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American Chamber of Commerce for Brazil - AMCHAM International Affairs Department Brazil, 2015/2016

*This guide is part of the project

American Chamber of Commerce for Brazil - AMCHAM International Affairs Department Brazil, 2015/2016 *This guide is


ACKNOWLEDGMENTS The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States

The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States is constantly serving its members by building bridges for Brazilian businesses worldwide. Our foreign investment attraction efforts have also been a key leading point for Amcham. The How to series is part of this initiative. With the support of some of our corporate members, the States of the country and now some 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 7th largest economy of the world, being also the 5th biggest destination for foreign investment, Brazil has clearly demonstrated its importance in the global market. Furthermore, the medium and high classes are increasing, which creates a solid internal market and contributes to maintain good results in the economy. It is now more than ever a strategic time for businesses opportunities in Brazil. We welcome you and hope that the information you are about to read serves you best.

ACKNOWLEDGMENTS The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States

Gabriel Rico – CEO, Amcham Brasil

ACKNOWLEDGMENTS The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States
ACKNOWLEDGMENTS The American Chamber of Commerce for Brazil, being the largest Amcham outside the United States

In constant development, with a vibrant and strong economy, Brazil is becoming one of the leading

powers of the world. Brazil presently has the largest economy in Latin America and the seventh largest in the world. Previously a country with an economy essentially driven by agribusiness, favored with a territory of continental proportions, Brazil is currently focused on encouraging innovation

and promoting conditions that will enable sustainable development and scientifi c and technological

progress. Within this economic and social context, Intellectual Property gains even greater relevance as a tool for achieving effective results and competitiveness. Thus, the publication of this guide, resulting from a partnership between AMCHAM and Ricci Propriedade Intelectual, is extremely timely. It seeks to address, in an objective and instructive manner, the main aspects of intellectual property rights, providing potential foreign investors, professionals and businessmen with general and necessary information to secure appropriate protection and defense of their valuable Intellectual Property assets in Brazil.

Antonio Ferro Ricci
Antonio Ferro Ricci
Daniel Adensohn de Souza
Daniel Adensohn de Souza

Founding Partner, Ricci Propriedade Intelectual

Senior Associate, Ricci Propriedade Intelectual




  • 02 PATENTS




































In an economic and market context in which competition

is increasingly fiercer, the companies need to find ways

to make their products/services unique, in order to attract new customers and maintain the clientele they have already won. Investments in innovation, whether to develop new products, to improve manufacturing processes or to create marketing strategies are essential for achieving this.

Consequently, the intellectual property rights have assumed an important role in this scenario, in that they provide tools for adequate and effective management and protection of innovation and knowledge.

Thus, Intellectual Property is currently the main tool used to propel new business, stimulate research and development activities, add value and generate greater competitiveness in business.

Intellectual property has such an importance to the progress of a nation that the Federal Constitution of Brazil, in Article 5, subsections XXVII to XXIX, established a constitutional guarantee for the protection of copyrights and neighboring rights, as well as patents, industrial designs, trademarks, trade names and other distinctive signs, bearing in mind the social interest and the technological and economic development of the country, as in the U.S. Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”.


In general terms, Intellectual Property is the branch of

law that protects artistic, literary and scientific works, as

well as creations for business use, such as trademarks, patents, designs and trade secrets.

Intellectual Property, for didactic purposes, is divided into two categories: Copyrights and Industrial Property.

Copyrights include authors’ rights, strictly speaking, that protect creations or intellectual works, materialized in

any medium, particularly literary, artistic and scientific

works endowed with originality, and within the period of

protection established by law. They also encompass the neighboring rights which are those assured to performers, producers of phonograms and broadcasting organizations.

In turn, industrial property protects industrial innovation, which includes patents and industrial designs, in addition to distinctive signs used in a company’s activities, such as trademarks, company names, trade names, insignia, advertising phrases, geographic indications and domain names.

In this guide, it will be presented concepts about intellectual property rights, outlining their main characteristics, functions, duration and extent of protection, enabling readers to understand the system of protection of Brazilian Intellectual Property, so that they can adequately protect their intangible assets in the most effective and least costly way possible.



The Industrial Property Law establishes that a patent can

be classified as an invention or utility model, and that

inventors will be assured the right to obtain patents that

guarantees them the property, with the National Institute of Industrial Property (INPI).

To be patentable, an invention must meet the requirements of novelty, inventive step and industrial application. An object of practical use, or part thereof, shall be patentable as a utility model, if it is susceptible of industrial application, if it presents a new shape or arrangement and involves an inventive step that results in functional improvement in its use or manufacture.

An invention or utility model are considered new when not included in the state of art, and their protection, under a patent, covers a wide variety of areas of expertise, such as mechanics, electronics, physics, chemistry, medicine, biotechnology, etc.

The Industrial Property Law sets certain restrictions

on patent protection eligibility, with the following, for

example, not being patentable: discoveries; scientific

theories; mathematical methods; commercial, accounting,

financial, educational or advertising methods; purely

abstract concepts; computer programs per se; or natural living beings, in whole or part, except for transgenic microorganisms that meet the requirements of novelty,

inventive step and industrial application.


A patent application, filed at the INPI, must be accompanied by a description, claims, summary and figures, if any. The

patent application will be kept secret for a period of 18 months

from the date of filing or earliest priority, for applications

from abroad. The examination of a patent application must be requested by the applicant or by any interested party

within 36 months of the filing date. In some specific cases,

it is possible to fast-track the examination of the application, through a prioritized examination of the patent, for example, in the case of litigation involving the patent or for green patent applications (technologies focusing on the environment), or if the inventor is over age 65.

The invention patent is valid for 20 (twenty) years and

the utility model patent for 15 (fifteen) years as of the

filing date. After the patent term ends, the object under

protection will fall within the public domain.

The extension of protection conferred by a patent will be determined by the content of the claims, interpreted in the light of the description and drawings. Patents confer to their owners the right to prevent third parties, who have not received consent, from manufacturing, using, offering for sale, selling or importing a:

Product under patent protection; and

Process or product directly obtained by a patented process.


Patent owners are assured the right to claim for damages in Brazilian courts for the unauthorized exploitation

the granting of the patent. The application is, as a rule,

A lawsuit to revoke a patent may be filed in the Federal Courts at any time during the term of a patent, by the INPI

of the object of the patent, including the use occurred between the date of publication of the application and

or any person with a legitimate interest. The invalidation of a patent may be pleaded at any time, as a matter of defense, and the judge may, preventively or incidentally,

confidential for only 18 months. The publication makes

order the suspension of the effects of the patent during

it public and, for that reason, no one can claim ignorance.

the course of the lawsuit.

The Industrial Property Law stipulates that the amount of

The invalidation of a patent may be total, applying to all

compensation will be determined by the criteria that more greatly favor the injured party, among the following:

claims, or in part, based on the condition or fact that the subsisting claims constitute patentable subject matter on their own. The invalidation of the patent shall take effect

The benefits that the injured party would have

from the date of filing of the patent application.

gained if the violation had not occurred; or

Furthermore, it is important to note that Brazil is a

The benefits gained by the author of the violation

signatory member of the PCT (Patent Cooperation

of the patent; or

Treaty), a multilateral international treaty that deals with


the filing of international patent applications, which,

The remuneration the author of the violation would have paid to the holder of the violated rights

subject to the conditions and terms provided in the treaty, may be extended to the 148 contracting states.

for a granted license which would have legally permitted him to exploit the patent.

Generally speaking, after filing an international

application under the PCT, the applicant will have up

A patent that is wrongfully granted (e.g.: if it fails to meet

within six months of the publication of its concession.

to 30 months, from the PCT filing date or priority date

patentability requirements; if its subject matter cannot be

(if priority has been claimed for a patent application

considered an invention or utility model, pursuant to Article 10

filed in a contracting state in a period not exceeding 12

of the Industrial Property Law; if it deals with non-patentable

months), to file for a patent to be granted in each country

subject matter under Article 18 of the Industrial Property

of interest. It is worth noting that an international

Law, such as being contrary to morals, good customs, public

application may be submitted in Portuguese and that the

security, order and public health; etc.) may be subject to

National Institute of Industrial Property of Brazil (INPI)

administrative nullification proceedings, filed ex officio or directly at the INPI by any person with a legitimate interest,

was selected as one of the International Searching Authorities for international patent applications under the PCT.



An industrial design is the ornamental plastic form of an object or any ornamental arrangement of lines and colors

that may be applied to a product, that provides a new and

original visual result in its external configuration and that

may serve as a type for industrial manufacture.

Three basic requirements for the registrability of an

industrial design may be drawn from this definition:

novelty, originality and industrial application. An industrial design is considered new when it is not comprised by the prior art, i.e., it is an objective and absolute novelty. The industrial design is considered original when it results

in a distinctive visual configuration in relation to other

prior objects. The original visual result may arise from

the combination of known elements.

Among objects expressly excluded from protection, the current Industrial Property Law does not consider as an industrial design any purely artistic work, whose protection will be conferred under the Copyright Law. Likewise, not considered registrable as an industrial design is anything contrary to morals and good customs or which offends the honor or image of individuals or infringes upon freedom of conscience, belief, religious worship or ideas and feelings worthy of respect and veneration; the necessary common or ordinary shape of an object or, further, that which is determined essentially by technical or functional considerations, which, in this case, would fall under a utility model patent.


Therefore, the industrial design protection refers to the external and aesthetic form of an object or ornamental pattern, and not to its practical function.

Owners of registered industrial designs have the right to prevent third parties, who have not received consent from making, using, offering for sale, selling or importing their protected industrial designs.

Besides being a tort, counterfeiting an industrial design constitutes a criminal offense, since the Industrial Property Law deems as an offense the manufacture, without authorization of the owner, of a product that incorporates a registered industrial design or a substantial copy thereof, that may mislead or confuse. A crime is also committed against a registered industrial design by those who export, sell, offer for sale, have in stock, conceal or receive, for commercial purposes, an object that unlawfully incorporates a registered industrial design, or a substantial copy thereof, that may mislead or confuse.

Thus, the law protects the owner of an industrial design not only against reproduction, or outright copy of the object, but also against substantial imitation, i.e., a highly similar object, liable to mislead, cause uncertainty or confuse consumers.

The term of the industrial design protection is 10 years

and may be extended for another three periods of five


years, totaling 25 years of protection, after which it will become public domain.

A registered industrial design may be declared invalid if it was granted contrary to the law, that is, if it is not novel or original; entails the common or ordinary shape of an object; is determined essentially on the basis of technical or functional considerations; or is contrary to morals and good customs and offends the honor and image of individuals, or infringes upon freedom of belief, religion, etc.

The invalidation of a registered industrial design may be

declared administratively by INPI, through invalidation

administrative proceedings, filed ex officio or by any person with a legitimate interest, within a period of five

years from the publication of its concession. If filed within the first 60 (sixty) days, the effects of the registration will

be suspended.

The invalidation of a registered industrial design may also be decreed in a lawsuit brought before the Federal Court,

which may be filed at any time during the protection term by INPI or any person with a legitimate interest. It may be

pleaded, at any time, as a matter of defense, and the judge may, preventively or incidentally, order the suspension of the effects of the patent during the course of the lawsuit.




The layout-design (topography) of an integrated circuit refers to a series of related images, built or encoded in any medium or form, representing the three-dimensional

configuration of the layers that make up an integrated

circuit, and wherein each image represents, in whole or in part, the geometric layout or arrangements of the surface of the integrated circuit at any stage of its design or manufacture.

Under the Brazilian law, only original topographies

will be protected through registration at the INPI, i.e.,

a topography that results from the intellectual effort of its creator or creators and that is not common or usual (determined case by case) for technicians, experts or integrated circuit manufacturers, at the time of its creation. However, a topography that results from a combination of common elements and interconnections or that incorporates, with proper authorization, protected

layout-designs of third parties, may be protected if taken as a whole.

The registration, which gives its holder the right to exclusive exploitation of the integrated circuit layout-design, will be valid for ten years, from the

date of filing or from the date of the first commercial

exploitation of the integrated circuit layout-design,

whichever occurred first. This registration cannot

be renewed.

The registration of the topography of an integrated circuit may be declared invalid in court if granted contrary to the provisions of laws, especially if the topography does not meet the originality requirement; the documents

submitted are not sufficient to identify the topography; or the registration application was not filed within two years

of the start of commercial exploitation.



The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) establishes that member countries of the World Trade Organization (WTO) must protect plant varieties and can opt for a system of patents, a sui generis model or a combination of both.

Brazil has opted for protection through a specific

registration, whereby it is forbidden to protect plant varieties through patents, pursuant to Articles 10 and 18 of the Industrial Property Law.

Thus, the protection of intellectual property rights is

obtained through a Plant Variety Protection Certificate granted by the National Plant Variety Protection Service (SNPC), created by Law No. 9456/1997, under the

Ministry of Agriculture and Supply.

The plant variety is understood as the variety of any higher plant genus or species that is clearly distinct from other known plant varieties by a minimum margin of characteristics, and has with its own name; that is uniform and stable, in terms of its characteristics, over successive generations; and that it is a species which can be used by the agriculture and forestry complex, described in a specialized publication available and accessible to the public, as well as the hybrid component lineage.

In short, the plant variety protection focuses on the


vegetative reproduction or propagation of the whole plant, i.e., on the seed. The plant variety must meet the following requirements: be the product of genetic improvement; be of a species subject to protection in Brazil; not have been sold abroad for over four years, or more than six years in the case of vines or trees; not have been sold in Brazil for more than twelve months; and be distinct, uniform and stable.

The last three requirements (distinctiveness, uniformity

and stability) must be proven through specific combined

experiments, called DUS Tests (distinctiveness, uniformity and stability). Under the Brazilian law, these tests are the responsibility of the applicant and must be delivered along with the protection application.

The protection of the plant variety will be effective

from the date the Provisional Protection Certificate is granted (normally issued within 60 days of the filing

date, provided the information is complete, thus already affording protection to the cultivar) for a period of

15 (fifteen) years, except for vines, fruit trees, forest

trees and ornamental trees, including, in each case, its rootstock, for which the term will be 18 (eighteen) years, after which, it will become public domain.

With the publication of the application and issuance of the

Provisional Protection Certificate, there will be a period of

90 (ninety) days for objections. If there are no objections


or, in the event there are objections and they are rejected,

the Plant Variety Protection Certificate is issued.

The denomination of the plant variety will be mandatory

for its identification and will serve as its generic name,

which must be unique and may not be expressed in numerical form only, i.e., a description also needs to be inserted; it must be different in name from other existing plant varieties; and it cannot be misleading in terms of the plant variety’s intrinsic characteristics or origin.



Protected intellectual works are considered to be creations of the mind, expressed through any medium or fastened to any kind of support, whether tangible or intangible,

known or invented in the future, such as: the texts of

literary, artistic or scientific works; musical compositions,

audiovisual works, photographic works; drawing, painting, printmaking, sculpture, lithography and kinetic art works; or computer programs, among others.

Protection of computer programs in copyright terms is

governed by Law No. 9609/98 and, subsidiary, by Law

No. 9610/98 which deals with other copyright works. Only

in specific cases, depending on a technical analysis and

certain requirements, patent protection involving software is possible, according to the Industrial Property Law.

In Brazil, the following are not protected by copyrights:

business systems and methods; and mathematical designs and concepts, such as schemes, plans or rules for performing mental acts, games or business.

The Copyright protection does not depend upon a specific

registration. Depending on the nature of the work, the

registration could be done, optionally, in the National

Library; School of Music or School of Fine Arts of the

Federal University of Rio de Janeiro; National Film

Institute; or Federal Council of Engineering, Architecture

and Agronomy; and INPI, in the case of computer

programs. The registration time depends on the nature


of the work and, consequently, on the place where this registration will be done.

Law No. 9610/98 establishes that an author is the individual who creates literary, artistic or scientific work,

and the protection granted to the author may be applied to legal entities through assignment of the copyright. It also rules that the author is the holder of the moral and economic rights of the protected work, and only the property rights for its commercial exploitation may be transferred to third parties, including legal entities, since the author’s moral rights are considered inalienable, irrevocable and imprescriptible.

The moral rights of author are the following: claim, at

any time, the authorship of the work; have his/her name indicated or announced, as the author, in the use of their work; ensure the integrity of the work, by opposing any

modifications or acts that could, in any way, harm the

work or undermine the reputation or honor of the author; among others.

The author has the exclusive right to utilize, benefit from

and enjoy the literary, artistic or scientific work, and its

use by other modalities requires the prior and express consent of the author.

Law No. 9610/98 does not address commissioned works

or those resulting from employment contracts or provision


of services. In this case, the copyright belongs entirely to the author (individual) and the property rights will only belong to the employer or party which contracted

the service (legal entity) through specific contractual

provisions for this purpose.

The economic rights of an author may be fully or partially transferred to third parties, by the author and his or her heirs, whether universal or individual, through licensing, concession, assignment or other legally permitted means. If there is no contractual provision regarding duration,

the maximum period shall be five years. The total and definitive assignment of the author’s property rights must

be done through a written contractual agreement.

The assignment of copyrights is presumably costly and will only occur for modalities of use or supports already existing at the date of the contract. In addition to modalities of use, the assignment or licensing instrument shall establish the countries where the work will be

used – in this case it is necessary to pay the corresponding fee in each country. In case of omission, the instrument will only be valid in Brazil, where the contract was signed.

The law establishes the basic conditions that shall govern copyright assignment contracts, such as time, place and price, which are essential elements for the effectiveness of the contract.

The property rights of an author will last for seventy years

as of January 1st of the year following his or her death, in accordance with the rules of inheritance under civil law, which also apply to posthumous works. For audiovisual and photographic works, the term of protection of property rights will be seventy years as of January 1 of the year following its publication. In case of computer

programs, the term of copyright protection is fifty years

as of January 1st of the year following its publication, or in the absence thereof, of its creation.




In Brazil, a trademark is defined as any visually perceptible

For highly renowned trademarks, whose differential is

the products and services, it is necessary to perform an

distinctive sign not prohibited by law. Therefore, olfactory, taste, sound and other nontraditional signs

the protection granted in all business segments, for all

cannot be protected as trademarks in Brazil, but may be

administrative procedure with the INPI, as well as ensure

protected, however, in accordance with the general rules involving unfair competition.

that certain requirements are met, particularly:

On the other hand, Brazilian law requires that the sign to be registered as a trademark is distinctive. The initial

Recognition of the trademark by a large portion of the general public;

assessment of the trademark’s distinctiveness first occurs when the INPI examines, administratively, whether the

sign is inherently capable of distinguishing the products or services, through interpretation of the degree of

The quality, reputation and prestige that the public associates with the trademark and the products or services it designates; and

relationship between the sign and the product or service that it seeks to identify.

Investments made by the holder to publicize the trademark and in research and development.

Assessment of distinctiveness may also occur later, since the Brazilian Judiciary has applied, in some cases, Article 6 quinquies, C.1 of the Paris Convention, recognizing that

In line with most foreign legislation and in accordance

well-known trademarks in their segment, an official

In addition to the trademarks for products and services, Brazilian law also protects collective trademarks, which are used to identify products or services arising from

weak, evocative trademarks that have a relationship with

the members of a certain entity, as well as certification

the product or service they identify are able to acquire distinctiveness through continued use and investments

marks, which are used to certify that a product or service complies with a set of rules related to quality, nature, etc.

made by the holder (phenomenon of “secondary meaning”).

On the other hand, Brazilian law does not accept as trademarks a number of expressions, such as those that:

with international treaties, Brazil also grants special and differentiated protection to famous trademarks. For

administrative procedure under the INPI is not necessary.

represent monuments or names of public agencies; mislead as to indication of origin; reproduce or imitate names or symbols of sporting or artistic events, etc.; reproduce or imitate legal names, family names, stage


names, known image or nicknames of third parties; common, necessary or generic technical words or terms; are only used as advertising; and, of course, those that violate the rights of third parties.

The trademark registration procedure in Brazil is quite simple. After the application is submitted, the application will be published for any objections by third parties. If there are no opposition, the application will proceed to the examination stage. If there are opposition,

the applicant will be notified to present a defense, and

after this stage, the application will proceed to the examination on the merits. After the examination, the

INPI will decide on the registrability of the trademark

or not. If the application is accepted for registration, the registration fees must be collected and the registration

will be granted and, further, the registration certificate

will be issued. If the examination is negative, it may be appealed in the administrative sphere.

The registration will be valid for 10 (ten) years, from

the date it was granted and may be renewed indefinitely

by its owner as long as it is in his or her interest. Once

registration is granted, administrative cancellation is still possible, which would need to be petitioned by an

interested third party within 6 (six) months of the date of registration. After judgment of this measure, the registration can only be annulled in Federal Court, within

5 (five) years as from the granting date.

Although it is simple, the trademark registration procedure in Brazil has been cumbersome, taking an average of 36

months to be completed, due to the backlog (large number

of requests awaiting analysis) at the INPI. However, the INPI

has implemented a number of measures to reduce this period to be on par with international standards, especially through investments to virtualize processes and in the hiring and training of new examiners to enhance the speed and quality of decisions, as well as through investments in infrastructure.



A trade name can be understood as the name adopted by an entrepreneur, individual or legal entity, to identify them in the exercise of its activities. It can also be used as a tool for building a bond between the entrepreneur/ company and its customers.

Trade name protection is governed by different legislation. It may be said that while the objective

function of the trade name is protected by the Federal Constitution of 1988, the Industrial Property Law

and the Paris Convention, its identification function

is regulated by the Law of Public Registration of Commercial Companies and the Civil Code.

In terms of jurisprudence, it is currently understood, for the most part, that the trade name protection is limited to the territory of the State where the articles

of incorporation were filed. It is possible to extend the


protection to other States through specific application or

opening of branches.

As far as defense of a trade name in court, especially

when there are conflicts with other distinctive signs,

the Brazilian courts usually apply trademark protection

principles to decide the case. The first principle is with

respect to anteriority, meaning that, as a rule, the oldest prevails, since there is a likelihood of confusion or undue association in the market.

Thus, the protection of a trade name prevents the use and subsequent registration, by a third party, of a domain name or trademark that reproduces or imitates the characteristic expression of the trade name. Likewise, once a trademark has been registered it cannot be used, even partially, in a trade name, especially in connection with similar activities.



According to the World Intellectual Property Organization (WIPO), a geographic indication “is a sign

used on goods that have a specific geographical origin

and possess qualities or a reputation that are due to that place of origin”.

The TRIPS (Trade-Related Aspects of Intellectual

Property Rights), in turn, defines them as “indications

which identify a good as originating in the territory of

a Member, a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

Law No. 9279/96 devoted a specific section to geographic

indications. When dealing with geographic indications, it innovated when subdividing them into two separate institutes: indication of origin and designation of origin.

Indication of origin is understood as the geographical name of a country, city, region or locality within its territory, which has become known as a center of

extraction, production or manufacture of a specific

product or for providing a particular service.

On the other hand, designation of origin refers to the geographical name of a country, city, region or locality


within its territory, which designates a product or service whose qualities or characteristics are due exclusively or essentially to the geographical environment, including natural and human factors (know-how or savoir faire).

Associations, institutes and representative legal entities of the community entitled to exclusive use of the geographical name established in the respective region may request registration of geographic indications.

When it comes to a foreign geographical name already recognized as a geographical indication in its country of origin or recognized by competent international entities or bodies, the registration must be requested by the holder of the right of the geographic indication.

The law also extends the protection to the graphical or

figurative representation of the geographical indication,

as well as to the geographical representation of the

country, city, region or locality within its territory whose name is a geographic indication.

The expressions “cachaça” and “cachaça do Brasil”, for example, are geographic indications referring to a traditional distilled beverage made from sugarcane produced in Brazil, and its use is restricted to producers in the country.




The Brazilian advertising market is closely tied to various issues related to the intellectual property.

Conselho Nacional de Autorregulamentação Publicitária

(CONAR - National Council for Self-Regulation in

Advertising) is a non-governmental organization which seeks to promote freedom of expression in advertising and defends constitutional prerogatives involving commercial advertising in Brazil.

Among CONAR’s basic precepts it can be highlighted

the respect for the principle of fair competition. The

Advertising Self-Regulation Code of CONAR addresses

issues such as comparative advertising and determines that commercials may not infringe trademarks or copyrights of third parties, even those used outside of Brazil, which are recognizably related to or associated with another advertiser.

The ethical standards of conduct set by the Advertising Self-Regulation Code are observed by advertisers, advertising agencies, media outlets (radio and TV) and other communications professionals.

Advertising slogans or phrases intended to highlight the quality of products, goods or services, or to attract the attention of consumers or users, are protected in Brazil basically through the repression of unfair competition through the provisions of the Industrial Property Law

No. 9279/96, since registration does not exist.

On the other hand, advertising slogans or phrases that have originality and are directly associated with an

advertising campaign can be protected by the Copyright Act as part of the audiovisual work of an advertising

film. Advertising phrases that are merely descriptive or

consistently used commercially have no protection.



A domain name is a sign that identifies an entrepreneur or

establishment in a virtual environment. In this information society era, domain names are undoubtedly one of the most important distinctive signs of an entrepreneur, in that the Internet is one of the main tools for dissemination and, at the same time, the main research source of most consumers.

The Brazilian Network Information Center ( is a non-profit entity responsible for the implementation,

promotion, execution and regulation of domain name registration in Brazil.

In general terms, the registration of domain names works

according to the principle of “first come, first serve”,

i.e., the first one to register the domain name with the

competent authority is assured the right.

However, a domain name cannot contain a distinctive sign from a third party (such as trademark, trade name, company name, etc.), which could mislead or confuse the public. Thus, the registration of a trademark under

the INPI, as well as prior adoption of a trade name and/or

company name, are considered decisive in domain name registration, as it is widely recognized in Brazilian courts.

In addition to the possibility of filing a lawsuit in order

to cease the use and cancel or assign a domain name that violates a distinctive sign, holders of a violated right


can file a complaint with the Administrative System for Internet Conflicts related to domain names under “.br(SACI-Adm), implemented in October 2010 by as an alternative means for resolving disputes about “.br” domain names.

SACI-Adm was inspired by the Uniform Domain Name

Dispute Resolution Process (UDPR) of the WIPO Arbitration and Mediation Center (which provides

dispute resolution services related to second-level domain names, such as: .com, .net, .org., etc.), but it has some significant differences, as in the case of elements

that would characterize bad faith.

The following institutions are currently accredited by SACI-Adm: the Brazil-Canada Chamber of Commerce, the WIPO Arbitration and Mediation Center and the Domain Name Dispute Resolution Chamber (CASD- ND: Câmara de Solução de Disputas Relativas a Nomes de Domínio), linked to the Brazilian Intellectual Property Association (ABPI: Associação Brasileira da Propriedade Intelectual).

Since it is a relatively quick procedure, which takes

around 90 (ninety) days, as well as cheap, especially when compared to a lawsuit, an increasingly larger

number of cases are submitted to the Domain Name Dispute Resolution System (CASD-ND).




After more than two years of discussion in the Chamber of Deputies, followed by an extensive discussion with

civil society on the Internet itself, Law No. 12965/2014,

known as the “Internet Civil Framework”, was enacted on April 23, 2014.

Considering that, according to a survey conducted by the IBGE (Instituto Brasileiro de Geografia e Estatística - Brazilian Institute of Geography and Statistics), there are more than 83 million Internet users in Brazil (with an annual average growth rate of 6%), this law was created to establish principles, assurances, rights and duties for using the World Wide Web in the country.

Thus, Law No. 12965/2014 sets forth the duties and responsibilities required of service providers and defines

the role to be played by the government in relation to

development of the social potential of the network, and, of course, to regulate the rights and assurances of users.

The object of the law, therefore, is protection of personal data, e-commerce, cybercrime, intellectual property, Internet governance and regulation of the activities of public centers that provide Internet access, among others.

The law recognizes Internet access as essential for exercising one’s rights as a citizen, in accordance with the digital environment in which all citizens are inexorably included. We are necessarily and irrevocably inserted

into this complex virtual world that governs, influences

and drives personal relationships and business, permitting direct dialogue between companies and consumers.

This derives from the objectives expressed in the Law, especially promotion of the right of universal access to the Internet, access to information, knowledge and participation in cultural life and in the management of public affairs; access to innovation and promotion of the widespread dissemination of new technologies and use and access models; and adherence to open technology standards that enable communication, accessibility and interoperability between applications and databases.

Hence, this law protects personality rights, particularly the right to privacy, intimacy, honor and control over one’s image, as well as intellectual property rights in the digital environment, so that, as far as possible, legitimate freedom of expression is not impeded.

Regarding the protection of intellectual property on the Internet, since copyrights were intentionally not

included in Law No. 12965/2014, the “notice and take system” prevails, as per the precedents from the Superior Court of Justice, wherein upon notification

that the content violates a copyright or related rights the

provider must preemptively remove it within 24 hours,

until having sufficient time to examine the veracity of the complainant’s allegations. If confirmed, the provider


must permanently delete the content or, if unfounded, free access may be restored, under penalty of being joint and severally liable to the author for damages resulting from the omission that occurred.

Regarding to violations of industrial property rights, the

notice and take down system does not apply, but rather

Law No. 12965/2014 which establishes that Internet

application service providers (i.e., those that offer services such as social networks, blogs, videos, etc.) are not, a priori, civilly liable for damages arising from content generated by third parties. There is not, therefore, strict liability in relation to providers.

However, a provider may be civilly liable for damages

arising from content generated by third parties if, after a

specific court order (preferably stating the URL address),

measures were not taken, within the framework and technical limits of its service, and within the stipulated deadline, to make the infringing content unavailable.

In such cases, the provider, in accordance with the court order, must make the content unavailable and, as a rule, notify the user responsible for the content providing the reason and information as to why it was blocked, with information to enable due legal process and full defense in court.




The main objectives of the legislation and industrial and tax policies applicable to technology transfer are:

Effective transfer of technological knowledge from foreign companies to Brazilian companies (recipients of technology), providing them with access to and ascendancy in markets through the use of better methods and more modern production systems and the fabrication of new products;

Technological training focused exclusively on the production of products (consumer goods), the so-called processing industry and basic industry (infrastructure); and

Creation of jobs and wealth for the country, resulting from the technological training and investment of foreign companies in Brazil, as well as through the access of domestic companies to foreign markets, thus boosting exports and competitiveness in the international market.

Law No. 9279/96 establishes that the INPI will register

contracts involving transfer of technology, exploitation of patents, license of use of trademarks, franchising and the like, so that they produce effects upon third parties. The registration of such contracts is necessary to enable the remittance of royalties abroad by companies

headquartered in Brazil as consideration for the technology received from foreign companies.

In Brazil, financial transactions for the remittance

of royalties abroad, arising from technology transfer agreements or related agreements, will only be authorized

by the Banco Central do Brasil (Central Bank of Brazil) through presentation of the contract registration certificate issued by the INPI.

Brazilian companies can sign contracts with foreign companies involving, for example, the acquisition of technological knowledge to build a new facilities. After months of negotiations followed by the signing of the

contract and start of the technology transfer, which often means visits from foreign technicians, the Brazilian company (technology recipient) may be prevented from remitting payments to the foreign company (technology supplier) if the respective contract has not been registered

with the INPI.

The registration of a technology transfer agreement, with

the INPI, takes approximately 30-60 (thirty to sixty)

days, provided its purpose and legal formalities comply

with the requirements of INPI.

Unlike the United States, in Brazil it is not allowed to register contracts that involve “Technology Licensing”


where, after termination of the contract, the receiving company ceases to use the licensed technology and acquired technical knowledge. That is, the transfer is only permitted for the limited time stipulated in the contract.

There are several other clauses and conditions that must be observed in these contracts in order to register them

with the INPI, such as period of validity, percentage limit

of royalty payments, legalization of the document at the Brazilian Consulate in the technology supplier’s country of origin, among other requirements.

Therefore, compliance to the terms and conditions of the

contract for its effective registration with the INPI is a

preventive measure to avoid setbacks and delays in the remittance of royalty payments abroad.




Brazilian law protects trade secrets (industrial or

commercial), defined as matters related to the business of

a company, whose disclosure or revelation would cause

harm of some kind (financial or moral) to the holder. The

main examples are: names or lists of customers or special suppliers, and their addresses, future sales or advertising campaigns, designs, price calculations, forecasts for tenders, not yet published balance sheets, hires, new models, etc.

Trade secret violation, understood as the dissemination, exploitation and use, without authorization, of knowledge,

information or confidential data, is considered a crime of

unfair competition.

On the other hand, Law No. 10603/2002 regulates

protection against unfair commercial use of information related to the results of tests or other undisclosed data submitted to the competent authorities as a condition for approval or maintenance of a registration for the sale of pharmaceuticals for veterinary use, fertilizers, pesticides and their components and so on.

In this way, the authorities may not, within the period

prescribed by law, use for the benefit of third parties

privileged information received and may not disclose it except when necessary to protect the public.




The legal protection of intellectual property rights in Brazil

in the civil field basically occurs in two different ways.

On the one hand, invalidation proceedings address the validity of intellectual property rights (trademarks,

patents, industrial designs, etc.) granted by the INPI.

These lawsuits are processed by the Federal Court and

are brought against the INPI itself and against the holder of the right granted by the INPI.

On the other hand, there are infringement proceedings, in which the holder of intellectual property rights seeks to stop a third party from using the trademark, patent, industrial design, domain names, copyrights, etc., in

violation of the right granted by the INPI. These lawsuits

are processed by the State Court and are filed exclusively

against offenders.

Both the Federal and State Courts of the main Brazilian states have judges who are specialized in intellectual property, especially at the higher court level (federal

and state courts of justice). This has proven beneficial

to the intellectual property rights protection system in Brazil because judicial decisions have been handed

down more speedily, as well as with significantly

enhanced quality.

Brazilian law allows for a number of provisional measures, such as interim injunctions for search and

seizure or anticipated production of evidence, involving any urgent situation that cannot wait until the end of the judicial proceedings. The new Brazilian Code of Civil Procedure, which will come into effect in 2016,

consolidates and reaffirms the importance of these

measures of a provisional nature.

On the other hand, there are also criminal measures at the disposal of holders of intellectual property rights being violated by third parties. The infringement of intellectual property rights is considered a crime in Brazil and penal measures may be used primarily for situations related to piracy and counterfeiting of products and for other more serious offenses involving the offender’s obvious bad faith, for example.




The repression to the acts of piracy and counterfeiting of products in Brazil is mainly achieved by implementing the following measures:

Inspection of goods and merchandise imported from other countries, whose entry into the country, either by air, sea or land, is subject to examination by Customs and the Brazilian Federal Revenue Service;

Inspections and investigations conducted by local

government bodies (such as those performed by the Civil and Federal Police, the Public

Prosecutor’s Office etc.) concerning the legality of

goods and merchandise, whether imported from other countries or manufactured in Brazil; and

Inspections undertaken by the intellectual property rights holders themselves, both in relation to products imported from other countries as well as counterfeit goods and merchandise manufactured in Brazil, by adopting legal measures of a civil or criminal nature.

Worth noting is the creation of the National Directory for Combating Trademark Counterfeiting, a project by INPI and the National Anti Piracy Council, contained in the National Anti Piracy Plan.

The goal of the directory is to provide support to institutions directly responsible for tackling counterfeiting and anti-


competitive practices, especially the Brazilian Internal Revenue Service and Federal Police, through the provision

(electronically) by the INPI of its trademark database and

registry of attorneys/representatives, in order to facilitate

fiscal and administrative procedures in cases where public officials find evidence of counterfeit products.

Thus, upon finding proof of counterfeit products, the

customs authorities, after checking the directory, will be able to temporarily seize the products and contact the attorneys of the holder of the violated trademark, to inform them of the provisional seizure and giving

them the opportunity to file for definitive seizure of

the products.

On the other hand, it has been noted, especially in recent years, that the Brazilian authorities, especially the Judiciary, have been more attentive to the harmful effects of piracy and product counterfeiting in Brazil, especially since it has been found that piracy and counterfeiting of products provide sources of funds for criminal organizations and for committing other crimes.

For this reason, we have noted the increasing use of temporary injunctions, such as search and seizure of

counterfeit products, and final judgment ordering the abstain

from manufacture, use and sale of counterfeit products,

without prejudice to the filing of compensation requests by

intellectual property holders, which has been occurring on

a larger scale and with financial penalties at higher levels.




Constitution of the Federative Republic of Brazil of 1998;

Cultural Incentive Law (“Rouanet Law” – Law

No. 8313/1991);


Industrial Property Law (Law No. 9279/1996);








9456/1997 and Decree No. 2366/1997);


Computer Program Law (Law No. 9609/1998);

Copyright Law (Law No. 9610/1998);


Civil Code (Law No. 10406/2002 – Book II, Title

IV, Chapter II);

Law of Protection of Undisclosed Information Submitted for Approval to Commercialize

Products (Law No. 10603/2002);

Law on Incentives for Innovation and Scientific and Technological Research in the Production

Environment (Law No. 10973/2004);


Law on incentives for manufacturers of Digital TV equipment and semiconductor electronic components and on intellectual property protection of layout-designs (topographies) of integrated

circuits (Law No. 11484/2007);

Customs Regulations (Decree No. 6759/2009);









Infractions against the Economic Order (Law No.

12529/2011); and


Internet Civil Framework (Law No. 12965/2014).


Paris Convention for the Protection of Industrial

Property (Decree No. 1263/1994);


Berne Convention for the Protection of Literary

and Artistic Works (Decree No. 75699/1975);


Patent Cooperation Treaty - PCT (Decree No.

81742/1978); and







Intellectual Property Rights (TRIPS) (Decree No.




Founded in 1989, Ricci Propriedade Intelectual is

an office specialized in Intellectual Property. With

headquarters in the city of São Paulo and correspondents in every country of the world, it provides comprehensive advisory and consultancy services in the consultive, administrative and litigation-related realms, for national and international clients, including major economic groups and multinationals, from a wide range of sectors.

Ricci Propriedade Intelectual has approximately 45

experienced and specialized professionals, including lawyers, trademark agents and patent agents, supported by

a highly qualified multifunctional team that is constantly

upgrading itself. Professionals from Ricci Propriedade Intelectual are actively involved in the dissemination, development and consolidation of Intellectual Property in Brazil, actively operating in the most important associations in Brazil and from around the world.

What sets Ricci Propriedade Intelectual apart from others is its provision of topnotch, high quality services for the protection and defense of the intellectual property rights of our clients, while adhering to the highest ethical and technical standards and applying a fair and competitive fees policy.


Working proactively, Ricci Propriedade Intelectual provides its customers with solutions and strategies that enable decision-making, the safe development of their business and the achievement of effective results, using intellectual property as a tool that adds value and boosts competitiveness.

For more information, please contact:

18. Founded in 1989, Ricci Propriedade Intelectual is an office specialized in Intellectual Property. With Website: 30 " id="pdf-obj-29-30" src="pdf-obj-29-30.jpg">

Av. Indianópolis, 2504 São Paulo/SP – Brazil – CEP 04062-002 Phone: +55 (11) 5581-5707 Fax: +55 (11) 2276-9864 Email: Website:





R. Orozimbo Nonato, 102 - 4º andar Edifício ICON – Nova Lima CEP 34000-000 - Belo
R. Orozimbo Nonato, 102 - 4º andar
Edifício ICON – Nova Lima
CEP 34000-000 - Belo Horizonte, MG
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R. Dr. Plácido Gomes, 610 - Sala 202
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SHIS QI 5, Comércio Local, Bloco C 1º andar
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CEP 90550-142 – Porto Alegre, RS
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Edf. Galleria Plaza – 7º andar, sala 701
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Rua Hélio Yoshiaki Ikieziri, 34 Ed. Evidence Prime Office – Sala 206 – Royal Park CEP 79100-000 – Campo Grande, MS Tel.: (55 67) 3211-0906


Rua João Marchesini, 139 – Prado Velho 80215-060 – Curitiba, PR Tel.: (55 41) 2104-9350


Av Desembargador Moreira, 760 - sala 1510 Empresarial Centurion Business Center - Aldeota CEP 60170-000 – Fortaleza, CE


Av. T-63 – Qd. 145 – Lote 08/09 Ed. New World – Sala 1005 - Setor Bueno CEP 74230-100 – Goiânia, GO Tel.: (55 62)3275-6010 • Fax.: (55 62)4006-1172

Avenida Wladimir Meirelles Ferreira, 1525 Ufficio Commerciale San Paolo, salas 1 e 2 CEP 14021-630 – Ribeirão Preto, SP Tel.: (55 16) 2132-4599 • Fax: (55 16) 2132-4563


Avenida Tancredo Neves, 1632 Edf. Salvador Trade Center Torre Norte, sala 1307 – Caminho das Árvores CEP 41820-020 – Salvador, BA Tel.: (55 71) 3480-3481


Rua da Paz, 1431 – Chácara Santo Antônio 04713-001 – São Paulo, SP Tel.: (55 11) 4688-4102 • Fax: (55 11) 5180-3777


Av. João Naves de Ávila, 1331, 10º Andar, Sala 1 – Tibery Center Shopping - UBT(Uberlândia Business Tower) 38408-902 - Uberlândia, MG Tel.: (55 34) 2101-4100