The IP Guide to...Brazil

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As one of the founding members of the Paris Convention in 1884, Brazil possesses some of the most developed IP laws in Latin America. Attilio Gorini and Rodrigo Borge Carneiro, partners at Dannemann Siemsen Advogados, reveal more

Brazil is often mistakenly still regarded as a ‘developing’ country, yet it is ranked ninth in the world’s economy for its gross national product, exceeding that of any other South American country. These misconceptions also apply to what is a sophisticated framework of IP legislation. Each Latin American country has its own set of laws and there is no common IP regulatory system for members of the South Cone Market (Brazil, Argentina, Uruguay, Paraguay and Chile).

Even before its accession to the Paris Convention Union, Brazil had specific laws dealing with IP. However, it wasn’t until 1970 that the National Industrial Property Institute (INPI) was created – the Brazilian governmental office responsible
for the formulation and implementation of industrial property laws.

The work of the INPI
INPI, also known as the Brazilian Patent and Trademark Offi ce, deals with patent and trademark registration and examines contracts for the transfer of technology, while copyright protection is supervised by the Ministry of Culture.

Under the INPI, patent protection in the territory is governed by absolute novelty, inventive activity (meaning it should not be obvious to a person skilled in the art). According to the present Brazilian Industrial Property Law, which came into force in May 1996, protection lasts 20 years for patents and 15 years for utility models from the date of filing. The law determines that inventions contrary to moral, good customs and public security, order and health are not patentable; neither are inventions dealing with manipulation of the atomic nucleus and inventions involving living beings (with the exception of transgenic micro-organisms).

Current patents laws have also reintroduced the patentability of pharmaceutical products, which was eliminated in 1945, putting Brazil back in line with the TRIPs agreement. The INPI has also been working with the Brazilian Meteorological Office to develop a centre to receive biological material relating to patent applications. To date, Brazilian companies wishing to patent this sort of material have had to send it to centres in the US and Europe to be processed. The first such centre in Brazil is due to open in 2008.

Trading on a name
Trademarks are also registered with the INPI, are valid for a term of 10 years counted from the date of its grant and are renewable for equal and successive periods thereafter. The owner is guaranteed exclusive use thereof throughout the national territory. The registrant of, or applicant for, a trademark is also guaranteed the right to assign their registration or application for registration, license its use and care for its material integrity or reputation.

Brazil also affords protection to a special group of marks known as ‘high reputation marks’. Once issued, the ‘high reputation’ declaration is valid for five years and protects the marks in all classes of the International Classification System. The registrant can request the declaration during an opposition or administrative nullity procedure against third parties.

Brazil also affords protection to a special group of marks known as 'high reputation marks'. Once issued, the 'high reputation' declaration is valid for five years...

Domain names with the country code .br are registered on a first-come, first-served basis, by the entity Registro.br. There is no examination and the grant is automatic if the desired name is available and the fees are paid. Yet in 2006, Amazon.com, the book and product seller and one of the most visited sites on the Internet was unsuccessful in its attempt to close the domain name of a domestic company’s site at Amazon.com.br.

Judge Edson Ferreira da Silva ruled that the American-based giant was not famous in Brazil when the Brazilian banking company registered the domain name and as a result, it can be argued that the Brazilian company was not involved in unfair competition. Additionally, the domestic company works in a different field to Amazon (it specialises in Internet banking), and Amazon.com is unavailable in Brazil at present so consumers cannot get confused.

There have been some equally highprofile cases in Brazil relating to breaches in the Copyright Act. Arguably the most famous image in Brazil – the image of Christ the Redeemer, overlooking Rio de Janeiro – is currently the subject of a major dispute. The heiress to sculptor Paul Landowski, one of the creators of the monument, wants to charge for every reproduction. Experts are predicting it to be one of the biggest copyright disputes in Brazilian legal history.

The right to creation
In Brazil, the copyright owner has the exclusive right to use, publish and reproduce the work in any form. The protection is granted regardless of any formality or registration, which is optional in Brazil. The general term of protection is 70 years from 1 January of the year following the death of the author. Audiovisual and photographic works are protected for 70 years from 1 January of the year following their release.

The protection system for software related IP in Brazil is similar to that granted to literary works by the copyright laws and connected provisions in Brazil, with some differences as established by Law 9,609. The protection of the rights associated to the software is assured for a period of 50 years, counting from 1 January of the year following its publication or, if this is unavailable, its creation. Registration is not a requisite for protection and the rights granted for nationals are assured to foreigners domiciled abroad, provided the software’s country of origin grants (to Brazilian and foreign citizens domiciled in Brazil) equivalent rights. The rights granted include the exclusive right to authorise or forbid licensing.

The rules over trade secrets are standard. It is considered to be a crime of unfair competition to disclose, exploit or use, without authorisation, confidential knowledge, information or data usable in the industry, commerce or the providing of services, which was accessed by means of a contractual or employment relationship, even after the termination of the contract or when obtained directly or indirectly by illicit means or fraud. Exceptions are information or data which are of public knowledge or which are obvious to a person skilled in the art. The penalty for crimes of unfair competition is three months to a year imprisonment, or a hefty fine.

Breaking the rules
The violation of IP Rights in Brazil comes under the banners of civil torts and criminal acts and may be pursued in one or both legal spheres. This allows a wide range of choice for IP owners to enforce their rights.

The laws also provide for a wide range of temporary restraining and search and seizure orders that can be obtained quickly and may remain valid until a final decision on the merits of the court action. In some states there are Specialised Courts and Police Precincts to deal with IP-related matters and raising public awareness, as the need for such protection grows each year. Brazil has been removed from the US’s Priority watch list as a result of the ongoing efforts to reduce piracy.

Despite the fact that just three law firms handle approximately 80% of IP work in Brazil, the country’s legal system in relation to IP is in line with international standards and is set to accede to the Madrid Protocol by the end of 2007.

Brazil's IP Timeline

1809
First law passed dealing with patentability of inventions First legal registration of trademarks

1884
Joined the Paris Convention

1887
Enacted its first IP law

1922
Acceded to the Berne Convention for the protection of literary and artistic works

1929-1934
Member of the Madrid Agreement for the registration of trademarks

1959
Joined the Universal Copyright Convention

1970
Created the National industrial Property Institute (INPI)

PRESENT
Part of the Patent Cooperation Treaty and the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations and the TRIPs agreement

This article first appeared in IP Review, issue 19

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