What are the causes of counterfeiting and piracy in Brazil?
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.
Which are the goods that most often face counterfeiting and piracy in Brazil?
Clothes, accessories, footwear, electronics, and fragrances most often face counterfeiting and piracy in Brazil.
Does Brazil have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
What are the specific laws/orders/rules laid down in Brazil for the enforcement of Intellectual Property Rights?
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.
What are the different types of IPRs protected by IPR enforcement in Brazil?
Patents, Utility Models, Trademarks, Copyright, Designs, Trade Secrets, and Confidential Information are the different types of IPRs protected by IPR enforcement in Brazil.
What are the general IPR enforcement obligations in Brazil?
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
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.
Is there any limitation period for filing an infringement action?
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.
Which of the following IPR enforcement channels is/are available in Brazil?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Are civil actions available for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Which of the following types of civil remedies is/are available in Brazil?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Brazil than the ones mentioned above? If yes, then kindly explain in brief.
Other civil remedies in Brazil include publication of the judgement or notification.
What is the approximate timeline of civil litigation related to IPR enforcement in Brazil?
On an average, a criminal case takes around 03 years, whereas civil cases take over 04 years.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
Are there any disadvantages of civil litigation in Brazil? If yes, then kindly give 2-3 points?
Civil litigation is costlier than criminal proceedings.
Is criminal prosecution available in Brazil for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Which is the responsible authority in Brazil corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
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.
Are there any other criminal remedies available in Brazil than the ones mentioned above? If yes, then kindly explain in brief.
Mandatory community service
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
Are there any disadvantages of criminal prosecution in Brazil? If yes, then kindly give 2-3 points?
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
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.
Are border control measures (customs) available in Brazil for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
What are the remedies available under border control measures (customs) in Brazil?
The remedies available under border control measures (customs) in Brazil include seizure and destruction of goods.
Who must bear the costs of customs intervention during enforcement?
The applicant must bear the costs of customs intervention during enforcement.
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
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.
Which are the best practices for enforcement of IPRs in Brazil?
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.
Are there any risks involved in the enforcement of IPRs in Brazil? If yes, then kindly give 2-3 points.
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.