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PROTECT INTELLECTUAL
PROPERTY
IN BRAZIL

Sponsor:

American Chamber of Commerce for Brazil - AMCHAM

International Affairs Department
Brazil, 2015/2016

*This guide is part of the project

ACKNOWLEDGMENTS
The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States
is constantly serving its members by building bridges for Brazilian businesses worldwide. Our foreign
investment attraction efforts have also been a key leading point for Amcham. The How to series is part
of this initiative. With the support of some of our corporate members, the States of the country and now
some cities, we are putting together strategic information on the most various aspects of doing business
in Brazil and its opportunities. As part of BRICS (Brazil, Russia, India, China and South Africa) and
representing the 7th largest economy of the world, being also the 5th biggest destination for foreign
investment, Brazil has clearly demonstrated its importance in the global market. Furthermore, the medium
and high classes are increasing, which creates a solid internal market and contributes to maintain good
results in the economy. It is now more than ever a strategic time for businesses opportunities in Brazil.
We welcome you and hope that the information you are about to read serves you best.

Gabriel Rico CEO, Amcham Brasil

In constant development, with a vibrant and strong economy, Brazil is becoming one of the leading
powers of the world. Brazil presently has the largest economy in Latin America and the seventh
largest in the world. Previously a country with an economy essentially driven by agribusiness, favored
with a territory of continental proportions, Brazil is currently focused on encouraging innovation
and promoting conditions that will enable sustainable development and scientific and technological
progress. Within this economic and social context, Intellectual Property gains even greater relevance
as a tool for achieving effective results and competitiveness. Thus, the publication of this guide,
resulting from a partnership between AMCHAM and Ricci Propriedade Intelectual, is extremely
timely. It seeks to address, in an objective and instructive manner, the main aspects of intellectual
property rights, providing potential foreign investors, professionals and businessmen with general
and necessary information to secure appropriate protection and defense of their valuable Intellectual
Property assets in Brazil.

Antonio Ferro Ricci

Founding Partner, Ricci Propriedade Intelectual

Daniel Adensohn de Souza

Senior Associate, Ricci Propriedade Intelectual

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CONTENT
01

INTRODUCTION

06

02

PATENTS

07

03

INDUSTRIAL DESIGNS

09

04

SEMICONDUCTOR TOPOGRAPHIES

11

05

PLANT VARIETIES

12

06

COPYRIGHTS

14

07

TRADE AND SERVICE MARKS

16

08

TRADE NAMES

18

09

GEOGRAPHIC INDICATIONS

19

10

INTELLECTUAL PROPERTY RIGHTS IN ADVERTISING

20

11

DOMAIN NAMES

21

12

INTELLECTUAL PROPERTY RIGHTS ON THE INTERNET

22

13

LICENSING AND TECHNOLOGY TRANSFER

24

14

TRADE SECRET AND PROTECTION OF CLASSIFIED INFORMATION

26

15

LITIGATION INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS

27

16

ANTI-PIRACY FRAMEWORK

28

17

APPLICABLE LEGISLATION

29

18

ABOUT OUR SPONSOR

30

01.

INTRODUCTION
In an economic and market context in which competition
is increasingly fiercer, the companies need to find ways
to make their products/services unique, in order to attract
new customers and maintain the clientele they have already
won. Investments in innovation, whether to develop new
products, to improve manufacturing processes or to create
marketing strategies are essential for achieving this.

In general terms, Intellectual Property is the branch of

law that protects artistic, literary and scientific works, as
well as creations for business use, such as trademarks,
patents, designs and trade secrets.

Consequently, the intellectual property rights have

assumed an important role in this scenario, in that they
provide tools for adequate and effective management and
protection of innovation and knowledge.

Copyrights include authors rights, strictly speaking, that

protect creations or intellectual works, materialized in
any medium, particularly literary, artistic and scientific
works endowed with originality, and within the period of
protection established by law. They also encompass the
neighboring rights which are those assured to performers,
producers of phonograms and broadcasting organizations.

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Thus, Intellectual Property is currently the main tool

used to propel new business, stimulate research and
development activities, add value and generate greater
competitiveness in business.
Intellectual property has such an importance to the progress
of a nation that the Federal Constitution of Brazil, in Article
5, subsections XXVII to XXIX, established a constitutional
guarantee for the protection of copyrights and neighboring
rights, as well as patents, industrial designs, trademarks, trade
names and other distinctive signs, bearing in mind the social
interest and the technological and economic development
of the country, as in the U.S. Constitution: To promote the
Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.

Intellectual Property, for didactic purposes, is divided

into two categories: Copyrights and Industrial Property.

In turn, industrial property protects industrial innovation, which

includes patents and industrial designs, in addition to distinctive
signs used in a companys activities, such as trademarks,
company names, trade names, insignia, advertising phrases,
geographic indications and domain names.
In this guide, it will be presented concepts about
intellectual property rights, outlining their main
characteristics, functions, duration and extent of
protection, enabling readers to understand the system of
protection of Brazilian Intellectual Property, so that they
can adequately protect their intangible assets in the most
effective and least costly way possible.

02.

PATENTS

To be patentable, an invention must meet the requirements

of novelty, inventive step and industrial application. An
object of practical use, or part thereof, shall be patentable
as a utility model, if it is susceptible of industrial
application, if it presents a new shape or arrangement
and involves an inventive step that results in functional
improvement in its use or manufacture.
An invention or utility model are considered new when
not included in the state of art, and their protection, under
a patent, covers a wide variety of areas of expertise, such
as mechanics, electronics, physics, chemistry, medicine,
biotechnology, etc.
The Industrial Property Law sets certain restrictions
on patent protection eligibility, with the following, for
example, not being patentable: discoveries; scientific
theories; mathematical methods; commercial, accounting,
financial, educational or advertising methods; purely
abstract concepts; computer programs per se; or natural
living beings, in whole or part, except for transgenic
microorganisms that meet the requirements of novelty,
inventive step and industrial application.

A patent application, filed at the INPI, must be accompanied

by a description, claims, summary and figures, if any. The
patent application will be kept secret for a period of 18 months
from the date of filing or earliest priority, for applications
from abroad. The examination of a patent application must
be requested by the applicant or by any interested party
within 36 months of the filing date. In some specific cases,
it is possible to fast-track the examination of the application,
through a prioritized examination of the patent, for example,
in the case of litigation involving the patent or for green patent
applications (technologies focusing on the environment), or if
the inventor is over age 65.
The invention patent is valid for 20 (twenty) years and
the utility model patent for 15 (fifteen) years as of the
filing date. After the patent term ends, the object under
protection will fall within the public domain.
The extension of protection conferred by a patent will be
determined by the content of the claims, interpreted in
the light of the description and drawings. Patents confer
to their owners the right to prevent third parties, who
have not received consent, from manufacturing, using,
offering for sale, selling or importing a:
Product under patent protection; and
Process or product directly obtained by a patented
process.

7 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

The Industrial Property Law establishes that a patent can

be classified as an invention or utility model, and that
inventors will be assured the right to obtain patents that
guarantees them the property, with the National Institute
of Industrial Property (INPI).

Patent owners are assured the right to claim for damages

in Brazilian courts for the unauthorized exploitation
of the object of the patent, including the use occurred
between the date of publication of the application and
the granting of the patent. The application is, as a rule,
confidential for only 18 months. The publication makes
it public and, for that reason, no one can claim ignorance.

A lawsuit to revoke a patent may be filed in the Federal

Courts at any time during the term of a patent, by the INPI
or any person with a legitimate interest. The invalidation
of a patent may be pleaded at any time, as a matter of
defense, and the judge may, preventively or incidentally,
order the suspension of the effects of the patent during
the course of the lawsuit.

The Industrial Property Law stipulates that the amount of

compensation will be determined by the criteria that more
greatly favor the injured party, among the following:

The invalidation of a patent may be total, applying to all

claims, or in part, based on the condition or fact that the
subsisting claims constitute patentable subject matter on
their own. The invalidation of the patent shall take effect
from the date of filing of the patent application.

The benefits that the injured party would have

gained if the violation had not occurred; or
The benefits gained by the author of the violation
of the patent; or

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The remuneration the author of the violation

would have paid to the holder of the violated rights
for a granted license which would have legally
permitted him to exploit the patent.
A patent that is wrongfully granted (e.g.: if it fails to meet
patentability requirements; if its subject matter cannot be
considered an invention or utility model, pursuant to Article 10
of the Industrial Property Law; if it deals with non-patentable
subject matter under Article 18 of the Industrial Property
Law, such as being contrary to morals, good customs, public
security, order and public health; etc.) may be subject to
administrative nullification proceedings, filed ex officio or
directly at the INPI by any person with a legitimate interest,
within six months of the publication of its concession.

Furthermore, it is important to note that Brazil is a

signatory member of the PCT (Patent Cooperation
Treaty), a multilateral international treaty that deals with
the filing of international patent applications, which,
subject to the conditions and terms provided in the treaty,
may be extended to the 148 contracting states.
Generally speaking, after filing an international
application under the PCT, the applicant will have up
to 30 months, from the PCT filing date or priority date
(if priority has been claimed for a patent application
filed in a contracting state in a period not exceeding 12
months), to file for a patent to be granted in each country
of interest. It is worth noting that an international
application may be submitted in Portuguese and that the
National Institute of Industrial Property of Brazil (INPI)
was selected as one of the International Searching
Authorities for international patent applications under
the PCT.

03.

INDUSTRIAL DESIGNS

Three basic requirements for the registrability of an

industrial design may be drawn from this definition:
novelty, originality and industrial application.An industrial
design is considered new when it is not comprised by the
prior art, i.e., it is an objective and absolute novelty. The
industrial design is considered original when it results
in a distinctive visual configuration in relation to other
prior objects. The original visual result may arise from
the combination of known elements.
Among objects expressly excluded from protection,
the current Industrial Property Law does not consider
as an industrial design any purely artistic work, whose
protection will be conferred under the Copyright Law.
Likewise, not considered registrable as an industrial
design is anything contrary to morals and good customs
or which offends the honor or image of individuals or
infringes upon freedom of conscience, belief, religious
worship or ideas and feelings worthy of respect and
veneration; the necessary common or ordinary shape of
an object or, further, that which is determined essentially
by technical or functional considerations, which, in this
case, would fall under a utility model patent.

Therefore, the industrial design protection refers to the

external and aesthetic form of an object or ornamental
pattern, and not to its practical function.
Owners of registered industrial designs have the right to
prevent third parties, who have not received consent from
making, using, offering for sale, selling or importing their
protected industrial designs.
Besides being a tort, counterfeiting an industrial design
constitutes a criminal offense, since the Industrial
Property Law deems as an offense the manufacture,
without authorization of the owner, of a product that
incorporates a registered industrial design or a substantial
copy thereof, that may mislead or confuse. A crime is also
committed against a registered industrial design by those
who export, sell, offer for sale, have in stock, conceal
or receive, for commercial purposes, an object that
unlawfully incorporates a registered industrial design, or
a substantial copy thereof, that may mislead or confuse.
Thus, the law protects the owner of an industrial design
not only against reproduction, or outright copy of the
object, but also against substantial imitation, i.e., a highly
similar object, liable to mislead, cause uncertainty or
confuse consumers.
The term of the industrial design protection is 10 years
and may be extended for another three periods of five

9 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

An industrial design is the ornamental plastic form of an

object or any ornamental arrangement of lines and colors
that may be applied to a product, that provides a new and
original visual result in its external configuration and that
may serve as a type for industrial manufacture.

years, totaling 25 years of protection, after which it will

become public domain.
A registered industrial design may be declared invalid if it
was granted contrary to the law, that is, if it is not novel
or original; entails the common or ordinary shape of an
object; is determined essentially on the basis of technical or
functional considerations; or is contrary to morals and good
customs and offends the honor and image of individuals, or
infringes upon freedom of belief, religion, etc.

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The invalidation of a registered industrial design may be

declared administratively by INPI, through invalidation

administrative proceedings, filed ex officio or by any

person with a legitimate interest, within a period of five
years from the publication of its concession. If filed within
the first 60 (sixty) days, the effects of the registration will
be suspended.
The invalidation of a registered industrial design may also
be decreed in a lawsuit brought before the Federal Court,
which may be filed at any time during the protection term
by INPI or any person with a legitimate interest. It may be
pleaded, at any time, as a matter of defense, and the judge
may, preventively or incidentally, order the suspension of
the effects of the patent during the course of the lawsuit.

04.

SEMICONDUCTOR TOPOGRAPHIES

Under the Brazilian law, only original topographies

will be protected through registration at the INPI, i.e.,
a topography that results from the intellectual effort of
its creator or creators and that is not common or usual
(determined case by case) for technicians, experts
or integrated circuit manufacturers, at the time of its
creation. However, a topography that results from a
combination of common elements and interconnections
or that incorporates, with proper authorization, protected

layout-designs of third parties, may be protected if taken

as a whole.
The registration, which gives its holder the right
to exclusive exploitation of the integrated circuit
layout-design, will be valid for ten years, from the
date of filing or from the date of the first commercial
exploitation of the integrated circuit layout-design,
whichever occurred first. This registration cannot
be renewed.
The registration of the topography of an integrated circuit
may be declared invalid in court if granted contrary to
the provisions of laws, especially if the topography does
not meet the originality requirement; the documents
submitted are not sufficient to identify the topography; or
the registration application was not filed within two years
of the start of commercial exploitation.

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The layout-design (topography) of an integrated circuit

refers to a series of related images, built or encoded in
any medium or form, representing the three-dimensional
configuration of the layers that make up an integrated
circuit, and wherein each image represents, in whole
or in part, the geometric layout or arrangements of the
surface of the integrated circuit at any stage of its design
or manufacture.

05.

PLANT VARIETIES
The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) establishes that
member countries of the World Trade Organization
(WTO) must protect plant varieties and can opt for a
system of patents, a sui generis model or a combination
of both.
Brazil has opted for protection through a specific
registration, whereby it is forbidden to protect plant
varieties through patents, pursuant to Articles 10 and 18
of the Industrial Property Law.

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Thus, the protection of intellectual property rights is

obtained through a Plant Variety Protection Certificate
granted by the National Plant Variety Protection Service
(SNPC), created by Law No. 9456/1997, under the
Ministry of Agriculture and Supply.
The plant variety is understood as the variety of any
higher plant genus or species that is clearly distinct from
other known plant varieties by a minimum margin of
characteristics, and has with its own name; that is uniform
and stable, in terms of its characteristics, over successive
generations; and that it is a species which can be used
by the agriculture and forestry complex, described in a
specialized publication available and accessible to the
public, as well as the hybrid component lineage.

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In short, the plant variety protection focuses on the

vegetative reproduction or propagation of the whole

plant, i.e., on the seed. The plant variety must meet
the following requirements: be the product of genetic
improvement; be of a species subject to protection in
Brazil; not have been sold abroad for over four years, or
more than six years in the case of vines or trees; not have
been sold in Brazil for more than twelve months; and be
distinct, uniform and stable.
The last three requirements (distinctiveness, uniformity
and stability) must be proven through specific combined
experiments, called DUS Tests (distinctiveness,
uniformity and stability). Under the Brazilian law, these
tests are the responsibility of the applicant and must be
delivered along with the protection application.
The protection of the plant variety will be effective
from the date the Provisional Protection Certificate is
granted (normally issued within 60 days of the filing
date, provided the information is complete, thus already
affording protection to the cultivar) for a period of
15 (fifteen) years, except for vines, fruit trees, forest
trees and ornamental trees, including, in each case, its
rootstock, for which the term will be 18 (eighteen) years,
after which, it will become public domain.
With the publication of the application and issuance of the
Provisional Protection Certificate, there will be a period of
90 (ninety) days for objections. If there are no objections

The denomination of the plant variety will be mandatory

for its identification and will serve as its generic name,

which must be unique and may not be expressed in

numerical form only, i.e., a description also needs to be
inserted; it must be different in name from other existing
plant varieties; and it cannot be misleading in terms of
the plant varietys intrinsic characteristics or origin.

13 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

or, in the event there are objections and they are rejected,
the Plant Variety Protection Certificate is issued.

06.

COPYRIGHT
Protected intellectual works are considered to be creations
of the mind, expressed through any medium or fastened
to any kind of support, whether tangible or intangible,
known or invented in the future, such as: the texts of
literary, artistic or scientific works; musical compositions,
audiovisual works, photographic works; drawing, painting,
printmaking, sculpture, lithography and kinetic art works;
or computer programs, among others.
Protection of computer programs in copyright terms is
governed by Law No. 9609/98 and, subsidiary, by Law
No. 9610/98 which deals with other copyright works. Only
in specific cases, depending on a technical analysis and
certain requirements, patent protection involving software
is possible, according to the Industrial Property Law.

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In Brazil, the following are not protected by copyrights:

business systems and methods; and mathematical
designs and concepts, such as schemes, plans or rules for
performing mental acts, games or business.
The Copyright protection does not depend upon a specific
registration. Depending on the nature of the work, the
registration could be done, optionally, in the National
Library; School of Music or School of Fine Arts of the
Federal University of Rio de Janeiro; National Film
Institute; or Federal Council of Engineering, Architecture
and Agronomy; and INPI, in the case of computer
programs. The registration time depends on the nature

of the work and, consequently, on the place where this

registration will be done.
Law No. 9610/98 establishes that an author is the
individual who creates literary, artistic or scientific work,
and the protection granted to the author may be applied
to legal entities through assignment of the copyright. It
also rules that the author is the holder of the moral and
economic rights of the protected work, and only the
property rights for its commercial exploitation may be
transferred to third parties, including legal entities, since
the authors moral rights are considered inalienable,
irrevocable and imprescriptible.
The moral rights of author are the following: claim, at
any time, the authorship of the work; have his/her name
indicated or announced, as the author, in the use of their
work; ensure the integrity of the work, by opposing any
modifications or acts that could, in any way, harm the
work or undermine the reputation or honor of the author;
among others.
The author has the exclusive right to utilize, benefit from
and enjoy the literary, artistic or scientific work, and its
use by other modalities requires the prior and express
consent of the author.
Law No. 9610/98 does not address commissioned works
or those resulting from employment contracts or provision

The economic rights of an author may be fully or partially

transferred to third parties, by the author and his or her
heirs, whether universal or individual, through licensing,
concession, assignment or other legally permitted means.
If there is no contractual provision regarding duration,
the maximum period shall be five years. The total and
definitive assignment of the authors property rights must
be done through a written contractual agreement.
The assignment of copyrights is presumably costly
and will only occur for modalities of use or supports
already existing at the date of the contract. In addition to
modalities of use, the assignment or licensing instrument
shall establish the countries where the work will be

used in this case it is necessary to pay the corresponding

fee in each country. In case of omission, the instrument
will only be valid in Brazil, where the contract was
signed.
The law establishes the basic conditions that shall govern
copyright assignment contracts, such as time, place and
price, which are essential elements for the effectiveness
of the contract.
The property rights of an author will last for seventy years
as of January 1st of the year following his or her death, in
accordance with the rules of inheritance under civil law,
which also apply to posthumous works. For audiovisual
and photographic works, the term of protection of
property rights will be seventy years as of January 1 of
the year following its publication. In case of computer
programs, the term of copyright protection is fifty years
as of January 1st of the year following its publication, or
in the absence thereof, of its creation.
15 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

of services. In this case, the copyright belongs entirely

to the author (individual) and the property rights will
only belong to the employer or party which contracted
the service (legal entity) through specific contractual
provisions for this purpose.

07.

TRADE AND SERVICE MARKS

In Brazil, a trademark is defined as any visually perceptible
distinctive sign not prohibited by law. Therefore,
olfactory, taste, sound and other nontraditional signs
cannot be protected as trademarks in Brazil, but may be
protected, however, in accordance with the general rules
involving unfair competition.
On the other hand, Brazilian law requires that the sign
to be registered as a trademark is distinctive. The initial
assessment of the trademarks distinctiveness first occurs
when the INPI examines, administratively, whether the
sign is inherently capable of distinguishing the products
or services, through interpretation of the degree of
relationship between the sign and the product or service
that it seeks to identify.

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Assessment of distinctiveness may also occur later, since

the Brazilian Judiciary has applied, in some cases, Article
6 quinquies, C.1 of the Paris Convention, recognizing that
weak, evocative trademarks that have a relationship with
the product or service they identify are able to acquire
distinctiveness through continued use and investments
made by the holder (phenomenon of secondary meaning).
In line with most foreign legislation and in accordance
with international treaties, Brazil also grants special
and differentiated protection to famous trademarks. For
well-known trademarks in their segment, an official
administrative procedure under the INPI is not necessary.

For highly renowned trademarks, whose differential is

the protection granted in all business segments, for all
the products and services, it is necessary to perform an
administrative procedure with the INPI, as well as ensure
that certain requirements are met, particularly:
Recognition of the trademark by a large portion of
the general public;
The quality, reputation and prestige that the public
associates with the trademark and the products or
services it designates; and
Investments made by the holder to publicize the
trademark and in research and development.
In addition to the trademarks for products and services,
Brazilian law also protects collective trademarks, which
are used to identify products or services arising from
the members of a certain entity, as well as certification
marks, which are used to certify that a product or service
complies with a set of rules related to quality, nature, etc.
On the other hand, Brazilian law does not accept as
trademarks a number of expressions, such as those that:
represent monuments or names of public agencies;
mislead as to indication of origin; reproduce or imitate
names or symbols of sporting or artistic events, etc.;
reproduce or imitate legal names, family names, stage

The trademark registration procedure in Brazil is

quite simple. After the application is submitted, the
application will be published for any objections by third
parties. If there are no opposition, the application will
proceed to the examination stage. If there are opposition,
the applicant will be notified to present a defense, and
after this stage, the application will proceed to the
examination on the merits. After the examination, the
INPI will decide on the registrability of the trademark
or not. If the application is accepted for registration, the
registration fees must be collected and the registration
will be granted and, further, the registration certificate
will be issued. If the examination is negative, it may be
appealed in the administrative sphere.

The registration will be valid for 10 (ten) years, from

the date it was granted and may be renewed indefinitely
by its owner as long as it is in his or her interest. Once
registration is granted, administrative cancellation is
still possible, which would need to be petitioned by an
interested third party within 6 (six) months of the date
of registration. After judgment of this measure, the
registration can only be annulled in Federal Court, within
5 (five) years as from the granting date.
Although it is simple, the trademark registration procedure
in Brazil has been cumbersome, taking an average of 36
months to be completed, due to the backlog (large number
of requests awaiting analysis) at the INPI. However, the INPI
has implemented a number of measures to reduce this period
to be on par with international standards, especially through
investments to virtualize processes and in the hiring and
training of new examiners to enhance the speed and quality
of decisions, as well as through investments in infrastructure.

17 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

names, known image or nicknames of third parties;

common, necessary or generic technical words or terms;
are only used as advertising; and, of course, those that
violate the rights of third parties.

08.

TRADE NAMES
A trade name can be understood as the name adopted
by an entrepreneur, individual or legal entity, to identify
them in the exercise of its activities. It can also be used
as a tool for building a bond between the entrepreneur/
company and its customers.
Trade name protection is governed by different
legislation. It may be said that while the objective
function of the trade name is protected by the Federal
Constitution of 1988, the Industrial Property Law
and the Paris Convention, its identification function
is regulated by the Law of Public Registration of
Commercial Companies and the Civil Code.

18

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In terms of jurisprudence, it is currently understood,

for the most part, that the trade name protection is
limited to the territory of the State where the articles
of incorporation were filed. It is possible to extend the

protection to other States through specific application or

opening of branches.
As far as defense of a trade name in court, especially
when there are conflicts with other distinctive signs,
the Brazilian courts usually apply trademark protection
principles to decide the case. The first principle is with
respect to anteriority, meaning that, as a rule, the oldest
prevails, since there is a likelihood of confusion or
undue association in the market.
Thus, the protection of a trade name prevents the use and
subsequent registration, by a third party, of a domain
name or trademark that reproduces or imitates the
characteristic expression of the trade name. Likewise,
once a trademark has been registered it cannot be used,
even partially, in a trade name, especially in connection
with similar activities.

09.

GEOGRAPHIC INDICATIONS

The TRIPS (Trade-Related Aspects of Intellectual

Property Rights), in turn, defines them as indications
which identify a good as originating in the territory of
a Member, a region or locality in that territory, where
a given quality, reputation or other characteristic of the
good is essentially attributable to its geographical origin.
Law No. 9279/96 devoted a specific section to geographic
indications. When dealing with geographic indications,
it innovated when subdividing them into two separate
institutes: indication of origin and designation of origin.
Indication of origin is understood as the geographical
name of a country, city, region or locality within its
territory, which has become known as a center of
extraction, production or manufacture of a specific
product or for providing a particular service.
On the other hand, designation of origin refers to the
geographical name of a country, city, region or locality

within its territory, which designates a product or service

whose qualities or characteristics are due exclusively or
essentially to the geographical environment, including
natural and human factors (know-how or savoir faire).
Associations, institutes and representative legal entities
of the community entitled to exclusive use of the
geographical name established in the respective region
may request registration of geographic indications.
When it comes to a foreign geographical name already
recognized as a geographical indication in its country of
origin or recognized by competent international entities
or bodies, the registration must be requested by the holder
of the right of the geographic indication.
The law also extends the protection to the graphical or
figurative representation of the geographical indication,
as well as to the geographical representation of the
country, city, region or locality within its territory whose
name is a geographic indication.
The expressions cachaa and cachaa do Brasil, for
example, are geographic indications referring to a traditional
distilled beverage made from sugarcane produced in Brazil,
and its use is restricted to producers in the country.

19 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

According to the World Intellectual Property

Organization (WIPO), a geographic indication is a sign
used on goods that have a specific geographical origin
and possess qualities or a reputation that are due to that
place of origin.

10.

INTELLECTUAL PROPERTY RIGHTS IN ADVERTISING

The Brazilian advertising market is closely tied to various
issues related to the intellectual property.
Conselho Nacional de Autorregulamentao Publicitria
(CONAR - National Council for Self-Regulation in
Advertising) is a non-governmental organization which
seeks to promote freedom of expression in advertising
and defends constitutional prerogatives involving
commercial advertising in Brazil.

20

LAW

Among CONARs basic precepts it can be highlighted

the respect for the principle of fair competition. The
Advertising Self-Regulation Code of CONAR addresses
issues such as comparative advertising and determines
that commercials may not infringe trademarks or
copyrights of third parties, even those used outside of
Brazil, which are recognizably related to or associated
with another advertiser.

The ethical standards of conduct set by the Advertising

Self-Regulation Code are observed by advertisers,
advertising agencies, media outlets (radio and TV) and
other communications professionals.
Advertising slogans or phrases intended to highlight the
quality of products, goods or services, or to attract the
attention of consumers or users, are protected in Brazil
basically through the repression of unfair competition
through the provisions of the Industrial Property Law
No. 9279/96, since registration does not exist.
On the other hand, advertising slogans or phrases that
have originality and are directly associated with an
advertising campaign can be protected by the Copyright
Act as part of the audiovisual work of an advertising
film. Advertising phrases that are merely descriptive or
consistently used commercially have no protection.

11.

DOMAIN NAMES

The Brazilian Network Information Center (NIC.br) is

a non-profit entity responsible for the implementation,
promotion, execution and regulation of domain name
registration in Brazil.
In general terms, the registration of domain names works
according to the principle of first come, first serve,
i.e., the first one to register the domain name with the
competent authority is assured the right.
However, a domain name cannot contain a distinctive
sign from a third party (such as trademark, trade name,
company name, etc.), which could mislead or confuse
the public. Thus, the registration of a trademark under
the INPI, as well as prior adoption of a trade name and/or
company name, are considered decisive in domain name
registration, as it is widely recognized in Brazilian courts.
In addition to the possibility of filing a lawsuit in order
to cease the use and cancel or assign a domain name that
violates a distinctive sign, holders of a violated right

can file a complaint with the Administrative System for

Internet Conflicts related to domain names under .br
(SACI-Adm), implemented in October 2010 by NIC.br
as an alternative means for resolving disputes about .br
domain names.
SACI-Adm was inspired by the Uniform Domain Name
Dispute Resolution Process (UDPR) of the WIPO
Arbitration and Mediation Center (which provides
dispute resolution services related to second-level
domain names, such as: .com, .net, .org., etc.), but it has
some significant differences, as in the case of elements
that would characterize bad faith.
The following institutions are currently accredited by
SACI-Adm: the Brazil-Canada Chamber of Commerce,
the WIPO Arbitration and Mediation Center and the
Domain Name Dispute Resolution Chamber (CASDND: Cmara de Soluo de Disputas Relativas a
Nomes de Domnio), linked to the Brazilian Intellectual
Property Association (ABPI: Associao Brasileira da
Propriedade Intelectual).
Since it is a relatively quick procedure, which takes
around 90 (ninety) days, as well as cheap, especially
when compared to a lawsuit, an increasingly larger
number of cases are submitted to the Domain Name
Dispute Resolution System (CASD-ND).

21 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

A domain name is a sign that identifies an entrepreneur or

establishment in a virtual environment. In this information
society era, domain names are undoubtedly one of the most
important distinctive signs of an entrepreneur, in that the
Internet is one of the main tools for dissemination and, at
the same time, the main research source of most consumers.

12.

INTELLECTUAL PROPERTY RIGHTS ON THE INTERNET

22

LAW

After more than two years of discussion in the Chamber

of Deputies, followed by an extensive discussion with
civil society on the Internet itself, Law No. 12965/2014,
known as the Internet Civil Framework, was enacted
on April 23, 2014.

into this complex virtual world that governs, influences

and drives personal relationships and business, permitting
direct dialogue between companies and consumers.

Considering that, according to a survey conducted by the

IBGE (Instituto Brasileiro de Geografia e Estatstica Brazilian Institute of Geography and Statistics), there are
more than 83 million Internet users in Brazil (with an
annual average growth rate of 6%), this law was created
to establish principles, assurances, rights and duties for
using the World Wide Web in the country.

This derives from the objectives expressed in the Law,

especially promotion of the right of universal access
to the Internet, access to information, knowledge and
participation in cultural life and in the management of
public affairs; access to innovation and promotion of the
widespread dissemination of new technologies and use
and access models; and adherence to open technology
standards that enable communication, accessibility and
interoperability between applications and databases.

Thus, Law No. 12965/2014 sets forth the duties and

responsibilities required of service providers and defines
the role to be played by the government in relation to
development of the social potential of the network, and,
of course, to regulate the rights and assurances of users.

Hence, this law protects personality rights, particularly

the right to privacy, intimacy, honor and control over
ones image, as well as intellectual property rights in the
digital environment, so that, as far as possible, legitimate
freedom of expression is not impeded.

The object of the law, therefore, is protection of personal

data, e-commerce, cybercrime, intellectual property,
Internet governance and regulation of the activities of
public centers that provide Internet access, among others.

Regarding the protection of intellectual property on

the Internet, since copyrights were intentionally not
included in Law No. 12965/2014, the notice and
take system prevails, as per the precedents from the
Superior Court of Justice, wherein upon notification
that the content violates a copyright or related rights the
provider must preemptively remove it within 24 hours,
until having sufficient time to examine the veracity of
the complainants allegations. If confirmed, the provider

The law recognizes Internet access as essential for

exercising ones rights as a citizen, in accordance with the
digital environment in which all citizens are inexorably
included. We are necessarily and irrevocably inserted

Regarding to violations of industrial property rights, the

notice and take down system does not apply, but rather
Law No. 12965/2014 which establishes that Internet
application service providers (i.e., those that offer
services such as social networks, blogs, videos, etc.)
are not, a priori, civilly liable for damages arising from
content generated by third parties. There is not, therefore,
strict liability in relation to providers.

However, a provider may be civilly liable for damages

arising from content generated by third parties if, after a
specific court order (preferably stating the URL address),
measures were not taken, within the framework and
technical limits of its service, and within the stipulated
deadline, to make the infringing content unavailable.
In such cases, the provider, in accordance with the court
order, must make the content unavailable and, as a rule,
notify the user responsible for the content providing the
reason and information as to why it was blocked, with
information to enable due legal process and full defense
in court.

23 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

must permanently delete the content or, if unfounded,

free access may be restored, under penalty of being joint
and severally liable to the author for damages resulting
from the omission that occurred.

13.

LICENSING AND TECHNOLOGY TRANSFER

The main objectives of the legislation and industrial and
tax policies applicable to technology transfer are:

headquartered in Brazil as consideration for the

technology received from foreign companies.

Effective transfer of technological knowledge

from foreign companies to Brazilian companies
(recipients of technology), providing them with
access to and ascendancy in markets through the
use of better methods and more modern production
systems and the fabrication of new products;

In Brazil, financial transactions for the remittance

of royalties abroad, arising from technology transfer
agreements or related agreements, will only be authorized
by the Banco Central do Brasil (Central Bank of Brazil)
through presentation of the contract registration certificate
issued by the INPI.

Technological training focused exclusively on

the production of products (consumer goods), the
so-called processing industry and basic industry
(infrastructure); and

Brazilian companies can sign contracts with foreign

companies involving, for example, the acquisition of
technological knowledge to build a new facilities. After
months of negotiations followed by the signing of the
contract and start of the technology transfer, which often
means visits from foreign technicians, the Brazilian
company (technology recipient) may be prevented from
remitting payments to the foreign company (technology
supplier) if the respective contract has not been registered
with the INPI.

24

LAW

Creation of jobs and wealth for the country,

resulting from the technological training and
investment of foreign companies in Brazil, as
well as through the access of domestic companies
to foreign markets, thus boosting exports and
competitiveness in the international market.
Law No. 9279/96 establishes that the INPI will register
contracts involving transfer of technology, exploitation
of patents, license of use of trademarks, franchising
and the like, so that they produce effects upon third
parties. The registration of such contracts is necessary to
enable the remittance of royalties abroad by companies

The registration of a technology transfer agreement, with

the INPI, takes approximately 30-60 (thirty to sixty)
days, provided its purpose and legal formalities comply
with the requirements of INPI.
Unlike the United States, in Brazil it is not allowed to
register contracts that involve Technology Licensing

There are several other clauses and conditions that must

be observed in these contracts in order to register them
with the INPI, such as period of validity, percentage limit

of royalty payments, legalization of the document at the

Brazilian Consulate in the technology suppliers country
of origin, among other requirements.
Therefore, compliance to the terms and conditions of the
contract for its effective registration with the INPI is a
preventive measure to avoid setbacks and delays in the
remittance of royalty payments abroad.

25 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

where, after termination of the contract, the receiving

company ceases to use the licensed technology and
acquired technical knowledge. That is, the transfer is only
permitted for the limited time stipulated in the contract.

14.

TRADE SECRET AND PROTECTION

OF CLASSIFIED INFORMATION
Brazilian law protects trade secrets (industrial or
commercial), defined as matters related to the business of
a company, whose disclosure or revelation would cause
harm of some kind (financial or moral) to the holder. The
main examples are: names or lists of customers or special
suppliers, and their addresses, future sales or advertising
campaigns, designs, price calculations, forecasts for tenders,
not yet published balance sheets, hires, new models, etc.

26

LAW

Trade secret violation, understood as the dissemination,

exploitation and use, without authorization, of knowledge,
information or confidential data, is considered a crime of
unfair competition.

On the other hand, Law No. 10603/2002 regulates

protection against unfair commercial use of information
related to the results of tests or other undisclosed data
submitted to the competent authorities as a condition for
approval or maintenance of a registration for the sale of
pharmaceuticals for veterinary use, fertilizers, pesticides
and their components and so on.
In this way, the authorities may not, within the period
prescribed by law, use for the benefit of third parties
privileged information received and may not disclose it
except when necessary to protect the public.

15.

LITIGATION INFRINGEMENT OF
INTELLECTUAL PROPERTY RIGHTS

On the one hand, invalidation proceedings address the

validity of intellectual property rights (trademarks,
patents, industrial designs, etc.) granted by the INPI.
These lawsuits are processed by the Federal Court and
are brought against the INPI itself and against the holder
of the right granted by the INPI.
On the other hand, there are infringement proceedings,
in which the holder of intellectual property rights seeks
to stop a third party from using the trademark, patent,
industrial design, domain names, copyrights, etc., in
violation of the right granted by the INPI. These lawsuits
are processed by the State Court and are filed exclusively
against offenders.
Both the Federal and State Courts of the main Brazilian
states have judges who are specialized in intellectual
property, especially at the higher court level (federal
and state courts of justice). This has proven beneficial

to the intellectual property rights protection system in

Brazil because judicial decisions have been handed
down more speedily, as well as with significantly
enhanced quality.
Brazilian law allows for a number of provisional
measures, such as interim injunctions for search and
seizure or anticipated production of evidence, involving
any urgent situation that cannot wait until the end of
the judicial proceedings. The new Brazilian Code of
Civil Procedure, which will come into effect in 2016,
consolidates and reaffirms the importance of these
measures of a provisional nature.
On the other hand, there are also criminal measures at the
disposal of holders of intellectual property rights being
violated by third parties. The infringement of intellectual
property rights is considered a crime in Brazil and penal
measures may be used primarily for situations related to
piracy and counterfeiting of products and for other more
serious offenses involving the offenders obvious bad
faith, for example.

27 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

The legal protection of intellectual property rights in Brazil

in the civil field basically occurs in two different ways.

16.

ANTI-PIRACY FRAMEWORK
The repression to the acts of piracy and counterfeiting of
products in Brazil is mainly achieved by implementing
the following measures:
Inspection of goods and merchandise imported
from other countries, whose entry into the country,
either by air, sea or land, is subject to examination by
Customs and the Brazilian Federal Revenue Service;
Inspections and investigations conducted by local
government bodies (such as those performed
by the Civil and Federal Police, the Public
Prosecutors Office etc.) concerning the legality of
goods and merchandise, whether imported from
other countries or manufactured in Brazil; and

LAW

Inspections undertaken by the intellectual property

rights holders themselves, both in relation to
products imported from other countries as well as
counterfeit goods and merchandise manufactured
in Brazil, by adopting legal measures of a civil or
criminal nature.
Worth noting is the creation of the National Directory for
Combating Trademark Counterfeiting, a project by INPI
and the National Anti Piracy Council, contained in the
National Anti Piracy Plan.

28

The goal of the directory is to provide support to institutions

directly responsible for tackling counterfeiting and anti-

competitive practices, especially the Brazilian Internal

Revenue Service and Federal Police, through the provision
(electronically) by the INPI of its trademark database and
registry of attorneys/representatives, in order to facilitate
fiscal and administrative procedures in cases where public
officials find evidence of counterfeit products.
Thus, upon finding proof of counterfeit products, the
customs authorities, after checking the directory, will
be able to temporarily seize the products and contact
the attorneys of the holder of the violated trademark,
to inform them of the provisional seizure and giving
them the opportunity to file for definitive seizure of
the products.
On the other hand, it has been noted, especially in
recent years, that the Brazilian authorities, especially the
Judiciary, have been more attentive to the harmful effects
of piracy and product counterfeiting in Brazil, especially
since it has been found that piracy and counterfeiting
of products provide sources of funds for criminal
organizations and for committing other crimes.
For this reason, we have noted the increasing use of
temporary injunctions, such as search and seizure of
counterfeit products, and final judgment ordering the abstain
from manufacture, use and sale of counterfeit products,
without prejudice to the filing of compensation requests by
intellectual property holders, which has been occurring on
a larger scale and with financial penalties at higher levels.

17.

APPLICABLE LEGISLATION

Constitution of the Federative Republic of Brazil

of 1998;
Cultural Incentive Law (Rouanet Law Law
No. 8313/1991);
Industrial Property Law (Law No. 9279/1996);
Plant Varieties Protection Law (Law
9456/1997 and Decree No. 2366/1997);

No.

Computer Program Law (Law No. 9609/1998);

Copyright Law (Law No. 9610/1998);
Civil Code (Law No. 10406/2002 Book II, Title
IV, Chapter II);
Law of Protection of Undisclosed Information
Submitted for Approval to Commercialize
Products (Law No. 10603/2002);
Law on Incentives for Innovation and Scientific
and Technological Research in the Production
Environment (Law No. 10973/2004);

Law on incentives for manufacturers of Digital

TV equipment and semiconductor electronic
components and on intellectual property protection
of layout-designs (topographies) of integrated
circuits (Law No. 11484/2007);
Customs Regulations (Decree No. 6759/2009);
Law for the Prevention and Repression of
Infractions against the Economic Order (Law No.
12529/2011); and
Internet Civil Framework (Law No. 12965/2014).

INTERNATIONAL
Paris Convention for the Protection of Industrial
Property (Decree No. 1263/1994);
Berne Convention for the Protection of Literary
and Artistic Works (Decree No. 75699/1975);
Patent Cooperation Treaty - PCT (Decree No.
81742/1978); and
Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) (Decree No.
1355/1994).

29 HOW TO PROTECT INTELLECTUAL PROPERTY IN BRAZIL

NATIONAL

18.

ABOUT OUR SPONSOR

Founded in 1989, Ricci Propriedade Intelectual is
an office specialized in Intellectual Property. With
headquarters in the city of So Paulo and correspondents
in every country of the world, it provides comprehensive
advisory and consultancy services in the consultive,
administrative and litigation-related realms, for national
and international clients, including major economic
groups and multinationals, from a wide range of sectors.

Working proactively, Ricci Propriedade Intelectual

provides its customers with solutions and strategies that
enable decision-making, the safe development of their
business and the achievement of effective results, using
intellectual property as a tool that adds value and boosts
competitiveness.
For more information, please contact:

Ricci Propriedade Intelectual has approximately 45

experienced and specialized professionals, including
lawyers, trademark agents and patent agents, supported by
a highly qualified multifunctional team that is constantly
upgrading itself. Professionals from Ricci Propriedade
Intelectual are actively involved in the dissemination,
development and consolidation of Intellectual Property
in Brazil, actively operating in the most important
associations in Brazil and from around the world.

30

LAW

What sets Ricci Propriedade Intelectual apart from others

is its provision of topnotch, high quality services for the
protection and defense of the intellectual property rights
of our clients, while adhering to the highest ethical and
technical standards and applying a fair and competitive
fees policy.

Av. Indianpolis, 2504

So Paulo/SP Brazil CEP 04062-002
Phone: +55 (11) 5581-5707
Fax: +55 (11) 2276-9864
Email: ricci@riccipi.com.br
Website: www.riccipi.com.br

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