1

2
The American Chamber of Commerce for Brazil, being the largest
Amcham outside the United States is serving its members building
bridges for Brazilian businesses worldwide. Our foreign investment
attraction efforts are a key mission for Amcham. The “How To” guides
published by Amcham Brasil are part of this initiative. With the support
of some of our members and Brazilian States and 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 9th largest economy
of the world, and the 7th largest destination for foreign investment, Brazil
has an intrinsic importance for the global market. More than ever it is a
strategic time for businesses opportunities in Brazil. We welcome you
and hope that the information you are about to read will contribute to your
commercial and investment decisions linked to Brazil.
Deborah Vieitas – CEO, Amcham Brasil

Intellectual property is the sum of the rights of a particular object that allows
its creator, author or inventor to obtain recognition and financial benefit
from it. Protected and assured by law, intellectual property within the
business environment is present in the registration of patents, trademarks,
discoveries, industrial models, protection against unfair competition,
among others. Developed in partnership with Gusmão & Labrunie firm,
this guide aims to provide the reader with basic information about how to
protect intellectual property (IP) in Brazil, going throught the main topics of
the market and its singularities.
José Roberto d’Affonseca Gusmão – Partner, Gusmão & Labrunie
Jacques Labrunie – Partner, Gusmão & Labrunie
 CONTENT
1. INTRODUCTION 05

2. OVERVIEW – LEGISLATION AND BASIC IP RIGHTS 07

3. PATENTS 09

4. INDUSTRIAL DESIGNS 16

5. TRADE AND SERVICE MARKS 20

6. CORPORATE AND TRADE NAMES 26

7. DOMAIN NAMES 27

8. COPYRIGHT 29

9. SOFTWARE 34

10. TRADE SECRETS AND PROTECTION OF CLASSIFIED INFORMATION 35

11. INTELLECTUAL PROPERTY RIGHTS IN ADVERTISING 37

12. INTELLECTUAL PROPERTY ON THE INTERNET 39

13. LICENSING AND TECH TRANSFER 40

14. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS 46

15. NULLITY ACTIONS 49

 1.
INTRODUCTION
The Intellectual Property (IP) legal system is
a key factor to sustain the spinning wheel
of the economy and the evolution of the
contemporary technology-based society.
Technological and cultural development
and, as an undeniable consequence, the
well-being of the humankind are based on
creativity and inventions. Legal systems to
rule intellectual property are built to, on one
hand, foster investments in development, in
exchange for specific exploitation privileges,
and, on the other hand, disclose knowledge
and contribute to the society.
The present brochure is not intended to
exhaust the Brazilian IP legal system. On the
contrary, it invites one to know more about
it, by providing the main paths that can be
followed to secure innovation and knowledge
in a land full of opportunities.
 Agribusiness polo, being the first world producer
of coffee, sugar and orange, as well as the leading
The 9th largest economy exporter of beef and poultry and the second world
in the world and the 6th producer of soybean.
largest destination for
foreign investment.

The most biologically diverse

country in the world and the
second in terms of species
endemism.

Scientific research polo

that fosters innovation in
Universities of the highest
caliber and in research centers
The greatest
implemented in the country by
startup hub in
foreign companies.
Latin America.

According to Millward Bown’s

brand valuation ranking, BrandZ1,
three Brazilian brands were ranked
between the top 15 most valuable
brands of Latin America, including
the top 1.

According to the Brazilian Central Bank Anual

Report 20152 (v. 51), USD 4.7 billion were
remitted to foreign countries as royalties in 2015.
1 http://www.millwardbrown.com/brandz/top-latin-american-brands
2 http://www.bcb.gov.br/pec/boletim/banual2015/rel2015p.pdf. p. 104.
8
 2.
OVERVIEW
LEGISLATION AND BASIC IP RIGHTS
LEGISLATION
INTERNATIONAL TREATIES BRAZILIAN LEGISLATION

Paris Convention for the Federal Constitution

Protection of Industrial Property

Agreement on Trade-Related Aspects of Civil Law

Intellectual Property Rights (TRIPS) Code Nº 10.406/2002

Berne Convention for the Protection of Literary Industrial Property Law

and Artistic Works Nº 9.279/96

Convention on Biological Diversity (CBD) Copyright Law

Nº 9.610/98

Union for the Protection of New Varieties Software Law

of Plants (UPOV) Convention Nº 9.609/98

Patent Cooperation Treaty (PCT) Internet Law

Nº 12.965/2014, regulated by
Decree Nº 8.771/2016

PCT Administrative Instructions Biodiversity Law

Nº 13.123/2015, regulated by
Decree Nº 8.772/2016
Regulations under the PCT Plant Variety Protection Law
Nº 9.456/97
 BASIC IP RIGHTS

PATENTS: Invention or utility model.

Requirements for protection: novelty,
inventiveness and industrial applicability. GEOGRAPHICAL INDICATIONS,
Protected for 20 years (invention) or 15 SOFTWARE, INTEGRATED
years (utility model). CIRCUIT TOPOGRAPHY, TRADE
DRESS and others.

MARKS: Visually perceptible signs
identifying products or services
(non-traditional marks not matching
the visual perception requirement
out of the scope of trademark
protection). Registrations valid for
10 years renewable for unlimited
successive 10-year terms.
DESIGNS: Aesthetic/
ornamental features.
Requirements for protection:
novelty, originality and industrial
applicability. Maximum
protection: 25 years.
COPYRIGHT:
Protection for original
works of the spirit.
Requirements for
protection: originality
and fixation.
Protected for the
lifetime of the author
plus 70 years.
TRADE SECRETS: Protection
under unfair competition. Punitive
rules. Requirements for protection:
secrecy of the information, valuable
information and holders’ efforts to help
information confidential.

The Brazilian Patent and Trademark Office (Instituto Nacional de Propriedade Industrial - INPI) is the authority responsible
for registering patents, industrial designs, marks, geographical indications, software, integrated circuit topography and
IP agreements.

In order to apply for IP rights in Brazil, non-resident naturals or legal persons shall have a registered domicile in the country
or appoint a duly qualified agent domiciled in Brazil, empowered to act as an administrative and legal representative and to
10

receive court summons, such as an IP attorney.

 3.
PATENTS
PATENT PROTECTION: DEFINITION
Type of Industrial Property right that provides protection for an
invention (technical solution for a technical problem) related
to a product, process or use. Right acquired by filing an
application with the INPI.

In Brazil, there are two types of patents: invention patents

and utility model patents

INELIGIBILITY FOR PATENT PROTECTION

1. 2. 3. 4.
Computer Scientific theories, Literary, Rules of games
programs per se mathematical architectural, artistic and commercial,
methods, purely or scientific works financial, or
abstract conceptions educational methods

5. 6.
Surgical techniques/ Living beings
methods and or parts thereof
therapeutic methods (except transgenic
of treatment microorganisms) and/or
biological materials as
found in the nature
7.
However, plant
varieties may be
protected under Plant
Variety Protection Law
(Cultivar Protection)
 UTILITY MODEL – DEFINITION
Utility Model is an object of practical use, or part thereof, that
has a new shape or arrangement and presents a functional
improvement in its use or manufacture. The term of protection for
Utility Models is shorter than the one for Invention Patents and its
patentability requirements are less strict.

MAIN DIFFERENCES BETWEEN THE INVENTION PATENTS

AND UTILITY MODEL PATENTS

INVENTION UTILITY MODEL

20 years from the filing date or 10 15 years from the filing date or 7
Term of protection years from the grant date (whichever years from the grant date (whichever
is longer) is longer)

Objects (devices, apparatus and tools)

What can be protected
Only objects (devices, apparatus and
or part thereof, methods, systems,
manufacturing processes and
tools) or part thereof
chemical compositions

Level of inventiveness Higher Lower

Filing and
Higher Lower
Prosecuting Costs

Prosecution
Longer Faster
Time Frame
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WHY PROTECT AN INVENTION OR UTILITY MODEL UNDER
PATENT LEGAL RULES?

To have exclusive rights over For marketing purposes: the To have all such exclusive rights
the product, process or use, patent holder has exclusive acknowledged by any potential

1.
preventing non-authorized
people or companies from
making, using, selling or
importing it;
2.
rights to economically exploit
the invention for a determined
period of time, obtaining
competitive advantages;
3.
licensees, keeping ownership
rights safe while licensing the
technology embedded in the
Patent to others;

To sell the Patent to others; Because secrecy might not To contribute to the
be an option for protecting the technological development: the
invention: depending on the information publicly disclosed

4. 5. 6.
technology, it is possible to in a patent is a source of
copy it by reverse engineering inspiration to others, enriches
methods; and the state of art and serves as
a basis for further scientific
and technical improvements,
fostering innovation.

MAIN REQUIREMENTS TO OBTAIN PATENT PROTECTION IN BRAZIL

Be new worldwide;

Be inventive from what is publicly known and non-obvious to

someone skilled in the art; and

Be capable of being used, reproduced or made in the industry,

including sectors such as biotechnology and agribusiness.
 HOW TO KNOW IF THE INVENTION OR UTILITY
MODEL IS NOVEL AND INNOVATIVE?
Prior art search is the best way to retrieve documents that may disclose equal or similar
inventions. Patent applications and scientific publications are available to the general public in
specific databases.

IS IT POSSIBLE TO FILE A PATENT EVEN IF THE INVENTION OR UTILITY MODEL

IS ALREADY PUBLICLY DISCLOSED BY THE OWN APPLICANT?
Yes, but the filing must occur within 12 months from the earliest disclosure to the public
(grace period).

IS IT REQUIRED TO DEMONSTRATE THE EXPLOITATION

OF A PATENT IN BRAZIL?
Only in case a third party requests compulsory license grounded in the fact that the patented
product/process is not exploited in Brazil within a three-year period from its grant. Given particular
circumstances, for instance when the manufacture of the patented product is not possible due to
economical restraints, imports are allowed.

PATENT – PROSECUTION PROCESS

Allowance
and Grant

Brazilian filing Allowance

Examination and Grant
(INPI)
Appeal
Applications Examiners may Rejection against the
may come from issue technical Rejection
international Official Actions Definitive
treaties (CUP or (formal and/or
Rejection
PCT) or may be merits objections).
filed directly
before the INPI.
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IS IT POSSIBLE TO PROVIDE SUBSIDY FOR THE EXAMINATION?
Yes, third parties’ observations can be presented at any time until the final decision is taken and
published by the INPI.

INVALIDATION OF THE PATENT

Third parties can file a nullity administrative action before the INPI requesting the invalidation of the
Patent within six months from the granting decision date. After this period, the validity of the Patent
can only be challenged before the competent Judicial Courts.

IS THERE A WAY TO ACCELERATE THE EXAMINATION?

Yes, there are many possibilities for accelerating the examination step:

1 2 3 4

Applicant is 60+ years Third party infrigment Granting of the Green Patent
of the patente patent is a condition Applications
for obtaining - Particular
financial resources Environmental
Friendly Technologies

5 6 7

Particular Patent Prosecution Applicant is a Micro

pharmaceutical Highway Programs Enterprise, Small
products or processes, (PPH) speed up Business or Institution of
equipment and examination for Science and Technology
materials important for applications which have
public health already been granted in
other countries
 ADDITIONAL FACTS:
The term of the patent cannot
be extended. However, in cases
of Invention Patents, 10 years of
protection after grant are guaranteed
by Law if the exam takes too long.
In case of inventions derived from
Brazilian biodiversity or associated
traditional knowledge, care must be
taken. Particular proceedings may apply
before the Genetic Assets Management
Council (Conselho de Gestão do
Patrimônio Genético – CGen).
16
Patent applications regarding
pharmaceutical products or processes
must be previously allowed by the
National Agency for Sanitary Vigilance
(Agência Nacional de Vigilância
Sanitária - ANVISA) before being sent
to the INPI for technical examination.
Maintenance fees must be paid
from the beginning of the third year
until the expiration of the patent.
PLEASE NOTE THAT:

1. Although therapeutic methods of treatment are not considered inventions in Brazil, there
are possibilities to protect some of the subject matter of interest (e.g. “Swiss-type”
claims are accepted);

2. Although the biotech field may have some restrictions for invention protection, such
as the whole or part of natural living beings, except transgenic microorganisms, many
embodiments can be protected by patents (e.g. unnatural nucleic acid constructions)
and, in turn, may cover the technological development as a whole;

3. Although plants and parts thereof, even if transgenic, are not eligible for patent
protection, plants considered to be distinct, homogenous and stable may be protected
by Cultivar Protection before the National Service of Cultivar Protection (Serviço
Nacional de Proteção de Cultivares – SNPC);

4. Although particular proceedings regarding inventions derived from Brazilian biodiversity

or associated traditional knowledge may apply, the compliance with the new Biodiversity
Law (Law Nº 13.123/2015, regulated by Decree Nº 8.772/2016) requirements may
confer advantages in relation to competitors; and

5. Although a computer program per se is not patentable in Brazil, an invention

implemented by computer program may be patentable provided that it is an industrial
creation (process or product) which solves a technical problem and achieves a
technical effect that is related not only to the code of the program.
 4.
INDUSTRIAL
DESIGNS
Industrial Design is a type of Industrial
Property that provides protection for the
aesthetic, visual and/or ornamental
features of an object.

BR 30 2014 005033 8 BR 30 2014 004596 2 BR 30 2014 000514 6

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WHY PROTECT AN OBJECT OR A BI-DIMENSIONAL
DESIGN UNDER INDUSTRIAL DESIGN LEGAL RULES?

1. To have exclusive rights over the design, preventing non-authorized people or

companies from making, using, selling or importing it;

2. For marketing purposes: the titleholder has exclusive rights to economically exploit the
Industrial Design for a determined period of time, obtaining competitive advantages;

3. To have all such exclusive rights acknowledged by any potential licensees, keeping
ownership rights safe while licensing the Industrial Design to others;

4. To license the Industrial Design to others; and

5. To sell the Industrial Design to others.

MAIN REQUIREMENTS FOR INDUSTRIAL DESIGN

PROTECTION IN BRAZIL

Be new worldwide Have a distinctive Be capable of being

visual configuration, used or made in some
as opposed to what is type of industry
publicly known
 INDUSTRIAL DESIGN – PROSECUTION

Brazilian Formal Publication Nullity Request

filing examination and Grant (Third parties or INPI)

Application may INPI checks:

be an extension drawings format/
of a foreign filing quality, required
or an original documents, title,
Brazilian filing. technical field,
payment, etc.

EXAMINATION ON INVALIDATION OF THE

THE MERITS INDUSTRIAL DESIGN

The examination on the merits, such
as novelty, is optional and performed
only by request of the applicant after
the Industrial Design is granted.
20
Third parties can file a cancellation action with
the INPI to invalidate the Industrial Design within
5 (five) years from the respective granting
decision date. After this period, the Industrial
Design can only be challenged before the
competent Judicial Courts. The INPI can also
start the nullity procedure by its own (ex-Officio).
MAIN DIFFERENCES BETWEEN INVENTION PATENTS
AND INDUSTRIAL DESIGNS IN BRAZIL

INVENTION PATENT INDUSTRIAL DESIGNS

Term of protection 20 years from the filing date or 10 years from the filing date
10 years from the grant date renewable up to 25 years from the
(whichever is longer) filing date

What can be protected
Technical and/or functional aspects
of objects (devices, articles, apparatus
and tools), methods, systems,
uses, manufacturing processes and
chemical compositions
Aesthetic and/or visual aspects of
objects (devices, articles, apparatus
and tools)

Examination on the Merits Mandatory Optional

Prosecuting Costs Higher Lower

Prosecution Time Frame Longer Faster

IS IT POSSIBLE TO CUMULATE LEGAL PROTECTIONS, HAVING THE SAME

OBJECT PROTECTED AS A PATENT AND ALSO AS AN INDUSTRIAL DESIGN?
In principle, yes, as the Patent protects the technical and functional features of the object,
whereas the Industrial Design protects its aesthetical/ornamental features. Cumulative protection
over the same object under copyright and three-dimensional trademark rules are also foreseeable
if such object meets the specific requirements for protection of each IP category.
 5.
TRADE AND SERVICE MARKS
A mark is a distinctive sign used to identify a service or a product and to distinguish it in the
market from akin or similar services or products arising from other manufacturers/providers.

Which signs can be registered as a trade

or a service mark in Brazil?
Any visually distinctive sign that is not included
in the legal prohibitions of the Brazilian IP Law.

SIGNS THAT CAN BE REGISTERED AS TRADEMARKS IN BRAZIL:

Examples of figurative and three-dimensional marks quoted at INPI’s Trademark Guidelines.

NOMINATIVE (WORD) COMPOSITE (WORD + LOGO)

FIGURATIVE (IMAGE) THREE-DIMENSIONAL

* Distinctive shapes of objects subject to

registration as three-dimensional marks can
cumulatively be protected as Industrial Designs
and/or as copyrights if the respective specific
requirements for protection are met.
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 SIGNS THAT CANNOT BE REGISTERED AS TRADEMARKS IN BRAZIL

1.
Non-traditional trademarks
that do not meet the visual
perception legal SOUNDS TASTES SMELLS

2. Visually perceptible signs which could be,

in principle, legally accepted for trademark
registration but cannot be filed as such TRADE
HOLOGRAPHIES
POSITION MOVEMENT
because the INPI is not yet technically
DRESS MARKS MARKS
prepared to manage the prosecution:

3. Signs which cannot be registered due to legal prohibition:

Slogans used Letters, Colors and Generic, Signs commonly

only as means numerals and their names, necessary, used to designate
of advertising dates, standing unless common, a characteristic of
alone, except arranged or ordinary or simply the product or of
when endowed combined descriptive signs, the service
with sufficient in a distinctive when related to
distinctive form manner the product or
the service to be
identified by
the mark

Deceptive Personal names Copyright The necessary Geographical

signs (those or signatures protected work common, or indication
signs that can thereof, family and its titles, ordinary form
mislead the names and except with the of the product
consumer patronymics, consent or packing, or
about the or the image of the author also one which
nature, origin of third parties, or titleholder cannot be
or features of except with the dissociated from
the product or consent of the a technical effect
the service to titleholder and/ – applicable for
be identified by or of his heirs tridimensional
the mark) or successors marks
 THERE ARE FOUR DIFFERENT TYPE OF MARKS:

Trademarks: Service marks:

identify products identify services

Colective marks: Certification marks:

identify products or services from can be registered by independent quality
members of a particular group or entity certification bodies to attest the conformity of
products or services with certain standards
or technical specifications

* Brazil adopts the Internation Classification of Nice, which comprises 34 classes of products and 11 classes of services.

WHY REGISTER A SING AS A MARK IN BRAZIL?

Brazil adopts a first to file system. Registration with INPI grants the following rights to a
mark titleholder:

1. Exclusive use of the sign within

Brazilian territory to identify the
products or services covered
by the registration;
Exception: Well-known marks within the
respective branch of activity are granted
a special protection in Brazil regardless of
filing or registration, if the mark owner proves
such degree of recognition in Brazil, while
challenging a third party’s mark. Such claim
must be supported by a later application.
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 2. Prevent third parties to use similar or
identical marks to identify identical or similar
products/services.
Exception: Highly renowned marks are granted a
special broad protection in all branches of activities.
Such status must be formally declared by INPI,
upon a recognition request filed by the titleholder
of the mark, along with evidences of the following
requirements:
• Recognition of the mark by a large fraction of
the general public (and not only by the respective
consumers);
• Quality, reputation and prestige that the public
associates with the mark and the goods it identifies;
and
• Degree of distinctiveness and exclusivity of
the mark in question.

Market surveys are currently considered by INPI as essential evidence to prove

the fulfilment of such requirements

Key Advice: Before registering a mark, perfom an availabity search! Prior search in INPI’s
online database is highly recommended and allows the forecast of possible obstacles to
registration of the intended mark based on third parties prior rights. Time and money can
be saved by building prior strategies!
 TRADE AND SERVICE MARKS PROSECUTION

WITHOUT OPPOSITION - 3 YEARS

WITH OPPOSITION - 5 YEARS

TM/SM TM/SM TM/SM

Applct. Publication Examination
2 Mon

6 Mon 60 Days

Third party
Priority opposition
agaist the TM/SM
application

After INPI’s granting decision, the registration shall be in force for 10 years, and may
be successively and unlimitedly renewed for new 10 years terms, upon payment
of INPI’s official fees during the 10th year of each term.
In the lack of payment of the renewal fees within the deadline,
the registration shall lapse and INPI will declare it extinct.
Make sure to use the mark as registered.
26
 Adm. Nulity Action
6 Mon
6 Mon
PAYMENT OF FEES

Allowance Granting Registration

decision Decision certificate
3 Mon

6 Mon payment
Rejection of fees
decision

60 Days Allowance
decision

Appeal

Rejection Filed
decision away

WHICH CONSEQUENCES ARISE FROM THE LACK OF USE OF

TRADE AND SERVICE MARKS?
Five years after the registration grant date, any third party with legitimate interest can file a non-use cancellation
action (forfeiture). To avoid the cancellation, the owner must:
• Prove the use of the mark for the past 05 years (counted backwards from the forfeiture request filing date); or
• Justify the lack of use for legitimate reasons.

TRADE AND SERVICE MARKS
CORPORATE NAME
Corporate Name is the
name adopted by the
entrepreneur to identify the
legal entity in the market,
which is the same as the
registered company name.
CORPORATE AND TRADE NAMES COMPARISON
Registration
Extension of the protection
28
TRADE NAME
Trade name is the
distinctive designation
of the place where the
commercial activities are
carried out, which might
be the same as the way
the company is known by
the public.
CORPORATE NAME
Mandatory
Board of Trade of the Brazilian
State where it was registered
6.
LEGAL PROTECTION
• The Paris Convention
assures protection in all
Member States, without
there being an obligation to
file or register for protection
in each country.
• Brazilian Constitution,
Civil Code and IP
Law also provides
broad protection:
It is crime of unfair
competition to use the trade
name of another party; and
It is prohibited to register
as a mark a sign that
reproduces or imitates the
trade name of another party.
TRADE NAME
It arises from the use
Territorial, according to the extension
of the trade name’s knowledge
 7.
DOMAIN
NAMES
The domain name identifies the virtual
establishment of an entrepreneur.

The Internet Administrator Committee (Comitê Gestor da Internet - CGI.br)

is responsible for coordinating and integrating all Internet service initiatives,
promoting technical quality, innovation and dissemination of services offered.

Brazilian Network Information Center (Brazilian Network Information Center -

NIC.br) is the entity responsible for implementing the decisions and
projects of CGI.br.
A CGI.br’s resolution delegated to NIC.br the activities related to (i) the registration
of domain names, (ii) distribution of IPs (internet protocol) and (iii) its maintenance
on the Internet.

Registro.br is one of the many sub-divisions of NIC.br. It is responsible for the

registration of domain names, the administration and the publication of DNS
(domain name system) for <.br> domains, and also for the distribution and
maintenance of Internet addresses.

First to file system: the first to register a certain name obtains the exclusive
rights to use such domain name, for any activity.
 There is no prior analysis by Registro.br for registering a domain name, so with the Internet growth,
a new infringement became frequent, the cybersquatting, which lead to an alternative dispute
resolution of conflicts.

No prior analysis for registration:

a domain name is available for registration if there is not any
identical prior domain name already registered (Registro.
br does not check infringement of prior rights).

Cyber squatting:
infringers may take advantage of this tool by registering
domains that reproduce prior marks or trade names.

Alternative dispute resolution of conflicts:

Administrative System of Internet Conflicts (“SACI-Adm”), created in 2010,
may cancel a “.br” domain name registered or used in bad faith and order its
transfer to the legitimate prior right owner.

SACI-ADM DISPUTE RESOLUTION RULES: DOMAIN

SACI-ADM
NAMES REGISTERED OR USED IN BAD FAITH FULFILL AT AUTHORITIES:
LEAST ONE OF THE FOLLOWING REQUIREMENTS
•Brazil-Canada
Likelihood of confusion with a prior mark: identical domain names or
confusingly similar to the Complainant’s prior mark right, which must have been Chamber of Commerce
duly filed or registered with the INPI prior to the registration of the domain name;
•World Intellectual
Likelihood of confusion with well-known mark in its field of activity: identical
domain names or confusingly similar to the Complainant’s prior mark, even in Property Organization –
the absence of prior filing or registration with INPI; or WIPO

Likelihood of confusion with other prior rights: identical domain names or •Brazilian Association of
confusingly similar to the Complainant’s trade name, corporate name, civil
name, family name or patronymic, well-known pseudonym or nickname, artistic Intellectual Property
name, etc.
30
 8.
COPYRIGHT
Law Nº 9.610 of February 19th, 1998 provides the basic framework for the current
Brazilian Copyright Law.

Copyrightable Requirements for Aesthetic neutrality:

subject matter:
original works of the spirit
that are fixed in any tangible
or intangible medium of
expression, known today or
later developed.
protection:
Originality (a certain degree of
uniqueness/creativity)
Fixation, meaning that that
the work must be embodied
in a copy.
copyright applies without
regard to artistic merit and
is not limited to particular
categories of creative works.

COPYRIGHTABLE WORKS INCLUDE:

Literary, artistic or Dramatic and Photographic and Lectures, speeches

scientific works choreographic works architectural works and the alike

Sound recordings and Derivative works Collections and compilations, encyclopedias,

audiovisual works dictionaries, databases and other works, which
by virtue of its selection, organization and
arrangement amount to an intellectual creation
 WORKS THAT ARE NOT COPYRIGHTABLE IN BRAZIL

Ideas, normative Diagrams, plans or rules Blank forms, texts of treaties

procedures, systems, for performing mental or conventions, laws,
methods or acts, games or business decrees, regulations, judicial
mathematical concepts decisions and other official
enactments

Information of common Names and titles by Industrial or commercial

usage such as that themselves exploitation of the ideas
contained in calendars, embodied in works
diaries, and other

HOW TO SECURE A COPYRIGHT?

Registration is not needed.

Legal protection is secured automatically when the work is fixed for the first time
However, it is highly recommended, in order to establish evidence of authorship and prior
date of the creation.
It is important to note that there is not a unique central authority for copyright registration: works of
different natures are registered before distinct registrars: the National Library (Biblioteca Nacional),
the School of Beaux-Arts (Escola das Belas Artes) of the Federal University of Rio (Universidade
Federal do Rio de Janeiro) de Janeiro, among others.
32
HOW LONG IS THE WORK PROTECTED UNDER COPYRIGHT?
General Rule: author’s lifetime plus 70 years. However, exceptions to the rule may apply:
• In the case of joint authorship: the term of protection of the indivisible creation shall be
counted from the death of the last surviving joint author.
• For anonymous and pseudonymous works: 70 years from January 1st of the year
following that of first publication.
• For audiovisual and photographic works: 70 years from January 1st of the year following
that of disclosure or broadcast of the work.

MORAL AND ECONOMIC RIGHTS

The author of a copyrighted work is vested in two types of rights

Reproduction
ECONOMIC RIGHTS
• economic exploitation of the works created;
• can be transferred

Any other form Preparation of

of exploitation derivate works
of the work

Distribution
of the work
 Attribution
MORAL RIGHTS
• protect the personality of the author;
• inalienable and irrevocable

Obtain access
to the sole or Disclousure
rare copy of
the work

withdraw
work from
circulation when
there ir risk to the Integrity
reputation and
image of
the author

The author has the right to collect, at least, 5% of any gain in

value that may be obtained in each resale of an original work
of art or manuscript that he has disposed of.
34
FAIR USE
Brazilian Copyright Law
EXAMPLES OF FAIR USE ALLOWANCES:

Reproduction of the Paraphrases and Works permanently

copyrighted work for
purposes of criticism,
comment, news
reporting, scholarship,
or research
parodies that do not
simply reproduce the
original work or are
derogatory to it
located in public places,
which may be freely
represented in painting,
drawing, photograph
or by means of
audiovisual processes

ASSIGNMENT OF RIGHTS: the ownership of a copyright may be transferred

completely or in part, in accordance with the terms below:

A full and definitive assignment of rights is only effective upon a valid written agreement;
Copyright agreements are interpreted restrictively;
Assignments shall be valid only for the modes of exploitation of the work existing on the date
of the contract;
If the written assignment agreement does not provide for specific conditions to the contrary, the
assignment shall be deemed to:
- be valid under due consideration
- be in force for a limited 5 years period
- be limited to the territory of the country where the agreement was signed
- grant the right to exploit the work only by means of the mode of exploitation strictly necessary for the
purpose of the agreement.

Recordation of the assignment is not required, but advisable to enforce rights against third parties.
 9.
SOFTWARE
Software protection in Brazil follows the type of protection granted to
literary and artistic works under the Copyright Law, but with several
particular rules as established by Law Nº 9.609 of February 19th, 1998.
Software is the expression of an organized set of instructions in natural or
code language, contained in a physical medium of any kind, necessarily
employed in automatic machines for the manipulation of data, devices,
tools, or peripheral equipment, based on digital or analog technique, in
order to operate in the way and with the purposes determined.

As any other Duration of Software Brazilian Patent Software

copyrightable protection: 50 registration is quite Law expressly violation is both a
work, software years, counted recommendable prohibits the crime and a tort
rights arise from from the January to secure the protection of
its creation 1st of the presumption of software per se
subsequent year ownership and to as a patent. It is
of the date of prevent eventual admitted only in
its publication infringements. case of a device
or, lacking such Such registration including specific
date, its creation may be requested software

1. 2. 3. 4. 5.
before INPI

The rights to software protection The right to attribution and to oppose

developed during the term of any
contract or statutory relationship belong
to the employer or contracting agency.
36
non-authorized modifications in the
created computer program that might be
detrimental to the reputation of its author
are afforded by the Software statute.
 10.
TRADE SECRETS
AND PROTECTION OF CLASSIFIED INFORMATION
Trade secrets protection requires:

Secrecy of the Valuable Information

information (not information subjected to
known or readily reasonable
accessible) effort to be
kept confidential

1. 2. 3.
Trade secrets encompasses various types of information whether
technical, commercial or financial, eg. manufacturing
processes, techniques and know-how, customers lists,
price lists, customers profiles, distribution methods,
financial information, ingredients.
Trade secret protection is afforded without registration and can last
for unlimited time, generally as long as confidentiality is maintained.
Businesses, having become more aware of the value of trade
secrets, confidentiality and nondisclosure agreements, now use
them widely in the course of business dealings as well as in the
context of employment relationships, in an attempt to limit unwanted
leaks and the use of valuable business information.
 WHEN IS IT ADVISABLE TO PROTECT YOUR INFORMATION AS
A TRADE SECRET?

1. When the invention does not meet patentability requirements;

2. When inventor does not wish to publish the invention and patentable claims;

3. When the time and territorial limits imposed by the patent system do not compensate
the risks arising from the disclosure of the information to competitors; and

4. For products that cannot be duplicated and/or processes that cannot be discovered easily.

Violation of a trade secret is both a crime and

a civil wrongdoing according to the provisions
governing unfair competition of Law Nº 9.279
of May 14th, 1996.
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 11.
INTELLECTUAL
PROPERTY RIGHTS IN
ADVERTISING

In order to avoid deceptive, offensive or abusive advertisements and campaigns, in

1980 the National Council for Self-Regulation in Advertising (Conselho Nacional de
Auto-Regulamentação Publicitária - CONAR) was created. Based on the general
principle of fair competition, among others, the ethical rules of advertising are set out
in the Brazilian Code of Advertising Self-Regulation and CONAR is responsible for
establishing and applying these rules.

COMPARATIVE ADVERTISING IN BRAZIL

According to the Brazilian Code of Advertising Self-Regulation, it is allowed to

compare marks and competitor products, provided that the comparison is objective,
truthful, verifiable, non-offensive and unlikely to cause confusion.

CONAR as a Conflict Mediator: Once the large advertising agencies and most
of the companies settled in Brazil are associated with CONAR, its determinations are
strictly observed and imperative between the disputing parties

By 2016, only 13 decisions of CONAR were

questioned before the Courts – all of them were maintained.
 Thus, CONAR is an alternative, other than the Courts, to obtain a faster order of abstention
regarding an advertisement that infringes Intellectual Property Rights, since its procedure is much
faster (decision within 90 days) and simplified, as detailed below:

Complaint

Amendment
order
Preliminary Judgement:
Defense
hearing possible outcomes*

Abstention
*there are two instances of appealing. order
40

LIABILITY OF
INTERMEDIARIES
The Brazilian Internet Law
establishes that an online
intermediary shall only be
held liable for a third party’s
content in case it fails to
comply with a court order for
removal of such content.
The law aims to guarantee
the freedom of expression
and the absence of any form
of private control of content
by Internet companies.
Copyright infringement,
however, is an exception
to this general liability
regime. Thus, liability of the
intermediary in this case
could be triggered if it is
notified and fails to remove a
specific content.
INTELLECTUAL
PROPERTY ON
THE INTERNET
KEYWORD
ADVERTISING
In examining whether
keyword-based advertising
violates trademark law or is
an act of unfair competition,
Brazilian courts found
both search engines and
advertisers accountable
for trademark infringement
and unfair competition
where a trademark is used
as a keyword to trigger a
competitor sponsored link.
The courts analysis have
also taken into consideration
whether, under Brazilian law,
Google is allowed to execute
advertising agreements,
against proper compensation,
by which the use of a third-
party registered trademark is
admitted to trigger competing
sponsored content.
Higher courts in Brazil
will still issue an opinion
on the matter.
12.
TRADEMARK
PROTECTION FOR
HASHTAGS
A hashtag is a word or
phrase preceded by the hash
character or pound sign #.
Hashtags are used in social
media to facilitate searches
by keywords and to group
topics of interest. They allow
businesses to promote
products and services,
share news and engage with
consumers on social media.
Registration of a hashtag
trademark is possible but
must necessarily comply with
registrability requirements for
trademarks in general.
The use of a hashtag,
per se, does not imply
distinctiveness of
the trademark.
INPI has already granted
some hashtag trademarks.
 13.
LICENSING AND
TECH TRANSFER
Any business strategy regarding IP rights shall be supported and ratified
by adequate and protective contractual structure. When it comes to IP
agreements, although not mandatory, recordation of the agreement with
the INPI is required for the parties to obtain the following effects:

EFFECTS OF THE RECORDATION

remittance of royalties abroad: should the licensor/assignor of the

IP rights under the agreement be a foreign entity, the Brazilian party will
only be allowed to remit royalties to its creditor upon the presentation of
the certificate of recordation issued by the INPI;
enforceability of the transaction against third parties: if the
parties desire to make the provisions of the agreement enforceable
against third parties, it is necessary to make the contents of the
document public and opposable (i.e., if the agreement provides for
licensee’s rights to act against infringers); and
tax deduction of the payments made under the IP Agreement:
in accordance with Brazilian tax regulations, payments arising from
IP deals can be deducted from the income revenue taxes as regular
costs or expenses. Deductibility caps vary from 1% to 5% of the net
revenue depending on the nature of agreement and on the technology
involved thereto.
42
IP AGREEMENTS SUBJECT/NON-SUBJECT TO RECORDATION

1. Industrial Property License Agreements (e.g., patents, trademarks, utility models

and industrial designs)
2. Technology/Know-how Transfer and/or License Agreements2
3. INPI does not accept license of technology and understands that any transactions
regarding know-how is a purchase of such non-patented technology. In
consequence, INPI imposes a series of restrictions to know-how licenses to
accept recordation of such agreements, mainly as regards the consequences of
termination of such agreements. Compulsory License of Patents
4. Franchising Agreements
5. Industrial Property Assignment Agreements
6. Technical Services Agreements
Some technical services agreements are deemed to imply the transfer of technology
from the services provider to the contracting party (i.e., if the technical team of the
parties exchange knowledge; if there are training sessions to enable the contracting
party to develop the technology, etc). INPI enacted a guideline to clarify which
technical services agreements are not subject to the recordation procedure,
including, amongst others, copyright licenses, software-related agreements, rendering
of maintenance and logistics services, consulting and marketing services3.
Remittance of payments, in these cases, will be made by presenting the copy of
the agreement and the correspondent invoice, both in Portuguese, to any financial
institution authorized to operate in the exchange market.
2
For the purposes of this guide, the expression ‘know-how’ will be used as a reference to “non-patented” and “non-patentable” technology.
3
For a complete and detailed list of the agreements not subject to recordation, please access the full text of INPI’s Resolution No. 156/2015,
available here: http://www.inpi.gov.br/links-destaques/sobre/legislacao-1
 REMARKS WHEN DRAFTING IP AGREEMENTS WHICH
ARE SUBJECT TO RECORDATION:

Specificity – in Clarity – to avoid Completeness

order to avoid ambiguities, – to determine all
combining the IP interpretative gaps, relevant conditions
transaction with vague definitions, of the hiring, such
other transactions to precisely identify as the preamble,
of different nature the parties, the purpose, products/
in the same purpose and the services (over
document (i.e., IP right involved which calculation
which may be (i.e., indicate the of royalties will be
subject to different filing/registration due), territory
tax rules/benefits) number, etc)

1. 2. 3.
Each type of license has particularities regarding the assessment of the
payments to be made and the limitations imposed by the law as regards
them. In a general manner, for recordation and tax purposes:
Patents/Trademark/Know-How Licenses and Technology Transfer:
royalties consist in a fixed amount per unit of product sold or percentage
levied on the net sales amount.
Technical Assistance Services: man/hour or man/workday cost

For recordation purposes, there are specific requirements for each type
of IP agreement. In order to avoid any problems when recording the
agreement, it is highly advisable to consult a local IP expert when drafting
the agreement.
44
RESTRICTIONS
For historical reasons, arising from past policies, INPI has been acting not as
simple register authority but rather as an intervening party: it analyzes the content
of the agreements filed for recordation and may raise obstacles based in restrictive
understandings concerning the IP transaction structure and conditions. As previously
mentioned, know-how licenses are not accepted as such, and tax deductibility limits
have been considered also payment limits by the INPI , among other barriers.

Such interference has been rarely challenged by the interested parties. Few cases
were brought before the courts and the rulings so far have confirmed INPI’s legitimacy
to interfere in some of the agreements’ provisions.

On the other hand, the INPI recently enacted a new normative guideline (IN 70/2017)
stating that it will not consider tax and exchange rules or aspects while analyzing the
agreements submitted for recordation. Such guideline may represent a turning point
on the recordation difficulties faced by the parties, but for the moment, due to is
recentness, its practical effects remain uncertain.

WHICH ARE THE MAIN OBSTACLES RAISED BY THE INPI IN

THE RECORDATION OF AN IP AGREEMENT?
INPI does not allow combined and cumulative payments of IP rights in case they all
relate to the same product/service.

ROYALTY LIMITATIONS:
Patent/Know-How License, Technology Transfer and Technical Assistance
Services Agreements:
related parties: from 1% to 5% over the net sales of the products manufactured
under the agreement, depending on the nature of the IP right involved;
non-related parties: there are no caps, however, INPI may question high royalties’
fees (i.e. above 10% on the net sales).
 Trademark License:
related parties: up to 1% over the net sales of the products sold under the
licensed trademarks;
non-related parties: there is no cap, however, INPI may question high royalties’ fees
(i.e. above 10% on the net sales).

PAYMENT & REMITTANCE:

Patent license: limited to the term of the patent, accruing and provisioned retroactive to the
filing date of the recordal request. Remittance will only be possible upon the granting date of
the respective patents and issuance of an updated registration certificate accordingly.
Trademark license: royalties will only payable, deductible and remittable if the trademark
is duly registered under licensor’s name; should it be pending, the license will be royalty-free
until the registration granting date.
Know-How License/Technology Transfer: payments can be accrued as from the date of
the filing of the registration request, being remittance allowed only upon the issuance of the
recordation certificate.
Technical Assistance: remittance will only be possible upon the final registration by INPI.

FORMAL REQUIREMENTS FOR RECORDATION:

The following shall be observed and shall be clearly stated in the agreement:
Place and date of execution;
Name and title of the signatories;
Execution before a public notary, accompanied by the legalization/apostille, when the
agreement is signed abroad; and
Signatures of two witnesses.
46
The recordation request shall be instructed with copies of the main documents, a
Portuguese translation of the agreement, copies of accessory documents (such as a
power-of-attorney, proof of representation powers of the agreement’s signatories, etc)
and with some specific forms issued and required by INPI. For this reason, it is highly
advisable to have a local expert assisting you with the recordation process.

If INPI understands that all formal requirements were fulfilled by the parties, it shall
issue the recordation certificate within the next 45-60 days as from the filing date of
the recordation request. Should the INPI believe, however, that further clarification in
connection with the agreement is necessary, it shall issue clarification requests or office
actions to be addressed by the parties within a 60-day term from the publication date of
the INPI request/office action.

The effects of recordation will retroact to the filing date of the request, upon issuance of
recordation certificate.

REGISTRATION BEFORE THE BRAZILIAN CENTRAL BANK

The entrance and exit of funds from and to Brazil are subject to exchange control by
the Brazilian Central Bank (BCB). As for BCB’s regulations, to remit royalties abroad, the
parties and the transaction shall also be previously registered before the BCB.

It is a simple, online declaratory register in which some data shall be informed –name
and jurisdiction of the parties, currency, amounts to be paid, amongst other – into BCB’s
online system1. BCB will also request the presentation of the registration certificate,
if applicable, to conclude the enrollment of the transaction and allow the remittance
of funds.

It is highly advisable to consult local financing/banking regulations’ experts to avoid any

future problems with BCB, as well as any impediments on the remittance of royalties
from Brazil to foreign parties.

1
For further details, please verify with your local experts in financing/banking regulations, and check the contents
and instructions regarding remittance of funds from and to Brazil provided by BCB in its website located at:
http://www.bcb.gov.br/pt-br/#!/n/RDE (available in Portuguese) and http://www.bcb.gov.br/rex/legCE/Ingl/Ftp/
International_Capitals_and_Foreign_Exchange_Market_at_Brazil.pdf (in English).
 14.
ENFORCEMENT
OF INTELLECTUAL PROPERTY RIGHTS

CIVIL MEASURES
An intellectual property right holder can file a civil lawsuit for the cessation of the infringement as
well as to obtain damages awards.

Venue: State Court at Defendant’s headquarters (general rule)

Should there be a claim for damages the action may be brought before the State Courts at
Plaintiff’s headquarter or at the place where the infringement occurred and/or occurs.
Statute of Limitation:
Infringement – for as long as the infringing act is carried out.
Damages – general rule establishes a 5-year period to collect damages in case of patent and
trademark infringement.
Civil remedies:
Search and Seizure;
Preliminary and permanent injunctions;
Damages based on one of the following criteria, whichever is more favorable to the right holder:
• Plaintiff’s lost profits
• Infringer’s profits
• Reasonable royalty
• Some Courts have begun to award punitive damages to discourage a Defendant from
repeating the infringing act.
48
Preliminary ex parte injunctive relief available should there be accurate information on the right owned
by Plaintiff, persuasive evidence of the infringement, urgency in obtaining the injunctive relief, and no
irreparable harm to the other party.

In Rio de Janeiro, there are federal and

Proof of violation of an state courts specialized in IP matters
intellectual property right is and unfair competition, whereas there
sufficient in itself to give rise are specialized chambers in IP at São
to a right to damages, Paulo Court of Appeal.
independently of any
evidence of harm to the
injured party.

Inversion of the burden of proof:

In case of infringement of process
patents, an inversion of the
burden of proof is applied. As a
result, the Defendant must present The owner of a trademark application
evidence of the process used to in Brazil may adopt measures before
avoid the necessary confirmation of the Courts to protect its rights
the infringement. against infringers.

1. Alternative dispute resolution mechanisms are available.

2. Prior to filing a lawsuit, it might be interesting to send a

Cease and Desist Letter to the infringer.
 CRIMINAL MEASURES
• An offence against an intellectual property right does also characterize a crime.
• A private criminal claim must fulfill two specific conditions: proof of ownership of the IP right
and, whenever vestiges of the crime have been left, the analysis thereof by experts appointed
by the Court.
• Often used as a way to gather evidence to substantiate civil actions, aiming at the immediate
cessation of the infringement.
• Remedies: The judge can mainly determine the destruction of the infringing goods, sentence
infringers to imprisonment or a fine.

BOARD MEASURES
• Customs authorities, ex officio or at the request of right holder, can seize any counterfeit
product at the time of clearance. After seizure, the customs authorities can notify the interested
party to file a complaint for judicial seizure and/or destruction of the products.
50
Venue: Nullity Statute of limitation:

15.
actions are filed
o Trademarks: 5 years
before Federal
from the granting
Courts as INPI is a
date of the trademark
necessary party to

NULLITY
registration. In case of
the proceeding
registration obtained
in bad faith for as

ACTIONS
long as the trademark
registration is valid
o Patents and
Designs: for as long
as the right

1. 2.
is enforceable

To prove the nullity Injunctive relief: Official acts by INPI

of a certain IP right, immediately are presumed to
it is necessary to suspend the be done properly
demonstrate that effects of the right and legally unless
it was granted under dispute otherwise proven
in strict violation
of the applicable
law. For patent
and designs, such
proof is generally
offered through a
technical opinion

3. 4. 5.
 16.
ABOUT THE SPONSOR

Gusmão & Labrunie is one of the main law firms in Brazil dedicated to providing
legal and technical services of the highest caliber, exclusively in Intellectual Property
matters. With a corporate structure of approximately 120 professionals, including
lawyers, patent specialists and administrative staff, serves national and international
clients of various sizes and segments. By means of a talented team, Gusmão &
Labrunie offers high level services, personalized attention and in-depth knowledge
in the client’s business area, presenting most effective and tailor-made solutions.

For further information, please contact:

Av. Brigadeiro Faria Lima, 1485 – 11th Floor CEP: 01452-002

São Paulo/SP – Brasil Phone: +55 (11) 2149-4500 Fax: +55 (11) 3819-0455
E-mail: glpi@glpi.com.br
Website: www.glpi.com.br
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