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Enforcement of IPRs in Brazil


Enforcement of IPRs
Brazil, due to its geographical position, is unsurprisingly a key country in the international route of counterfeit products in South America. Most counterfeits available in Brazil come from Asia, Paraguay, and Argentina.
Clothes, accessories, footwear, electronics, and fragrances most often face counterfeiting and piracy in Brazil.
They are as follows:
  • The Law No. 9610/98, the Law No. 9610/98;
  • Section 195, IP Law, Section 176 of the IP Law;
  • The Plant Variety Protection Law No. 9,456/97; and
  • Section 122, IP Law.
In addition to the general legal framework for enforcement, the Code of Civil Procedure, the Code of Criminal Procedure, and the Criminal Code also make up the Brazilian enforcement system, which provides the rights holders with the legal tools to register, protect, and enforce their rights.
Patents, Utility Models, Trademarks, Copyright, Designs, Trade Secrets, and Confidential Information are the different types of IPRs protected by IPR enforcement in Brazil.
The following are recommended in Brazil to ensure proper enforcement of IPRs:
  • Joining industry associations may be useful to combine efforts and develop good practices based on the experience of each member. They are also useful to develop joint awareness campaigns addressed to the users and clients. Brazilian industry associations are playing an important role in improving the fight against piracy.
  • Rio de Janeiro (1st instance) and Sao Paulo (2nd instance) have courts specialized in Intellectual Property; therefore, it is recommended to litigate before them. When the judicial competence laws allow you to choose, try to sue in these two states.
  • Sometimes sending a ‘Cease-and-Desist’ letter is sufficient to stop the infringement, especially where the infringer is a small retailer.
Yes - The limitation period is usually for 05 years following the occurrence of the infringing act as per article 225 of the IP law. However, in certain cases, judges do understand that the statute of limitations begins when the IP owner becomes aware of the infringement act. However, another doctrinal line considers that IP infringement is a constant act, so the statute of limitations period is continually renewed while the illicit acts are practised, which extends the deadline for filing a lawsuit.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Other civil remedies in Brazil include publication of the judgement or notification.
On an average, a criminal case takes around 03 years, whereas civil cases take over 04 years.
Civil litigation is costlier than criminal proceedings.
A) Responsible Authority - State Courts
B) Imprisonment Term - Patents: 03 months to 01 year; Industrial Designs: 03 months to 01 year; Trademarks: 03 months to 01 year; Copyright: 03 months to 01 year, but In the event of partial or total reproduction or distribution of protected works for commercial purposes, as well as import, export, sale, storage, or offer for commercial purposes of these works, the penalty is increased to 01- 04 years; Software Copyright: 06 months to 02 years
C) Monetary Fine - Fines are usually determined as per the facts and circumstances of each case. Also, the court may offer alternative penalties, such as payment of lower amounts or rendering of community service.
Mandatory community service
The BIPL does not have any provision related to ADR. Arbitration proceedings are governed by the Arbitration Law. Although arbitration is not commonly used in trademark and patent infringement cases, the parties may agree to arbitration instead of resorting to the courts. The possible benefits of using arbitration include the comparative speed of proceedings and their confidentiality.
The remedies available under border control measures (customs) in Brazil include seizure and destruction of goods.
The applicant must bear the costs of customs intervention during enforcement.
If an IP rights holder abuses the enforcement measures in custom recordal of intellectual property rights, the customs may cease to take any action in furtherance of the request made to intercept infringing goods.
Criminal prosecutions are usually considered as the most cost-effective method of enforcement available for the IPR holders. However, the penalties established by Brazilian Law are generally very low.
Yes, please note the following points of reference:
  • Offences against IP are rarely punishable with more than 01 year of imprisonment, according to the Law, and in most cases, the courts sentence offenders to a few months’ imprisonment or a fine.
  • In civil litigation, non-resident claimants are required to pay a deposit of between 10% and 20% of the damages claimed.
  • IPR holders cannot register their rights before the customs authorities; therefore, the effectiveness of customs as an enforcement tool is relatively low and relies in many cases on the reputation of the trademark. Additionally, border measures are mainly focused on trademarks and geographical indications/appellations of origin, almost to the exclusion of the rest of IPRs.
  • Except for Sao Paulo and Rio de Janeiro, where there are courts specialized in IP infringement, the level of specialization of courts is rather low.