Intellectual Property 2018

Brazil
Felipe Barreto Veiga, Danniel Barbosa Rodrigues
and Paula Ajzen
BVA – Barreto Veiga e Advogados

LATIN LAWYER
THE BUSINESS L AW RESOURCE FOR LATIN AMERICA

Reference
 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados
Intellectual Property 2018
Brazil
Felipe Barreto Veiga, Danniel Barbosa Rodrigues and Paula Ajzen
BVA – Barreto Veiga e Advogados
1 What are the novelty or inventiveness requirements for a
patent to be granted?
Under the patent regime, the Brazilian Intellectual Property
Law (Law No. 9279/1996 – BIPL) allows the granting of utility
models (UM) and patent of invention (PI).
In order to be endowed with the privilege of a PI, the law
determines that the invention needs to fulfil three prerequisites:
novelty, inventive step and industrial application.
On the other hand, to have a UM granted, the law deter-
mines three other requisites: novelty, inventive act and indus-
trial application.
To prove that a given object does not fulfil the novelty
requirement, it suffices to provide a single prior art docu-
ment that reveals the exact same object claimed in a pat-
ent application.
However, to prove that a given object does not include an
inventive step or inventive act, usually two or more documents
are required.
The doctrine says that the requisite of inventive act is similar
to the inventive step, but appreciated on a smaller scale. In other
words, the inventive act would be somewhere on the scale
between the novelty requisite and the inventive step requisite.
It is worth stating that our practice reveals that it is far easier to
obtain a UM than a PI.
According to Antonio Abrantes, a senior patent examiner at
INPI (the Brazilian Patent and Trademark Office), the inven-
tive step requisite in Brazil is harder to achieve than in Europe.
Proof of that, says Abrantes, are the following patent applica-
tions, which were granted by the EPO as patent of inven-
tion while their Brazilian counterparts were granted as utility
models: MU8003210 / EP1020327; MU7903354 EP1078349;
MU7903356 / EP0943255; MU7903357 / EP1056526;
MU7802870 / EP0952936; MU7802869 / EP1028854;
MU7802859 / EP1018577B1; MU7903329 / EP0963874B1;
MU7703227 / EP0981285B1; MU7402488/ EP0717680B1;
MU8003213 / EP1227742B1; MU8003219 / EP1149208B1;
MU7703298 / EP0810690B1; MU7802883 / EP0898329B1;
MU7802885 / EP0902506B1; MU7703296 / EP0837543B1;
MU8003231 / EP1218129B1; MU8103417 / EP1166873B1;
MU8003226 / EP1231955B1; MU8103425 / EP1353579B1.
2 Last verified on Tuesday 5th June 2018
2 What are the criteria for considering whether an invention is
obvious in view of prior art?
According to the INPI’s examination guidelines, the basic
criteria involves three different steps:
• identifying the closest prior art document;
• determining the differences between the prior art and the
invention; and
• determining whether the same problem solved by the
invention would be solved based on the knowledge derived
from the closest prior art.
When two or more prior art documents are combined, their
combination will be considered proof of lack of inventive step if:
• a person skilled in the art would be prone to combine both
techniques when facing the same problem that is being
targeted by the invention; and
• the prior art documents are comprised by the same techni-
cal area.
3 What are the different types of patent protection that can
be obtained in your country, for example, utility, design
database? How do these types of patent protection differ?
• Patent of invention – PI: covers any kind of invention,
including products, parts, processes, embedded software,
chemical formula, new materials or a combination of these;
• Utility model – UM: according to article 9 of the BIPL,
applicable only to objects with a new form or arrangement
involving inventive act resulting on improvements on their
use or manufacture;
• Industrial design – ID: according to article 95 of the BIPL,
the industrial design is an ornamental plastic form of an
object having an original marking that may be manufactured
on a large scale by the industry; and,
• Designs of integrated circuits: integrated circuit design
involves the creation of electronic components onto a piece
of silicon; the protection conceived by the law rests upon a
set of 2D drawings and photographs of the circuit.
BVA – Barreto Veiga e Advogados Brazil – Intellectual Property 2018
4 What is the duration of patent rights protection?
According to article 40 of BIPL, PIs have 20 years from the
filing date and UMs just 15 years. However, there is an excep-
tion to the rule: in the event that INPI takes more than 10 years
to grant the PI or over eight years to grant the UM, the assignee
is rewarded with 10 years of duration after the granting date
for the PI and seven years for the UM (in fact, the exception is
becoming the rule, considering that INPI’s backlog is roughly
11 years for PIs).
Note that “filing date” means the date of application filing in
Brazil for Paris Union Convention applications, or the interna-
tional filing date, for PCT applications.
The duration of protection of ID registration is 10 years after
the filing date, plus three successive periods of five years each
(upon payment and request of the assignee).
5 If an invention is conceived in your country, does the first
filing have to be made there?
No. There is no such provision in Brazilian law.
6 What are the foreign filing licence requirements if an
application conceived in your country is filed first in another?
There are no foreign filing licence requirements in Brazil for
this situation.
7 Are business and computer methods patentable? If yes,
what are the standards for determining this? If no, are
other technological areas that are not eligible for patent
protection?
According to the provisions of article 10, items III and V of
the Brazilian Industrial Property Law, business methods and
computer programs per se are regarded neither as inventions nor
as utility models, and, therefore, are not patentable. Computer
programs are protected by a specific, copyright-based law,
Federal Law No. 9,609 of 1998 (the Brazilian Software Law).
Regarding software inventions, which combine process and
product characteristics with computer program steps, accord-
ing to the BPTO’s criteria, if the inventions are novel, solve
a technical problem encountered in the art and result in new
technical effect, they may be patentable, providing that they are
not limited to a business method. In other words, if the system is
known and only the method is novel or if the inventive activity
involved results only from the used method, it is considered a
business method and the application will not be allowed.
Besides business methods and computer programs per
se, article 10 of the BIPL defines additional matters that are
regarded neither as inventions nor as utility models. The list
includes, inter alia:
• discoveries, scientific theories and mathematical methods;
purely abstract concepts;
• schemes, plans, principles or methods for commerce,
accounting, financing, education, advertising, lottery
and control;
• literary, architectural, artistic and scientific works or any
aesthetic creation;
• the presentation of information; rules of games;
• operating or surgical techniques and therapeutic or diagnos-
tic methods, for use on the human or animal body; and
Last verified on Tuesday 5th June 2018
• natural living beings, in whole or in part, and biological
material, including the genome or germ plasma of any
natural living being, when found in nature or isolated
therefrom, and natural biological processes.
Non-patentable matters are listed in article 18 of the BIPL, as
follows: that which is contrary to morality, good custom and
public security, order and health; substances, matter, mixtures,
elements or products of any kind, as well as the modification of
their physical-chemical properties and the respective processes
of obtaining or modifying them, when they result from the
transformation of the atomic nucleus; and living beings, in
whole or in part, except transgenic microorganisms meeting
the patentability requirements of novelty, inventive step and
industrial application and that are not mere discoveries.
8 Summarise the current level and nature of patent litigation in
your country? Are there particular litigation trends related to
specific industries, such as the pharmaceutical, payments,
data analytics?
Item III, article 10 of BIPL does not allow the granting of “busi-
ness methods”, as well computer programs per se, as mentioned
on Item V – which means the programming code itself.
According to the letter of the law, case law and Resolution
No. 158/2016 from INPI, business methods are not patentable
in Brazil in any shape or form; on the other hand, computer
programs may be patentable in Brazil as long as they fulfil at
least one of the following requisites:
A) the software is an embedded software, such as the software
comprising a welding robot. Note that, in such case, only the
combination of object + software (welding robot + software)
is the patentable matter; or
B) the software may be described as a more comprehensive
method, which may be executed by different means, one
of them being the software itself. For example, think about
a method of guiding vehicles inside an open pit mine, this
method being able to be planned and performed by means
of clipboards, pens and paper, or by means of desktop
running software. In such case, the broad method, which
comprises the execution by means of software, is patentable.
All non-patentable matter is listed in articles 10 and 18 of
the BIPL:
10.The following are not considered to be inventions or utility models:
I. discoveries, scientific theories and mathematical methods;
II. purely abstract conceptions;
III. commercial, accounting, financial, educational, advertising, raffling
and inspection schemes, plans, principles or methods;
IV. literary, architectural, artistic and scientific works, or any aesthetic
creation;
V. computer programs per se;
VI. presentation of information;
VII. rules of games;
VIII. surgical techniques and methods, as well as therapeutic or
diagnostic methods, for application to human or animal body; and
IX. all or part of natural living beings and biological materials found in
nature, even if isolated therefrom, including the genome or germoplasm
of any natural living being, and the natural biological processes.
18 The following are not patentable:
I. anything contrary to morals, standards of respectability and public
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 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados
security, order and health;
II. substances, materials, mixtures, elements or products of any kind, as
well as the modification of their physical-chemical properties and the
respective processes for obtainment or modification, when resulting from
the transformation of the atomic nucleus; and
II. all or part of living beings, except transgenic microorganisms that
satisfy the three requirements of patentability – novelty, inventive step
and industrial application – provided for in article 8 and that are not
mere discoveries.
For the purposes of this Law, transgenic microorganisms are
organisms, except for all or part of plants or animals, that express,
by means of direct human intervention in their genetic com-
position, a characteristic normally not attainable by the species
under natural conditions.
From the list above, we would like to emphasise the prohibi-
tion of patents regarding rules for games (the famous Monopoly
game, for instance, would not be considered as a patent in Brazil)
and patents regarding therapeutic methods – although the last
is not allowed, INPI is willing to grant patents with Swiss-type
claims, as long as they do not bring the word “treatment” into
the claims.
9 What remedies are available for patent holders? For example,
are monetary damages and injunctive relief available? If
monetary damages are available, are such damages based on
a reasonable royalty, lost profits or other provisions?
In Brazil, patent infringement has both civil and criminal
consequences. For the holder, civil remedies include: a court
order (preliminary injunction or sentence) for the immediate
cessation of the infringing act, search and seizures, and dam-
age compensation.
As for the establishment of the damages for any infringement
of IP right, BIPL states that the criteria shall be the most favour-
able criterion to the infringed party, as follows.
The penalty in Brazil as defined by the BIPL is three months
to one year’s detention or a monetary fine, but considering that
in Brazil criminal penalties of fewer than three years may always
be converted in alternative measures (such as the payment of
staple food baskets to the needy people, performing social work
and so forth) criminal penalties are not as effective as civil out-
comes in Brazil when dealing with IP rights.
10 Is your country considering major changes to its patent
system?
On the other hand, the BPTO is implementing measures to
speed up the analysis of patent applications, such as hiring more
examiners and entering into cooperation agreements with other
foreign Trademark and Patent Offices, including for the Patent
Prosecution Highway (PPH) purposes (agreements were signed
with USPTO, Japan Patent Office, China Patent Office and
others with the UK Intellectual Property Office and Denmark
Patent Office are being discussed).
However, INPI and Sebrae recently implemented a bill to
facilitate the insertion of innovative products and services devel-
oped by small and medium-sized Brazilian enterprises seeking
the patent granting in the shortest time possible.
The priority exam is focused on innovative products
and services developed by ICTs – science and technol-
ogy institutions.
4 Last verified on Tuesday 5th June 2018
11 Does your country recognise the “patent exhaustion”
doctrine, and, if so, how does the application of the doctrine
compare with those in other jurisdictions?
Yes, as seen in article 43, Item IV of BIPL. An exception to the
rule is established by article 42: the right of preventing third
parties contributing to [the infringement] is assigned to the
patent assignee. At the same time, article 185 establishes as a
federal crime providing a component comprising a patented
product, so long as the component induces the exploitation of
the patent’s object.
Although it is not a solid consent (we do not know of a sin-
gle piece of case law to justify either position), part of the doc-
trine considers as contributory infringement a situation where
someone buys a patented object and replaces a part compris-
ing this object with a tailor-made part ordered by the original
owner of the good.
12 Is your country a signatory to or likely to join the Madrid
Protocol and if so, when? Is it a signatory to the TRIPs
agreement?
Even though Brazil is not yet a signatory to the Madrid
Protocol, the negotiations for entry as a member are ongoing.
On 9 April 2017, the Council of Ministers of the Brazilian
Board of Foreign Trade (CAMEX) set up a meeting in which
Brazilian adhesion to the Madrid Protocol was duly recom-
mended. The Minister’s recent proposal will be sent to the Civil
House of the Presidency, which is responsible for sending the
text to the National Congress for assessment and approval.
However, Brazil has been a signatory to the TRIPs agree-
ment since 1994, when the Brazilian Congress approved the
agreement, which was promulgated by the presidency on the
same year.
13 Do your trademark clients make use of the Andean
Community’s or Mercosur’s regional trademark systems and if
so, how?
Regional communities have not established a unified trademark
registration system effective to all member countries, hence the
protection of a trademark in such countries, by Brazilian clients,
must be done through independent fillings in each country.
14 What is the duration of trademark rights protection?
Article 133 of BPLI provides that trademark rights protection
is 10 years from the granting date, which is renewable for equal
successive periods, indefinitely. The renewal of a trademark
registration must be requested by the holder during the final
year of the term with payment of a renewal fee to INPI.
15 What rules govern the use of the registered trademark
symbol, ®, or the unregistered trademark symbol, ™ , in your
country?
In accordance with the article 5, Item D, of the Paris
Convention for the Protection of Industrial Property (CUP),
to which Brazil is a signatory, there is no obligation to use the
registered trademark symbol, ®, or any other sign or men-
tion of the trademark registration in order to recognise the
holder’s rights.
BVA – Barreto Veiga e Advogados Brazil – Intellectual Property 2018
However, Brazilian law establishes that the registered trade-
mark symbol, ®, can be used just for those who effectively have
a registered trademark, and the ™ symbol is applicable to those
trademarks that are still awaiting INPI’s decision.
If a pending trademark holder uses it with the registered
trademark symbol, however, this practice can be characterised as
a crime of unfair competition under BIPL, as a fake claim, if an
effective damage could be proven by a third party regarding this
dishonest use.
16 What are the main problems affecting trademark owners
in your country, and what strategies have successfully
addressed these problems?
These are trademark infringement, the manufacturing and
importation of counterfeit goods and, lastly, the negative media
buzz by consumers and digital influencers, which has increased
considerably over the past two years.
While the first and two are well known by trademark own-
ers, having appropriate legal remedies and favourable doctrine
in most cases, the last is a recent development of the complex
Brazilian internet environment, anyone with a smartphone can
be considered as an influencer, therefore giving opinions regard-
ing brands, products and services, even if they are sponsored by
their competitors.
This is a challenge for brand owners in Brazil and abroad
but, owing to our practice on trademark crisis control, we have
understood that legal procedures shall be the last-case option for
these matters. The brand owner shall develop a relationship with
the influencer, not necessarily paying for the brand, but includ-
ing creative marketing and CRM strategies. If the influencer
goes further, there are appropriate legal remedies to stop the
spread of any kind of damages or fake allegations.
Counterfeiting advertising in social media is also a trend in
Brazil – understandably mostly in the fashion industry. With a
thriving e-commerce based on social media, several brands are
facing widespread counterfeit product advertising (and not user
content) on social networks and search engines. The way to deal
with this is to send warning notices to the owners of such social
media and search engines, which also benefit from the revenues
of this counterfeit chain.
Also, in general, either at ports or airports, Brazilian customs
authorities assist in preventing the entry of counterfeit products
into the territory.
17 Does a trademark licence have to be recorded in your country
to be effective?
According to article 140 of BIPL, to be public and consequently
enforceable against third parties, trademark licensing agreements
shall be recorded with the INPI, even by national parties that are
able to publicise the licence on Brazilian territory.
The licence shall be valid from the effective date between
the signatory parties, but against third parties licence rights are
opposable from the date of publication in the Official Gazette
– which shall take 60 days from the date of filing, in a regu-
lar procedure.
Registering the licensing agreement is also requirement to
send royalties paid under the agreement abroad (together with
registering it and the remittance transactions with the Brazilian
Central Bank – BACEN) and to permit tax deduction of part of
the royalties remitted. However, there are some requirements to
Last verified on Tuesday 5th June 2018
be fulfilled by the recording parties in order to have the agree-
ment duly registered. See question 26 for more information.
18 What strategies have been successful in combating
counterfeiting in your country?
Border measures with customs, including in Brazilian ports.
Several companies have used lawyers and marketers to train
customs authorities to recognise counterfeit products, which has
considerably reduced the entry of some types of illegal goods
into the country.
Also, in October 2004, the Brazilian Justice Ministry set up
the National Council of Piracy Combat (CNCP), an inde-
pendent official body with autonomy to deal with and set out
regulations for combatting counterfeiting, as well executing the
National Borders Plan, with a focus on the Brazil–Paraguay bor-
der. However, CNPC activity has decreased in recent years.
Recently (March of 2018) the Brazilian House of
Representatives approved a draft bill (Projeto de Lei 1.530/15)
that establishes the cassation of the driver’s license that is arrested
with counterfeiting, as well as the cancelation of the taxpayer’s
ID (CNPJ) of companies that transport, distribute, store or mar-
ket goods that are the product of smuggling, theft, misappropria-
tion or counterfeiting. The bill has been presented to the senate
for a vote.
Furthermore, companies shall ramp up their efforts in moni-
toring trademarks on internet, e-commerce platforms and social
media, since consumers are changing the way they buy counter-
feit goods, mostly because the internet is a more convenient and
safe way to do so.
19 Does a foreign company’s website infringing trademarks
constitute use of a trademark in your country?
Assuming that the website does not market products and
services in Brazil or offer them to Brazilian costumers, there is
no use of trademark in the country, even if access to the website
originated from Brazil.
20 Do you recommend that companies register their domain
name in your jurisdiction if they do business there?
We do recommend this. Although “top” domain names value
have considerably decreased in recent years owing to new .br
domain categories (such as adv.br for lawyers and law firms),
rendering cybersquatting a less fruitful illegal practice, we have
always recommended that companies register domain names
related to the most important trademarks from their portfolio.
The costs of registration and maintenance for domain names
are very low, unless the company is not duly established in Brazil
while offering products or services in the country – in this case,
the company must appoint a legal representative to hold the
domain name registration, which can sometimes be expensive,
depending on the risks to the client’s activity.
It is worth stating that Brazil uses the first come, first served
principle on domain name registration, so if another trademark
holder, applicant or user registers a domain name composed
totally or partially of a third-party trademark, if the registration
was made in good faith, the registration shall be considered valid
for all purposes.
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 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados
21 Briefly highlight any particularities of your trademark law that
is not well understood by foreigners doing business in your
country.
In contrast to countries where it is possible to make a reference
to competitors’ trademarks in comparative advertising – such as
the US – according to articles 131 and 132 of BIPL, the owner
of a trademark can enforce rights against a competitor using its
trademarks in advertising.
However, the Brazilian Self-Regulation Code on Advertising
authorises the use of comparative advertising if its main purpose
is consumer clarification and protection, with simple and verifi-
able comparison with objective aspects and as regards intellectual
property rules against unfair competition.
Given this contradiction between IP law and advertising
self-regulation, court decisions regarding comparative adver-
tising are still expected to facilitate a solid and comprehen-
sive understanding.
22 What are the key legal issues to be considered when
registering a trademark in your country?
A comprehensive search is always recommended due to INPI’s
backlog in trademark application examination. Considering the
rights prior to application principle (article 129 of BIPL), the
search shall also include internet searches.
Applicants must request trademark registration in accordance
with the scope of their activity or business, which applies to
companies and natural persons, with, however, the recommenda-
tion that applications cover future activities.
Pharmaceutical trademarks must comply with the ANVISA’s
sanitary norms, depending on the type of medication.
23 Can a multi-class trademark application be filed in your
country?
In contrast to some countries and community systems, such as
the European Community, Brazilian trademark law does not
accept multi-class applications. Therefore, applicants shall file a
separate trademark application for each form of trademark in
each class.
However, Brazilian participation in the Madrid Protocol is
set to change this, enabling multi-class applications in Brazil.
INPI, which has already started to restructure in order to accede
to the Madrid Protocol, estimates that this will occur in 2019.
24 Does your country allow trademark opposition proceedings?
Can the deadline to file an opposition be extended?
Article 158 of BIPL provides for opposition proceedings. After
the publication of the trademark application in the Official
Gazette, which normally takes three weeks, a 60-day deadline
will ensue for third parties with a legitimate interest to file
oppositions against it.
INPI will publish the opposition within approximately five
months and the applicant will have the same deadline to present
its defence against the opposition.
Regarding deadline extensions, article 221 determines that
extensions can be granted by INPI in cases of fair reason (ie,
when the party has lost the deadline not owing to his or her
own negligence or action).
Also, INPI recently published Resolution No. 178/2017,
6 Last verified on Tuesday 5th June 2018
which provides that deadline extension requests shall be filed up
to the fifth day after the deadline and it also regulates systems
that fail to meet the petition filing deadline with INPI.
25 Does your country have a judicial or other governmental
process to restrict the importation of counterfeit goods? If so,
give details.
In order to combat the entry of counterfeit goods into Brazil,
article 198 of BIPL, the Customs Regulation (RA/2009) and
the TRIPS agreement, to which Brazil is a signatory party,
are the main legal instruments that have been set up and used
by the government to allow the seizure of counterfeit goods
by customs authorities, either at ports or airports, refining a
procedure that will culminate in the destruction of all seized
goods, in general.
Although there are several cooperation initiatives between
trademark owners and authorities to prevent the entry of
counterfeit products, there is no a specific judicial procedure or
system for this practice, as seen in other emergent countries.
26 What are the key issues to be considered when licensing
trademark use rights in your country? Does your jurisdiction
invalidate trademarks based on “naked licences” (ie, where
the licensor does not impose quality standards on the goods
and services associated with the licensed trademark)?
As said above, there are some requirements to be fulfilled by the
parties in order to have the agreement duly registered with the
INPI, producing effects against third parties (see question 17),
which was published in April 2017, Normative Instruction (NI)
No. 70/2017.
This NI changed a material aspect of agreement registration
examinations: in the past, INPI extensively limited the amount
of royalties to be remitted as regards tax laws on the remit-
tance of capital, often imposing control over or questioning the
interests of the parties under the agreement. Also, the document
known as an explicative letter is no longer mandatory.
On the other hand, the NI established that even sub-licence
agreements shall be registered with the INPI to produce effects
against third parties, given that the sub-licensor is able to sub-
license the trademark.
To send royalties abroad, parties must wait for the regis-
tration being granted via publication in the Official Gazette.
Until that time, payments shall be retained in Brazil. With the
granting publication, parties shall register the agreement with
the Brazilian Central Bank, BACEN, also registering the pay-
ment transaction (via wire transfer or other form) under the
Registration of Financial Transaction. The entire procedure with
BACEN shall take a period of seven to 15 business days.
There are no restrictions on or even mentions of naked
licences in Brazilian IP laws.
27 Are there any limits on the scope of licensee indemnification
relating to workmanship, material, or design of any products,
articles, logos, characters, etc, bearing the licensed
trademark?
Under Brazilian laws there is no specific limitation of licensee
indemnification in regard to such matters. The Civil Code,
which regulates and sets out the main contractual principles
applied in private relations in trademark licence agreements,
BVA – Barreto Veiga e Advogados Brazil – Intellectual Property 2018
gives the contracting parties the freedom to set forth all the
limits of the agreement, with a view to fairness.
28 Under what circumstances may a trademark licence be
deemed a franchise arrangement under the laws of your
country?
Franchise activities are regulated by Law No. 8.955/1994, the
Brazilian Franchise Law, which appoints the Letter of Franchise
Offer as a mandatory document to be presented by any and all
franchise companies before the signing of a franchise agreement.
The Letter of Franchise Offer shall contain information
regarding the status of the trademarks, patents or other registra-
ble IP rights comprising the franchise business, along brief infor-
mation regarding know-how and other technologies.
But it is the franchise agreement that will bring in provisions
regarding IP licensing, including trademarks and their limitations
of use in connection with the franchise business.
29 Are there any conditions or limitations on the ability of a
trademark licensor to enforce or terminate a trademark
licence agreement?
Any conditions or limitations must be agreed by the parties
under the terms of the contract, once under Brazilian Law the
parties a free establish such terms, which must the fairness of
contract under penalty of nullity.
30 Under what circumstances may a trademark be legally
deemed “abandoned” under the laws of your country where
there is no obvious decision by the trademark owner to
abandon the trademark?
In accordance with the BIPL, the first circumstance in which
a trademark can be legally deemed abandoned is in failing to
pay its final official fees, which can be done by the trademark
holder on two different deadlines legally authorised under
article 162. The first (ordinary deadline) is 60 days upon the
publication of the granting on the Official Gazette, and the
second (extraordinary deadline) in 30 days upon the final date of
the ordinary deadline.
When the official final fees are paid on time, the trademark
may be deemed abandoned if its holder does not request its
renewal during the final year (ordinary deadline) of the rights
protection term (10 years from the application granting date)
under the payment of the correspondent renewal fees. If the
holder fails to lodge a renewal request and make a fee payment
by the ordinary deadline, the BIPL grants an extraordinary dead-
line that has to be complied with within six months of the date
of the ordinary deadline.
Lastly, article 143 of such Law prescribes that if the use of
the trademark has not been initiated in Brazil after five years
from the granting date, or if the use has been interrupted for
the same period or, also, the trademark has been used with a
modification to its original distinctive sign as filed and granted,
any persons with a legitimate interest may file a forfeiture under
INPI, requesting such trademark to be deemed as abandoned.
Last verified on Tuesday 5th June 2018
31 Is copyright registration recommended for local packaging
and marketing materials?
Even though the registration of copyright to ensure protection
in Brazilian territory is not mandatory, proceeding with registra-
tion is recommended in order to demonstrate authorship and
the creation date of the material in case it is needed as a proof
against third-party violation.
Depending on the kind of packaging, registration with the
INPI is recommended to proceed as an industrial design, com-
mon for cosmetics and fragrances. For marketing materials, the
National Library Foundation in Rio de Janeiro, is the appropri-
ate registrar.
32 What is the duration of copyright protection?
As in most jurisdictions, Brazilian Copyright Law sets forth
two kinds of protection: moral rights, which do not expire, and
economic rights, valid for a period of 70 years from 1 January of
the year following the author’s death. However, there are some
exceptions, with two worth mentioning being:
• for audio-visuals and pictures, the deadline it is counted from
1 January after its divulgation; and
• for anonymous or under pseudonym works, it is counted
from 1 January after the publication.
33 Are there any recognised legislative safe harbours that
protect internet service providers in your country from
liability for the activities of its users? If so, what are the
requirements or processes Internet providers must follow to
claim safe harbour?
Along with freedom of expression and other constitutional
guarantees, the Brazilian Internet Act (Law No. 12.965/2015)
states that internet service providers (ISP) cannot be liable for
damages resulting from user content without the issuance of
a valid court order to remove the content. Therefore, liability
from ISPs arises after an eventual failure to comply with a court
order. The exception comes from sexual shaming, which shall be
removed after notification of the party in question.
The Internet Act protects and fosters the fundamental rights
and freedom for the internet. However, in 2016, Brazil was in
the news for judicial decisions regarding the temporary tak-
ing down of social networks because of their owners failing to
hand over information requested in a criminal procedure – the
Act recognises the need to guarantee protection of privacy and
personal data (article 3), although article 12 establishes sanctions
for non-compliance, including temporary suspension of data
processing activities.
It is worth stating that, in 2015, the Superior Tribunal de
Justiça (STJ) the highest appellate for non-constitutional ques-
tions in Brazil, awarded a decision in a leading case discussing
the liability of ISPs for user-generated content, ruling that they
cannot be held liable for copyright violations committed by
third parties if they do not profit from the violation (Special
Appeal No. 1512647/MG).
This year, the Federal Supreme Court (STF) announced that
it will decide on the constitutionality of article 19 of the Civil
Internet Framework, which requires a prior and specific court
order for the exclusion of third-party content by ISPs – only
in the event the court order is not complied, the ISP shall be
considered liable for the content.
7
 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados
The lawsuit was recognised as having general repercussions
and has Facebook, Inc as defendant (Extraordinary Appeal No.
RE 1037396).
34 Does your country recognise the ‘first sale’ doctrine for
purposes of limiting copyright enforcement?
The Brazilian Copyright Law does not have provisions
regarding the “first sale”, although it is broadly accepted in
doctrine, contrasting with articles 29 (previous authorisation for
distribution of goods containing copyrights) and 49 (validity of
copyrights assignment).
However, excessive attempts to extend exclusive rights
relating to the work may be considered abusive – for example,
preventing the buyer of a book or disk from reselling it in the
market or acting against the fair use of the copyright, according
to article 46 of the Brazilian Copyright Law.
35 What is the standard of contributory copyright infringement
in your country?
Under civil liability and damage principles in the Brazilian legal
framework, civil sanctions regarding copyright infringement are
applicable to all agents involved in the violation who have the
intent of gaining revenue or benefit.
Regarding contributory infringement practices, with the
ascendance of the e-commerce market and internet advertising
in several platforms, marketplaces have been set up and had been
widely used in Brazil for marketing third parties’ products.
Most of these marketplaces have weak intellectual property
surveillance, making them an appropriate environment for copy-
right infringement. As seen in our practice, well-known mar-
ketplaces focused on individual sellers and craftsmen are being
used to market (using their automatic broad advertising services)
counterfeit goods with copyright violations.
Music, cinema, TV, toys and the gaming industry are the
most affected. According to article 104 of Brazilian Copyright
Law, in view of the natural duty of control over owner and
authorship of the trade goods in the website, these companies,
depending on the circumstances of the case, may have a joint
liability for the infringing acts of its members.
36 What are the criminal sanctions for intellectual property
infringements?
The legal provisions that typify intellectual property infringe-
ments are found in the Brazilian Industrial Law (Law No.
9.279/1996), Copyright Law (Law No. 9.610/1998), the
Software Law (Law No. 9.609/1998) and the Criminal Code.
The sanctions are provided in accordance with the type and
degree of the crime, varying from prison penalties, to a fine and
seizure of counterfeited goods.
37 Does your country recognise intellectual or industrial property
protection in databases?
Databases are considered as copyrights. Non-copyrightable
databases – including legitimate access or use of third-party
databases – shall be protected under trade secret.
8 Last verified on Tuesday 5th June 2018
38 Does your country recognise a right of publicity?
Name, image (including voice) and likeness are considered rights
of publicity, being defined as inalienable and non-transferable
rights, according to Brazilian law. Any commercial exploitation
must be previously authorised.
However, the STJ decided in ADIn 4.815 that, according to
the Constitution and articles 20 and 21 of the Civil Code, previ-
ous authorisation is not necessary for the publication of biogra-
phies, based on the constitutional right of freedom of speech.
In cases of violation of privacy, honour and image of biogra-
phies, damages and seizure shall serve as legal remedies.
39 Is alternative dispute resolution used in your country to
resolve intellectual property disputes? What are the benefits
or dangers of using ADR for IP disputes?
Mediation and arbitration may be used in Brazil under mutual
agreement and for civil settlement – which shall involve crimi-
nal aspects, such as negotiations to avoid criminal procedures.
However, criminal claims may not be solved through arbitration.
The new Brazilian Civil Procedure Code recognises arbi-
tration as a valid means of resolving a civil dispute, with the
same level of power as a civil court decision – in fact, Law No.
9.307/1996 already recognised that.
In Brazil, arbitration disputes may be determined by an arbi-
tration clause, stated on a previous agreement between parties
(between buyer and seller, for instance) or right after both par-
ties are aware of the dispute and agree to hand over the conflict
to experts, instead of handing the decision to a regular judge.
If previously agreed by both parties, the arbitration may even
use the IP law of another country to determine the dispute’s
resolution. Further, the law also allows for the parties to pick a
foreign arbitrator, as long as this decision is mutually agreed by
both parties.
The benefits of arbitration are far more appealing than using
conventional court measures: arbitrators shall have in-depth
knowledge on the field of the dispute, while judges in Brazil
rarely see IP disputes in their courts, not that IP is not a man-
datory field of study in most Brazilian law schools. Second,
arbitration decisions in Brazil are much faster than regular court
decisions, which may take between three and eight years or
more, depending on their complexity.
40 Can intellectual property rights be recorded with certain
government agencies in your country, like Customs or the
Border Control, to help prevent the import or export of
counterfeit goods?
With reference to question 18, the CNCP together with INPI
developed a database to optimise and allow the holders of
trademark applications or registrations with INPI to send alerts
on the combat of counterfeit goods, which are made available
to the public agents of the Customs and Border Control. The
database can be filed with comparative examples, such as image
files of the original counterfeit goods.
However, there is a common, but informal, practice among
lawyers involved in border measures, which is to leave free
samples of original goods and counterfeited goods with the
Customs Authorities in order to enhance officials’ familiarity
with the products and increase the chances of spotting counter-
feit goods.
BVA – Barreto Veiga e Advogados Brazil – Intellectual Property 2018
41 Describe any recent major developments or anticipated
changes in your intellectual property law.
The BIPL was published in 1996 and its text remained roughly
the same until the present date, with the exception of the
following minor amendments: Item VII of article 43 (regarding
exceptions to the patent protection ground); articles 229, 229-A
and 229-B (regarding transitory measurements); and 229-C (the
infamous previous consent of ANVISA for patent examination)
all dated 2001.
Some legislative proposals being studied in Congress regard-
ing patent rights are:
• LP 5402/2013 regarding extension ad flexibility of compul-
sory licence measures for matters of public interest (such as
antiretroviral drugs); and
• LP 5557/2016 proposes minor amendments on article 18 da
of L. 9.279, regarding transgenic micro-organisms.
Other recent and emergent material developments were
described in question 8 (the agreement entered by and between
INPI and ANVISA with views to exam of patentability req-
uisites on pharma applications), question 12 (regarding Brazil’s
forthcoming entrance into the Madrid Protocol) and question
17 (Normative Instruction No. 70/2017, regarding transfer of
technology and examination of licensing agreements by INPI).
Also, according to Brazilian Intellectual Property Association
(ABPI), a lot of effort is being put into discussing the following
topics on Brazilian Congress agenda:
• Reduction of patent and trademark concession time and
INPI strengthening, through the effective structural and
financial autonomy of the entity, promoting modernisation
of its structure, hiring and training of personnel and reduc-
tion of deadlines for analysis and granting of industrial rights.
• Improvement of the Innovation Law and the Industrial
Property Law by means of (i) regulation for research and
development activities and patent application arising from
biodiversity and genetic resources; (ii) facilitation of credit
for innovation, by means of accounting valuation of indus-
trial assets; (iii) programmes to encourage innovation and
patent application of “green” technologies; (iv) and enabling
the registration of sensorially perceptible marks.
• Updating the law for the certification of Technology Transfer
Contracts and reviewing the tax treatment of revenues and
payments related thereto, as well as redefining the perfor-
mance of INPI in this area.
42 Describe any significant recent court decisions in your
country relating to intellectual property.
The Brazilian Superior Court of Justice (STJ) has judged
some unprecedented appeals that gave new parameters for the
interpretation and application for intellectual property laws
in Brazil.
In a unanimous decision, the Court recognised the legality
of INPI intervention in terms of a technology transfer agree-
ment. In this case (Special Appeal – REsp 1.200.528/RJ), in
which INPI ordered the registration of the agreement for use
of a trademark to substantial changes in some of the agree-
ment’s clauses, the contracting parties required the annulment
of INPI’s decision under the argument of illegal intervention
against the freedom to contract. This decision contrasts with
Last verified on Tuesday 5th June 2018
INPI’s Normative Instruction No. 70/2017, published in April,
as explained in question 26.
Other important decision given by the STJ was on Special
Appeal – REsp 1.559.264/RJ, related to public executions of
copyrights on streaming platforms and its interpretation by the
Brazilian Central Office for the Collection and Distribution of
Rights (ECAD), entity responsible for the collection and distri-
bution arising from public executions.
The lawsuit was brought by ECAD against a major private
telco. First and second instances has decided by the illegality of
ECAD collections on streaming; however, the STJ has consid-
ered it legal, recognising that streaming services shall pay rights
to ECAD even before its execution by the user.
Another important recent decision last year was Procedure
08012.002673/2007-51 where the Administrative Council for
Economic Defence (CADE, the Brazilian Antitrust Authority)
decided that there was an abuse of rights performed by car parts
manufacturers against their small competitors.
In short, said manufacturers hold several industrial designs
applications covering auto parts, while small competitors were
selling reproductions of the same parts in the market at much
more affordable prices. The manufacturers went to court to
request preliminary injunction measures against the small
competitor. The matter was brought before CADE in 2007
and, more recently, in June 2016, the authority concluded that,
although the manufacturer had a legitimate right to hold intel-
lectual property related to auto parts, said companies had abused
their rights to create monopolies in each of their segments.
Last, but not least, a global healthcare company claimed the
ceasing of production by a Brazilian generics manufacturer,
alleging that it would be infringing its rights from patents with
INPI examination pending. In a surprising non-unanimous
decision given by the Specialised Chamber of Corporate Law
of São Paulo State Courts (AI 2205036-49.2016.8.26.0000), the
Brazilian manufacturer was ordered to cease production based
on a patent pending, against the wishes of the BIPL, which
determines that rights over patents can be exercised only after
the patent has been granted.
43 Are there any licence agreement formalities for intellectual
property that must be observed?
For registration purposes, the agreement and the Power of
Attorney must be notarised and/or apostilled (please note that
Hague Convention has recently entered into effect in Brazil) if
signed outside Brazil. If signed in Brazil, INPI requires the signa-
ture of two witnesses, for which we recommend notarisation.
Also, if the original document is not in Portuguese, simple
translations must be presented.
44 Does your country have a cybercrime law that provides for
civil remedies in connection with either computer intrusions
or theft of intellectual property? Are other causes of
action or remedies available in your jurisdiction as regards
unauthorised computer intrusion and misappropriation of
electronic information?
Law No. 12.737/2012, popularly known as Law Carolina
Dieckmann (a famous Brazilian actress who was the victim of
an intrusion and misappropriation that led to the enactment of
this law), establishes as a crime any intrusion into computers or
9
 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados
digital equipment, whether or not connected to the internet, or
installing any kind of vulnerabilities, as well editing, obtaining
or deleting information without authorisation – but only if the
perpetrator had to “violate a security mechanism”.
The same law established that it is also a crime to obtain
private communication content, confidential information or
trade secrets with the aim of obtaining certain advantages, with
the penalty being prison detention plus a fine. If the perpetrator
discloses, commercialises or transfers the illegal content to any
third party, the penalty increases.
According to articles 186 and 927 of Brazilian Civil Code, if
the victim incurs losses arising from the crime, a civil procedure
seeking damages can lead to compensation. Also, in our under-
standing, if the crime was perpetrated by a competitor or any
third party seeking to harm the victim’s reputation in commerce,
we can also apply article 209 of BIPL, which provides for dam-
age arising from IP violation and unfair competition acts not
listed in the letter of law.
45 Briefly describe the tax considerations for intellectual
property in your jurisdiction including any incentives.
Brazilian Tax Law establishes tax deductibility limits applicable
to royalties arising from IP licensing agreements, equivalent to
1–5 per cent of the net income obtained from the sale of the
products or services with the licensed IP (ie, trademarks, patents,
designs and copyright).
If the licensor is a foreign party and royalties shall be remit-
ted, the payments are subject to withholding income tax at a
15–25 per cent rate. In cases involving Brazil and parties from
countries with a convention to avoid double taxation, tax ben-
efits may apply.
Royalties are also subject to CIDE levies at a rate of 10 per
cent PIS/COFINS (9.25 per cent) and municipal taxes (ranging
from 2 per cent to 5 per cent).
10 Last verified on Tuesday 5th June 2018
46 Briefly describe the intersection between intellectual
property and competition law in your jurisdiction.
IP and competition walk side by side in Brazilian laws. BIPL set
forth provisions regarding unfair competition whether related
or not to violation of intellectual property, with a view to, in
short, protect consumers and IP owners from acts to confuse, of
similarity and false allegations.
On the other hand, we have an Antitrust Law (Law No.
12.529/2011), which established in its article 36 that any abu-
sive exploitation or exercise of IP rights shall be considered a
violation of the economic order, with CADE responsible for
analysing and deciding competition matter on its duty of super-
vising, preventing and detecting abuses of economic power. For
example, CADE has powers to grant compulsory licence of IP
rights when the infraction by the agent is related to the use of
that right. An overlap between intellectual property and compe-
tition law is rarely seen in Brazil when compared to developed
countries, owing to IP disputes. Indeed, in 2015 we had the first
(and last) case regarding “essential patents” decided by CADE,
involving two foreign telecommunications companies.
Other important administrative decision given by CADE
was regarding abuse of rights performed by car parts manufac-
turers against their competitors. See question 42.
47 Briefly explain the implications of a bankruptcy filing under
the laws of your jurisdiction on intellectual property licensed
rights.
There is no specific rule on intellectual property rights, but
agreements shall remain in force in the case of a bankruptcy
decision, unless there is a specific clause related to this, which is
quite common in contracts executed in Brazil.
BVA – Barreto Veiga e Advogados Brazil – Intellectual Property 2018

Felipe Barreto Veiga Danniel Barbosa Rodrigues

BVA – Barreto Veiga BVA – Barreto Veiga
e Advogados e Advogados

Felipe is an intellectual property specialist and corporate lawyer, Danniel is an IP lawyer, with expertise acquired at large and
with solid skills in contract law and relevant experience in renowned Brazilian law firms, where he assisted both national
providing legal advice and representation for domestic and and foreign major companies from several industries.
foreign companies. Felipe is also the managing partner of BVA Working directly with trademarks, copyrights, franchises and
since its foundation and has been recognised in 2017 by Leaders advertising Law, Danniel has an excellent background regarding
League as one of the leading lawyers for technology and digital strategies for intellectual property asset protection, from consult-
services in Brazil. ing to prosecution and enforcement matters.
He was founding partner of a well-known Brazilian law Bachelor of Laws from University Paulista (UNIP), with
firm ranked in Who’s Who Legal and Chambers Latin America. extension course in Intellectual Property from the World
Felipe has also worked at some of the biggest law firms in Intellectual Property Organization – WIPO and in Civil
Brazil, such as Veirano Advogados, Mattos Filho Advogados and Procedure from the Complexo Jurídico Damásio de Jesus.
Demarest Advogados, assisting companies from several industries In 2016, he completed the Advanced Summer School on
and countries. Intellectual Property and Transfer of Technology in Cape Town,
Bachelor of Laws from Mackenzie University, Felipe is also South Africa, offered by WIPO. Danniel is also an LLC candi-
an LLM Candidate at University of São Paulo. date in corporate law at Insper.
Felipe is a member with the International Trademark
Association – INTA, International Bar Association, the American
Chamber of Commerce, the Legal Committee of Italian
Chamber of Commerce in Brazil, and a member of Group of
Business Leaders (LIDE Futuro).
Co-author of the books Brazilian Legal Trends in Technology
and Intellectual Property and Panorama Giuridico Degli Investimenti
in Brasile, published with sponsorship from the Italian gov-
ernment and from the Brazilian Embassy in Rome, together
with recognised Brazilian jurists, such as Vicente Bagnoli, Ada
Pellegrini Grinover and Newton de Lucca.
Felipe also contributed to the bestseller Nada Easy (Ed.
Gente), from Tallis Gomes, founder of Easy Taxi, considered
one of the top Brazilian digital entrepreneurs and #1 by MIT
Technology Review.

Last verified on Tuesday 5th June 2018 11

 Intellectual Property 2018 – Brazil BVA – Barreto Veiga e Advogados

Paula Ajzen
BVA – Barreto Veiga
e Advogados
Paula is an experienced lawyer, with focus on corporate agree-
ments and intellectual property, having extensive background in
the advertising and entertainment industries.
Her expertise comes from its broad experience in renowned
Brazilian law firms and IP boutiques, as well from its role as legal
counsel at WPP Company subsidiary in Brazil.
She holds a Bachelor of Laws from Mackenzie University
and a PGDip in Intellectual Property from Fundação
Getulio Vargas.

BVA – Barreto Veiga e Advogados

Felipe Barreto Veiga Rua Gumercindo Saraiva, 96, Jardim Europa

felipe@bvalaw.com.br 01449-070
São Paulo – SP
Danniel Barbosa Rodrigues Brazil
danniel@bvalaw.com.br
Tel: +55 11 40811900
www.bvalaw.com.br
Paula Ajzen
paula@bvalaw.com.br
12 Last verified on Tuesday 5th June 2018