recorded by the INPI, through the procedure mentioned above.

The assignment is formalised between the parties at the time of the signature of the agreement; however, registration before the INPI is needed to make the assignment effective before third parties.

If the assignment is not registered before the INPI, the assigned trade marks will be considered as owned by the assignor before any third parties. Then, the assignor may be deemed responsible for any possible trade mark violation, tax debts, etc. The assignee will not be able to defend the trade mark before third parties.

All licence and assignment requirements are described in 2 Assignment and Licensing.

It is possible to assign and grant a licence of a trade mark during the application process. Regarding the assignment, it will be analysed by the INPI and recorded, even if the trade mark is not granted yet. The analysis of assignment is independent of the trade mark examination. Regarding the licence agreement, it will be examined and, if the trade mark is not granted, the INPI will publish a reservation stating that the payment only can be made after the trade mark is registered.

A registered trade mark can be given as a security, be subject to rights in rem, assigned by way of security, or be levied in execution. According to the Brazilian Law, trade marks are considered as movable properties.

Any restrictions applied to a trade mark must be informed to the INPI, which will record these before the trade mark registration.

The Brazilian Law establishes that mark rights are acquired through its registration with the INPI and that the trade mark holder has the right to use it exclusively within the Brazilian territory. The only exceptions are well-known trade marks, which may be protected in Brazil according to the Paris Union Convention.

Brazilian law adopts the first-to-file system, which means that the first individual or entity that files a trade mark application, if such mark is granted, will enjoy exclusive rights. If a third party has been using the mark in Brazil in good faith for at least six months as of the date of the application or as of the priority date, it is possible to claim the right of preference.

INPI is the Brazilian Patent and Trademark Office and its database for trade marks and other IP rights is public and can be accessed online via INPI's website.

INPI has an Official Gazette published each Tuesday, containing the developments related to the trade mark applications. There is no supplemental register.

It is highly advisable to carry out research to identify if there are prior registered trade marks or applications filed with the INPI. The main source to be searched is the INPI's trade mark database, available online.

Other sources that could be searched are boards of trade and Registro.Br, the entity responsible for registering and assigning ".br" domain names and private databases.

The term of protection of a trade mark is ten years, counted from the publication of the granting decision. This term can be renewed indefinitely for successive periods of ten years.

To request the renewal of the validity term, the owner must pay official fees to the INPI during the specific period to do so (starting one year before the expiry of the ten-year term and extending for six months after the validity term). The owner can pay the renewal fee until six months after the expiration of the term.

It is possible to update data regarding the owner address and legal name. The owner can also delete part of the list of goods and services, however, it is not possible to add new goods or services.

Only visually perceptive signs may be registered as a trade mark, which include words, images, designs, combinations of words and images or designs, combinations of colours when arranged or combined in a peculiar and distinctive manner and three-dimensional shapes. Other signs, even if deemed distinctive, are not registrable, such as scents, sounds, tastes, colours alone, motions and animations, among others.

The trade mark application process involves filling out a standard form, as well as providing:

  • the identification data of the applicant;
  • the class and specification of products or services for each mark;
  • a sample of the trade mark, if applicable;
  • the colours claimed, if applicable;
  • the priority number and date, if applicable;
  • a declaration that the applicant engages in activities related to the class and product/services specification;
  • the proof of payment of the application fees; and
  • a power of attorney signed by the applicant or its representative.

The trade mark can be filed by an individual or legal entity. The applicant must be engaged, directly or through controlled entities, in offering services or products related to the claimed product/service class and specification. From March 2020, it will be possible for more than one individual or legal entity to be owner of a trade mark.

Collective Marks

Specifically for collective marks, the applicant may be a legal entity that represents the collectivity, which may engage in an activity other than that pursued by its members, while for certification marks the applicant must be a person (which concept is defined by Brazilian law as either an individual or a legal entity) who has no direct commercial or industrial interest in the product or service being certified.

There is no need to use the trade mark before the registration.

The Brazilian system does not allow for the registration of series marks. Each variation, if of interest, must be filed as an individual application, which will increase the total cost due to the application fee (and possible concession fee) required for each individual mark.

The trade mark office considers prior rights to exam a trade mark application, mainly registered trade marks and trade marks filed and not yet examined. Moreover, if a party uses a trade mark in good-faith for at least six months without registering it, the trade mark office should consider this prior right in its examination, if the prior right owner file an opposition.

A prior owner can provide a letter consent to permit registration of another trade mark, however, the INPI is not obliged to accept. If both marks can cause confusion for consumers, the INPI may not consider the letter of consent.

Third parties can file an opposition until 60 days after the trade mark registration is published by the INPI. Following the filing, the INPI should notify the owner to respond to the opposition within 60 days. Third parties should demonstrate that they have similar trade marks on the same economic area, that they have been using the trade mark for at least six months, or that the trade mark is creating confusion for consumers. 

It is possible to withdraw, correct incorrect data or removing goods/services of the list. 

It will be possible to divide trade mark applications, given the changes the INPI made in 2019 in order to comply with the Madrid Protocol. However, the changes are not yet in force and the INPI have not informed the date when it will be in force.

It is possible to divide trade mark applications filed through the multi-class system according to two hypotheses.

First, when the INPI exams the application and grants the register of one class but postpones the decision of other classes because there is a conflict of trade marks or the office must analyse a previous application before deciding. The owner can request the division of the application and the new application will keep the original filing date and term of protection.

The second hypothesis is when the owner wants to transfer the trade mark’s ownership in one or more classes. The INPI will allow the assignment if the examiner understands that the coexistence of the same trade mark for different owners is possible.

The consequences for providing incorrect information depends on the information in question. If it is an information regarding company name, address, the trade mark office can publish an office action requiring the correction. If the owner provides incorrect information regarding the economic activity (etc, a company states that it can produce clothes according to its bylaws, but this is not true), the trade mark office can annul the trade mark.

The grounds for refusal are listed in Article 124, which comprises the following:

  • official, public, national, foreign or international escutcheons, coats of arms, medals, flags, emblems, badges and monuments, as well as the respective designations, figures, or imitations;
  • letters, numerals and dates alone, except when endowed with sufficiently distinctive form;
  • expressions, figures, drawings or any other signs that are contrary to morals and standards of respectability or that offend the honour or image of persons or violate freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
  • designations or initials of public entities or agencies, when the application is not made by the public entity or agency itself;
  • reproductions or imitations of a characteristic or differentiating element of a title of an establishment or a name of a company belonging to third parties, likely to cause confusion or association with such distinctive signs;
  • signs of generic, necessary, common, ordinary or simply descriptive character, when related to the product or service to be distinguished, or those commonly employed to designate a characteristic of the product or service regarding its nature, nationality, weight, value, quality and time of production or rendering of the service, except when endowed with a sufficiently distinctive form;
  • signs or expressions employed only as a means of advertising;
  • colours and their names, unless arranged or combined in a peculiar and distinctive manner;
  • geographical indications, imitations thereof likely to cause confusion, or signs that may falsely induce a geographical indication;
  • signs that induce to a false indication regarding the origin, source, nature, quality or usefulness of the product or service to which the mark is applied;
  • reproductions or imitations of an official seal normally used to guarantee a standard of any kind or nature;
  • reproductions or imitations of a sign registered as a collective or certification mark by a third party;
  • names, awards, or symbol of sporting, artistic, cultural, social, political, economic or technical event that is official or officially sanctioned, as well as an imitation likely to create confusion, unless authorised by the competent authority or entity that is promoting the event;
  • reproductions or imitations of titles, policies, coins and paper currency of a country, state or municipality;
  • personal names or signatures thereof, family names and patronymics, or the image of third parties, except with the consent of the titleholder, his/her heirs, or successors;
  • well-known pseudonyms or nicknames, individual or collective artistic names, except with the consent of the titleholder, their heirs or successors;
  • literary, artistic or scientific work, as well as the titles protected by copyright and likely to cause confusion or association, except with the consent of the author or titleholder;
  • technical terms used in industry, science and art related to the product or service related to the mark;
  • reproductions or imitations (in whole or in part, even with addition) of a mark registered by another party, to distinguish or certify an identical, similar, or alike product or service, likely to cause confusion or association with the other party’s mark;
  • duality of marks of a single titleholder for the same product or service, except when, in case of marks of the same nature, they are endowed with a sufficiently distinctive form;
  • necessary, common, or ordinary form of the product or packing, or also one that cannot be dissociated from a technical effect;
  • object that is protected by a third-party industrial design registration; and
  • signs that imitate or reproduce, wholly or partially, a mark of which the applicant could not be unaware due to their activity and whose titleholder is headquartered or domiciled in national territory or in a country with which Brazil has an agreement or that assures reciprocity, if the mark is intended to distinguish an identical, similar or alike product or service likely to cause confusion or association with that other party’s mark.

If an application is refused, the owner has a 60-day term to file an appeal to the INPI’s president. The appeal will be examined by the Trademark Board of Appeals, which will provide a technical opinion about the case. There are no appeals against the president's decision.

If the INPI still refuses to register the trade mark, the owner can file a lawsuit seeking the court to compel the INPI to register the trade mark.

Brazil has adhered to the Madrid System since October 2019. The INPI can be pointed as Office of Origin and as Designated Office.

In order to file an International Application using the INPI as Office Origin, the applicant must have a Brazilian register. The applicant should be a Brazilian or a Legal entity with head office in Brazil. From March 2020, the INPI will allow multi-class applications.

If Brazil is appointed as a Designated Office, the INPI will exam the application in accordance with the Brazilian trade marks.

The most common legal ground for filing an opposition is the reproduction or imitation, in whole or in part, of a registered trade mark that is likely to cause confusion amongst consumers or misleading association with the third-party mark.

Oppositions may also be filed to prevent the registration of famous marks and well-known marks. The Brazilian law also establishes that any person who in good faith had been using an identical or similar mark – at the application or filing date – for at least six months in Brazil shall file an opposition and be entitled to registration on a "first use" basis.

Oppositions must be filed within 60 days after the official acceptance of an application by the INPI. A potential opponent cannot require an extension of time to file the opposition.

See 5.1 Timeframes for Filing an Opposition.

An opposition may be filed by any individual or company that could suffer damages and have its rights violated as a result of the trade mark registration.

The opposition procedure starts when the application is published in the Official Gazette and the 60-day term is triggered. If an opposition is filed, the INPI must notify the applicant, who may present a response within 60 days. If the applicant decides not to file a response, the application will not necessarily be dismissed.

There is no discovery period and, therefore, the opponent must present all necessary evidence to support their allegations. There is no hearing.

If the INPI rejects a trade mark application, the applicant may file an appeal within 60 days counted from the publication of the decision. If the INPI grants the registration, anyone with a legitimate interest may file an administrative cancellation procedure within 180 days, counted from the date of issuance of the registration. After that, the registrant must be summoned to file a response within 60 days and the president of the INPI will issue a final decision. This ends the administrative instance.

Any legally legitimate person may file a lawsuit to require a judicial review by a federal court of the INPI’s decisions, within five years from its granting.

If the INPI rejects a trade mark application, the applicant may file an appeal within 60 days counted from the publication of the decision. If the INPI grants the registration, anyone with a legitimate interest may file an administrative cancellation procedure within 180-days counted from the date of issuance of the registration. After that, the registrant must be summoned to file a response within 60 days and the president of the INPI will issue a final decision. This ends the administrative instance.

Any legally legitimate person may file a lawsuit to require a judicial review by a federal court of the INPI’s decisions, within five years from its granting.

The trade mark can be cancelled for non-use after five years from its grant if:

  • on the date of such request use of the mark in Brazil has not been initiated;
  • use of the mark has been interrupted for more than five consecutive years; or
  • within that time, the mark has been used in a modified form that implies an alteration in its distinctive character as originally found on the certificate of registration.

The mark will not be cancelled if the registrant justifies non-use thereof for legitimate reasons.

Moreover, a trade mark registration shall be deemed null if granted in violation of the provisions of this law. The general argument is that the sign is not registrable as a trade mark, according to Article 124 (see 4.9 Refusal of Registration).

The Brazilian Law states that any legitimate interested third party may initiate an administrative or judicial nullity proceeding. The following are considered as someone with a legitimate interest:

  • governments, regarding their own public agencies and symbols;
  • companies or agencies that provide a service regarding the trade mark, its commercial acronym, logo or establishment title registered by a third party;
  • anyone, or their successor, whose civil name, signature, broadly known pseudonym or nickname has been registered without express authorisation;
  • an author of an artistic work and the proper authority or agency that promotes a sport, artistic, cultural, social, political, economic or technical event, officially recognised, whose name, prize or symbol has been registered as a trade mark without authorisation;
  • a registrant of a trade mark that has been reproduced or imitated;
  • a registrant of a trade mark whose filing date was before the one whose register was granted, violating the priority principle;
  • traders, industrial workers, self-employed workers, companies and agencies that provide a service or activity, so that they will have the right to use a trade mark that, if registered, would be impossible for them to use;
  • a registrant of an industrial design that was registered by a third party as a trade mark; and
  • a registrant of a collective or certification trade mark whose reproduction or imitation has been registered by a third party as a collective or certification trade mark.

The same requirements shall be used for cancellation actions.

The revocation process can be filed before the trade mark office 180 days after the trade mark is granted and, after five years, before the civil courts.

Partial revocation/cancellation can be requested administratively or in court, when only part of it was granted in violation of the IP Law. A forfeiture request can also be requested against part of a trade mark that is out of use for more than five years. It is also possible to request the imposition of a limitation over the trade mark, such as an apostille, as “no exclusivity over the expression X”.

The administrative nullity proceeding cannot be amended, only withdrawn by the claimant, with no effect on the INPI, which can decide it if understands that there are grounds. As to the nullity action in a federal court, it is possible to amend it until the defendants (the INPI and the trade mark owner) are duly served.

Infringement actions, as a rule, are filed before state courts, while revocation/cancellation actions must be filed before federal courts, with the INPI as a defendant party. The judge may, in the course of the cancellation action, grant an injunction staying the effects of a registration and use of the corresponding mark. It is also possible to request the staying of the infringement action while a nullity action is judged.

Regarding timing, as both are judicial actions, the proceedings are the same. Lawsuits generally last two years at first instance, two to three years in the Court of Appeals, and another two to three years in the Superior Court of Justice.

Any lawsuit regarding trade mark claims should be filed up to ten years after the trade mark owner discovered the infringement.

If an unauthorised third party is reproducing a registered mark, wholly or in part, or imitating it leading to confusion, the trade mark owner (or its authorised licensee or distributor) is a legitimate person able to file a civil lawsuit and a criminal action against the offender. The owner can file a trade mark suit alleging that the use of trade mark by third part is leading the mark to dilution. Cybersquatting is also prohibited in Brazil.

The necessary parties to an action for infringement are the trade mark owner and the alleged infringer.

It is possible for a third party who is not the trade mark-owner, such as a licensee or distributor, to file an action for infringement since it is expressly invested of such powers through an agreement and this agreement is duly recorded before the INPI.

The party may take actions to stop infringement before its mark is registered to protect its material integrity and reputation and based on unfair competition rules.

Collective actions are available to discuss any patrimonial and moral damages caused to:

  • the environment;
  • consumers;
  • artistic, aesthetic, historical, tourist and landscape rights and assents;
  • any other collective and diffuse rights and interests;
  • violation to the economic order;
  • urbanistic order;
  • the honour and dignity of racial, ethnic or religious groups; or
  • the public and social wealth.

Therefore, if trade marks are related to such subject-matters, collective actions could be available. In practice, however, such situations are very rare.

The Brazilian system does not establish any prerequisite to file a lawsuit related to trade marks. Mediation is becoming more common in Brazil for cases involving trade mark infringement.

It is important to clarify that a trade mark infringement allegation is only available after a trade mark registration. In the application phase, a lawsuit may be filed based specifically on unfair competition practice.

The complaint must clearly specify the claim(s), as well as factual and legal arguments related to it. The plaintiff must also indicate the pieces of evidence by which they intend to demonstrate the truth of alleged facts. Regarding trade mark proceedings, the plaintiff must typically evidence the existence of a trade mark registration, the infringement acts and the damages arising from them.

The court with jurisdiction to hear trade mark matters depends on the type of lawsuit. If the object of the action is trade mark infringement, the competent authority at first instance is the State Lower Courts. State Courts of Appeals have jurisdiction to review the State Lower Courts decision.

If a nullity or validity action is filed, the competent authority at first instance would be the Federal Lower Courts. Federal Courts of Appeals have jurisdiction to review the Federal Lower Courts decisions.

In both cases, after the second-instance decision, a special appeal or extraordinary appeal may be filed to the Superior Court of Justice or to the Supreme Federal Court, depending on whether there is any violation to federal law or to the Federal Constitution, respectively.

It is necessary to establish that the defendant has used the sign as a trade mark with commercial intent. However, the trade mark-owner cannot prevent any reference to the mark in speeches, scientific or literary works, or in any other type of publication, provided that it is made with a non-profit connotation and without prejudice to its distinctive character.

The defendant could file a nullity action, to require the judicial declaration of nullity of the plaintiff's trade mark registration by a federal court.

Another possibility of defence is mentioned in Declaratory Judgment Proceedings, which refers to filing a non-infringement declaratory lawsuit, with the purpose of obtaining a judicial declaration that the use of a trade mark does not violate any third-party IP rights.

The trade mark owner may file a Precautionary Action or an Infringement Lawsuit seeking a preliminary injunction order to immediately cease the violation.

Infringement and cancellation actions follow the steps established by the Brazilian Civil Procedure Code. Cancellation actions have a longer period in which to reply (45 business days) and the participation of the INPI is necessary.

It is necessary to establish that the defendant has used the sign as a trade mark with commercial intent. However, the trade mark owner cannot prevent any reference to the mark in speeches, scientific or literary works, or in any other type of publication, provided that it is made with a non-profit connotation and without prejudice to its distinctive character.

The main factor to be considered when determining whether the use of a sign constitutes trade mark infringement is the likelihood of confusion.

Several circumstances are considered to establish a trade mark infringement:

  • the degree of distinctiveness of the older mark;
  • the degree of similarity between the signs, when examined by an ordinary consumer in a market experience;
  • the similarity between the goods/services;
  • the degree of the competition between the goods/services and if one can replace the other; and
  • the specificities of the market in which the goods/services are inserted, among others.

The plaintiff of a trade mark lawsuit can allege that the third part is diluting its registered trade marks. The Brazilian law does not describe types of dilution, however, the Law states that the owner can protect the integrity and reputation of the registered trade mark. Further, the doctrine accepts that it is possible to allege dilution by blurring and tarnishment. The cybersquatting is also prohibited in Brazil and can be claimed in a lawsuit.

The trade mark registration brings the possibility of filing an infringement lawsuit against third parties. Before the granting of a trade mark, the owner of the application only can file a lawsuit based in unfair competition.

The defendant could file a nullity action, to require the judicial declaration of nullity of the plaintiff's trade mark registration by a federal court.

Another possibility of defence is mentioned in Declaratory Judgment Proceedings, which refers to filing a non-infringement declaratory lawsuit, with the purpose of obtaining a judicial declaration that the use of a trade mark does not violate any third-party IP rights.

Moreover, the defendant can allege:

  • that the trade marks are not similar;
  • that the expression is descriptive; or
  • trade mark dilution;

The Brazilian system has no discovery proceeding.

The parties are entitled to require the production of evidence prior to the filing of a lawsuit. The judge may order the defendant to present certain information or documents if the claims presented by the plaintiff are reasonable. In this case, the plaintiff must present all necessary information to individualise the document and information needed.

Judges are not obliged to order the production of evidence in trade mark infringement cases but, depending on the complexity of the matter, such an analysis may be necessary. In this case, the judge will typically accept scholars' opinions, trade mark and trade dress comparisons, semiotic studies and others.

The judge may also appoint a court expert to conduct a technical analysis. Each party presents technical requirements and appoints a technical expert assistant, who will follow up the development of the work of the court expert. The court expert presents a report and each party replies to it on a legal and technical basis. The judge then renders a decision according to its own discretion and is not obliged to follow the conclusion of the court’s technical assistant.

A crime is committed against mark registrations by whoever reproduces a registered mark wholly or in part, without the registrant’s authorisation, or imitates it in a manner that may lead to confusion or alters a third-party registered mark already applied to a product placed on the market and sells, offers or exhibits for sale, hides or maintains in stock a product branded with third-party marks, fully or partially reproduced in an illicit manner, or a product from their industry or commerce, held in a vessel, container or package carrying a legitimate mark of a third party.

The penalty for trade mark infringement is imprisonment of one to three months, or a fine.

Criminal proceedings are preceded by a preliminary search and seizure measure, conducted by two court experts who will prepare an expert report about the infringement. If the report confirms the infringement, the judge will ratify the technical report and the patent-owner can file a private criminal action for criminal punishment of the involved party. However, as trade mark infringement is not subject to a severe penalty of imprisonment, the convictions are usually suspended or converted into fines.

There are no criminal administrative proceedings for trade mark infringements.

Every action in Brazil needs to have an estimated amount for the calculation of court fees. The party who files the action will normally pay up to 4% of such amount as court fees to start the proceeding. The amount varies depending on the court where the case is filed.

According to the first paragraph of the Article 209 of the Brazilian Intellectual Property Law (Law No 9.279/96), the judge may determine the cease of the violation granting a preliminary injunction order. To comply the defendant to cease the violation, the most common measure is to set a penalty of fine. If the defendant does not cease the use of the trade mark, the judge has discretion to dispatch letters to commercial registries or private/public agencies to oblige them to withdraw the diffusion of such trade mark.

As a general rule, the injunctive relief will be granted if the trademark owner demonstrates the periculum in mora and fumus boni iuris concerning its pleas, mainly based on the risk of an irreparable injury. The defendant, on the other hand, may oppose to a preliminary injunction order demonstrating the measure may drastically affect its business, leading the company to bankruptcy, or demonstrate the fumus boni iuris brought in the initial brief is not sufficiently strong to convince the judge.

Damages are calculated based on the benefits otherwise earned by the injured party had the violation not occurred. Loss of profits are determined by the most favourable of the following criteria, vis-à-vis the injured party:

  • the benefits that would have been gained by the injured party if the violation had not occurred;
  • the benefits gained by the violator of a right; or
  • the remuneration otherwise payable by the violator to the proprietor of violated rights for a licence that would have legally permitted them to exploit the underlying asset.

The judge does not have discretion in ordering monetary remedies, the owner has to request.

According to Brazilian law, the judge can order the impoundment of infringing products preliminary and order destruction if it is proved that the products are counterfeit. 

Generally, the losing party is responsible for the payment of court fees and attorney fees, usually set by the judge from 10% to 20% of the amount in contention.

There is no legal obligation to provide prior notice to the defendant. Nonetheless, sending a notice has the purpose of seek an agreement or at least demonstrate that judicial intervention is necessary.

A decision recognising the absence of any violation is considered a declaratory judgment in Brazil. The prevailing defendant has the right to recover all the costs associated with the lawsuit, especially court fees. They may also file a specific lawsuit to request Prevailing Defendant (moral and compensatory) related to any accusation of trade mark infringement that they may have suffered.

Even though the law provides an award of up to 20% of the case value as attorney fees, such amount is collected by the attorney of the prevailing party and not by the party per se. If the party intends to recover the amount they paid to their counsel, a specific lawsuit must be filed.

Border measures are available and can be performed by the customs authorities or requested by the parties. Customs authorities, ex officio or at the request of an interested party (such as the trade mark owner or its licensee/distributor vested with powers to defend the trade mark), can seize any counterfeit product at the time of clearance. After seizure, the customs authorities can notify the trade mark-owner to file a complaint for judicial seizure and/or destruction of the seized products.

It is possible for the trade mark owner to request a preliminary injunction seeking the blocking of products at the border. In this case, the judge can send an official letter to the customs authorities, who will block the counterfeited products.

The remedies are the same for all trade marks.

A case can be settled at any time by the decision of the parties when negotiable rights are involved. The Brazilian Civil Procedure Code establishes a conciliatory hearing right after the receiving of the initial petition and before the filing of the reply by the defendant. After the entering of a settlement, the judge will ratify it and dismiss the case.

ADR is common in Brazil for every kind of litigation. The judge schedules a first hearing with the presence of the lawyers and representatives of the parties to discuss the possibility of a settlement. After the trial court decision, in some appellate courts there is also a standard proceeding of scheduling conciliation hearings in order to incentivise settlement, which is conducted by a person with specific training in mediation.

Other court proceedings, such as previous or parallel revocation proceedings, may have an influence on a current infringement proceeding. The suspension of the infringement case shall depend on its peculiarities and the discretion of the judge, who usually tends not to suspend it, as the revocation proceeding is usually brought by bad-faith trade mark infringers to gain some time. However, a final decision in a revocation proceeding, ie, cancelling the trade mark, will have huge effects over the infringement action as the defendant could claim that there are no exclusivity rights over such a trade mark by the plaintiff and then the action will be dismissed.

An appeal can be filed against final decision of the trial court. The timeframe varies from court to court. In São Paulo and Rio de Janeiro, the most common venues for trade mark cases, it usually takes one to two years to have a case decided by an appellate court.

The procedure in appellate courts for trade mark cases is the same. The only peculiarity is that in certain courts there are special chambers to judge industrial property cases and other matters.

An appeal implies a full review of the case.

The Brazilian system admits the protection of trade marks by different means, including copyright. Regarding the surname, if it is registered as a trade mark, the protection received is the same of any other trade mark. If another person has the same surname of a registered trade mark, this third part cannot use the name as trade mark. There is no limitation for trade marks based on copyrights.

The Brazilian system recognises the protection of trade dress, however, it cannot be registered. Usually, the infringement of trade dress is based on unfair competition laws. Usually, a three-dimensional trade mark can be registered as patent design.

The protection given to a surname or a name trade mark is the same. The only requirement is that if the trade mark is not filed in name of the individual, it is necessary to record a term of consent from the celebrity to the company that filed the trade mark.

The law stating about unfair competition is the same as that governing trade marks (IP law – Law No 9279/1996).

There are no emerging issues.

Usually, the services providers request the proof of a trade mark registration in order to remove goods or information from the internet.

There are no special rules regarding trade marks used in business.

Peduti Sociedade de Advogados

Rua Tenente Negrao 140
9 andar
Itaim Bibi
Sao Paulo 04530-030
Brazil

+55 11 3078 0353

+55 11 3078 0353

inter@peduti.com.br www.peduti.com.br
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Law and Practice in Brazil

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Peduti Sociedade de Advogados is a law firm specialised in intellectual property, entertainment and information technology fields. With 40 years of experience in such fields of law, the firm's tradition arises from the excellent standards pursued by the practice and from the expertise and deep knowledge of the team of professionals. Peduti covers all aspects of patent, trade mark, copyright, software, domain names, advertising and trade secret law, including advising, counselling, prosecution, licensing and litigation. The team consists of 29 people, ranging from paralegals to technicians, trainees to partners – all of them focused in the IP practice. The lawyers graduated from top law schools in Brazil and most attorneys have LLM degrees in intellectual property or in internet law. All of them are registered on the Brazilian Bar. There are also patent attorneys specialised in science and engineering fields.