INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - BRAZIL

Industrial Property Law - Law Nº 9.279, of May 14, 1996

CHAPTER IV: GRANT AND TERM OF REGISTRATION

Article 107 - The certificate shall contain the number and title, name of the author in accordance with provisions of Paragraph 4 of Article 6, the name, the nationality and the domicile of the owner, the term, drawings, and data relating to foreign priority, and, where applicable, the description and claims.

Article 108 - Registrations shall have a term of 10 (ten) years as from the date of filing. This term shall be renewable for 3 (three) successive 5 (five) year periods.

Paragraph 1 - Applications or renewal shall be made during the last year of the term of the registration and shall be accompanied by proof of payment of the corresponding fee.

Paragraph 2 - If renewal has not been applied for before the end of the term of registration, the owner may request renewal within the following 180 (one hundred and eighty) days, on payment of an additional fee.

CHAPTER V PROTECTION CONFERRED BY REGISTRATION

Article 109 - Ownership of an industrial design shall be acquired by means of a valid registration.

Sole Paragraph - The provisions of Art 42 and paragraphs 1, 2 and 4 of Article 43 shall apply mutatis mutandis to an industrial design registration..

Article 110 - Any person who, in good faith, prior to the date of the filing or priority date of an application for registration used to exploit the subject matter in the Country shall be entitled to continue exploitation in the previous manner and under the previous conditions without liability.

Paragraph 1 - The entitlement under this Article may only be assigned, by transfer or lease, together with the business or enterprise, or the part of thereof, directly related to the exploitation of the subject matter of the registration.

Paragraph 2 - The entitlement under this Article shall not be afforded to a person who gained knowledge of the subject matter of the registration as a result of the disclosure under Paragraph 3 of article 96, provided the applications has been filed within 6 (six) months) of disclosure.

CHAPTER VI: SUBSTANTIVE EXAMINATION

Article 111 - The owner of an industrial design may at any time during the term of the registration request examination as to novelty and originality of the subject matter of the registration.

Sole paragraph - INPI shall issue a substantive opinion which, if it is found out that at least one of the requirements referred to Articles 95 to 98 is not met, shall serve as basis for the institution of ex officio proceedings for nullity of the registration.

CHAPTER VII: NULLITY OF REGISTRATION

Section I: General Provisions

Article 112 - A registration shall be deemed null and void if granted contrary to the provisions of this Law.

Paragraph 1 - Nullity of the registration shall take effect as from the date of the filing date of the application.

Paragraph 2 - When the provisions of Article 94 have not been complied with, the author may also claim that the registration be granted to him.

Section II: Administrative Procedure for Nullity

Article 113 - Nullity of a registration shall be declared administratively if it has been granted contrary to the provisions of Articles 94 to 98.

Paragraph 1 - Nullity proceedings may be instituted ex officio or at the request of any person having a legitimate interest, within 5 (five) years as from the date of grant of the registration, without prejudice of the case referred to in the Sole Paragraph of Article 111.

Paragraph 2 - Institution of proceeding on request or ex officio shall suspend the effects of the grant of the registration if submitted or published within 60 days from the grant.

Article 114 - The owner of the registration shall be invited to submit his comments within 60 (sixty) days as from the date of publication.

Article 115 - Whether comments are submitted or not, INPI shall issue an opinion after the period laid down in the preceding Article and shall require the owner and the applicant to reply within 60 days.

Article 116 - On expiry of the period referred to in the preceding Article, the matter shall be decided by the President of INPI, even if no comments were submitted, and the administrative procedure shall thereby be closed.

Article 117 - Nullity proceedings shall continue even if the registrations has lapsed.

Section III Proceedings for Nullity

Article 118 - The provisions of articles 56 and 57 shall apply mutatis mutandis to proceedings for nullity of an industrial design registration.

CHAPTER VIII: LAPSE OF THE REGISTRATION

Article 119 - A registration shall lapse:

I - on expiry of the term of protection;

II - on renunciation by the owner, without prejudice to the rights of third parties;

III - on failure to pay the fee referred to in Article 108 and 120, or

IV - on failure to comply with provisions of Article 217.

CHAPTER IX: FIVE-YEAR FEE

Article 120 - The owner of a registration shall be required to pay a five-year fee as from the second five year period after the filing date.

Paragraph 1 - Payment of the second five-year period shall be made during the fifth year of the term of registration.

Paragraph 2 - Payment for all other five-year periods shall be made at the time of the submission of the application for renewal referred to in Article 108.

Paragraph 3 - Payments of five-year fees may also be made subsequently within 6 (six) months following the period laid down in the preceding Paragraph on payment of an additional fee.

CHAPTER X: FINAL PROVISIONS

Article 121 - Provisions of articles 58 to 63 shall apply mutatis mutandis to the subject matter covered by this Title; the rights of an employer and of service providers shall be governed by the provisions of Articles 88 to 93.

TITLE III: MARKS

CHAPTER I: REGISTRABILITY

Section I: Signs Registrable as Marks

Article 122 - Any distinctive visually perceivable signs, if not prohibited by law, shall be eligible for registration as a mark.

Article 123 - For the purposes of this law the following definitions shall apply:

I - product or service mark: a mark used to distinguish a product or service from an identical, similar or related product or service of different origin.

II - Certification mark: a mark used to attest that a product or service complies with established standards or specifications, particularly regarding its quality, material used and methodology employed; and

III - collective mark: mark used to identify goods or services produced by members of a certain entity.

Section II: Signs not Registrable as Marks

Article 124 - The following shall not be registrable as marks:

I - coats of arms, armorial bearings, medals, flags, emblems, badges and official, public, national, foreign or international monuments as well as any designations, figures or imitations thereof;

II - an individual letter, number and date, isolatedly, except when sufficiently distinctive;

III - expressions, figures drawings or any other sign contrary to morality and decency or which offend the honor or image of a person or which offend freedom of conscience belief, religious cult or ideas and feelings worthy of respect and veneration;

IV - designations or initials of public entities or agencies, where registration is not required by the public entity or agency;

V - reproductions or imitations of a characteristic or differentiating element of a title of an establishment or a name of an enterprise belonging to another party, likely to mislead or cause confusion with such distinctive signs;

VI - signs of generic, necessary, common, ordinary or simply descriptive nature when related to the product or service to be distinguished, or those commonly used to designate a characteristic of a product of service regarding its nature, nationality, weight, value, quality and time of production or providing of a service, except where presented in a sufficiently distinctive form;

VII - signs or expressions used merely as a means of advertising;

VIII - colors and the names thereof, except where arranged or combined in an unusual and distinctive way;

IX - geographical indications, or imitations of such indications likely mislead or signs that might wrongly suggest a geographical indication;

X - signs inducing false indication regarding the origin, source, nature, quality or usefulness of the product or service to which the mark is applied;

XI - reproductions or imitations of official seals normally used to guarantee a standard of any type or nature;

XII - reproductions or imitations of signs registered as a collective or certification marks by another party, without prejudice of provisions of article 154;

XIII - names, prizes or symbol of official or officially recognized sporting, artistic, cultural, social, political, economic or technical events or imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event.

XIV - reproductions or imitations of titles, bonds, coins or bank notes of the Union, States, Federal District, Territories, Municipalities or any country;

XV - personal names or signatures, family names and surnames and images of third parties, except with the express consent for the title holder, heirs or successors;

XVI - widely known pseudonyms or nicknames, singular or collective artistic names, except with the consent of the owner, his heirs or his successors in title;

XVII - literary, artistic or scientific work, as well as titles protected by copyrights and likely to mislead or cause confusion, except consent of the author or owner;

XVIII - technical terms used in the industry, science and art, related to the product or service to be distinguished;

XIX - reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party, to distinguish of certify a product or service which is identical similar or related which are likely to cause confusion or association another person’s mark;

XX - duplication of marks of one and same owner for the same product or service, except where, in the case of marks of the same nature, they are presented in a sufficiently distinctive manner;

XXI - the necessary, common or usual shape of a product or packing, or also, shapes form that cannot be dissociated from a technical effect;

XXII - objects that are protected by industrial design registration owned by third parties; and

XXIII - signs that imitate or reproduce, in the whole or in part, a mark which the applicant could not fail to have knowledge of in view of his activities and of which the owner is established or domiciled on the national territory or in a country with which Brazil has an agreement or affords reciprocal treatment, if the mark is intended to distinguish a product or service that is identical, similar or related, likely to cause confusion or association with the mark of such other person.

 

Section III: Famous Marks

Article 125 - Marks registered in Brazil and deemed to be famous shall be afforded special protection in all fields of activity.

Section IV: well-known Marks

Article 126 - Marks that are well-known in their field of activity pursuant to Article 6 bis (1) of the Paris Convention for the Protection of Industrial Property shall enjoy special protection, whether or not they have been previously filed or registered in Brazil shall enjoy special protection.

Paragraph 1 - The protection afforded by this article shall apply also to service marks.

Paragraph 2 - INPI may reject ex officio an application for registration of a mark that wholly or partially, reproduces or imitates, a well known mark.

CHAPTER II: PRIORITY

Article 127 - Priority rights shall be afforded to an application for the registration of a mark filed in a country with which Brazil has signed an agreement or with an international organization, that produces the effect a national filing, within the time limits laid down in such agreement, the filing shall not be invalidated or prejudiced by events that occur within such periods of time.

Paragraph 1 - The claim to priority shall be made at the time of filing and may be supplemented within 60 (sixty) days, by other priorities that precede the filing date in Brazil.

Paragraph 2 - A claim to priority shall be supported by means of a suitable document of origin containing the number, date and reproduction of the application or of the registration, together with a simple translation of which the contents shall be at the full responsibility of the applicant.

Paragraph 3 - If not provided at the time of filing, proof shall be made within 4 (four) months, as of the date of the filing, under penalty of loss of the priority.

Paragraph 4 - Where priority is obtained under an assignment, the relevant document shall be submitted together with the actual priority document.

CHAPTER III: APPLICANTS FOR REGISTRATION

Article 128 - Public law or private law natural or legal persons may apply for the registration of a mark.

Paragraph 1 - Private law persons may apply only for registration of a mark relating to the activity they effectively and lawfully exercise, either directly or through enterprises they directly or indirectly control, and shall state such fact on the actual request, subject to the penalties of the law.

Paragraph 2 - The registration of a collective mark may only be applied for by a legal person representing a group and this legal person may exercise a activity different from that of its members.

Paragraph 3 - The registration of a certification mark shall only be applied for by a person with no direct commercial or industrial interest in the certified product or service.

Paragraph 4 - A priority claim shall not exempt the application from the application of the provisions of this Title.

CHAPTER IV: RIGHTS IN MARKS

Section I: Acquisition

Article 129 - Ownership of a mark shall be acquired by a valid registration pursuant, to the provisions of this Law; the owner shall have exclusive use of the mark throughout the national territory, without prejudice of the provisions of Arts. 147 and 148 with respect to collective and certification marks.

Paragraph 1 - Any person, who, in good faith, at the date of priority or a the date of application, has been using, in good faith, an identical or similar mark for at least 6 (six) months in the Country to distinguish or certify an identical, similar or related product or service, shall have preferential rights to registration.

Paragraph 2 - Preferential rights shall only be assigned, by sale or lease, together with the business of an enterprise, or the part thereof that is directly related to the use of the mark.

Section II: Protection Afforded by Registration

Article 130 - The owner of a mark or the applicant shall also enjoy the right to:

I - to assign his registration or application for registration.

II - to license its use;

III - to ensure its material integrity or reputation.

Article 131 - The protection afforded by this Law includes the use of the mark on papers, printed matter, in advertising and in documents related to the activities of the owner.

Article 132 - The owner of a mark shall not:

I - prevent traders or distributors from using their own distinctive signs, together with the mark of the product, for the purposes of promotion and marketing.

II - prevent manufacturers of accessories from using the mark to indicate the use of the product, provided they comply with the principles of fair competition.

III - prevent free circulation of products placed on the internal market, by the owner or with his consent, without prejudice of the provisions of Paragraphs 3 and 4 of article 68; and

IV - prevent a mention to the mark in speeches, scientific or literary works or in any other publication, provided it is done without any commercial connotation and in no way prejudices its distinctive character.

 

CHAPTER V: TERM, ASSIGNMENT AND ENTRIES

Section I: Term

Article 133 - The registration of a mark shall have a term of 10 (ten) years, as from the date of grant, and may be renewed for successive and similar periods.

Paragraph 1 - An application for renewal shall be filed during the last year of the term of registration and shall be accompanied by proof of payment of the respective fee.

Paragraph 2 - If no request for renewal has been made by the end of the term of registration, the owner may request renewal within the following 6 (six) months, on payment of an additional fee.

Paragraph 3 - Renewal shall not be granted if provisions of article 128 are not complied with.

Section II: Assignment

Article 134 - Applications for registration and registration may be assigned provided that the assignee meets the statutory requirements for requesting such registration.

Article 135 - An assignment shall include all registrations or the application, in the name of the assignor for identical or similar marks, related to an identical, similar or related product or service, under penalty of having the registrations canceled or withdrawal of applications not assigned.

Section III: Entries

Article 136 - INPI shall make the following entries:

I - of the assignment, giving the full particulars of the assignee;

II - of any limitation or burden on the application or registration; and

III - of changes in the name, headquarters or address of the applicant or the owner.

Article 137 - Entries shall take effect with respect to other persons on the date of their publication.

Article 138 - An appeal may be lodged against any decisions which:

I - rejects the entry of an assignment; or

II - cancels the registration or refuses an application, according to the provisions of Article 135.

Section IV: License of Use

Article 139 - The owner of a registration or an applicant for registration may enter into a licensing contract for the use of the mark, without prejudice to his rights to exercise effective control over the specification, nature and quality of the respective products and services.

Sole Paragraph - The owner may afford the licensee full powers to take action to defend the mark, without prejudice of his own rights.

Article 140 - To have effect with respect to other persons licensing contracts shall be recorded with INPI.

Paragraph 1 - Recordings shall have effect with respect to other persons as from the date of their publication.

Paragraph 2 - In order to give proof of use, recording licensing contract with INPI is not mandatory.

Article 141 - Appeals may be lodged against any decisions rejecting the recording of a licensing agreement.

CHAPTER VI: LOSS OF RIGHTS

Article 142 - The registration of the mark shall lapse:

I - on expiry of the term of protection;

II - on renunciation, either in full or partial, of the products or services to which the mark applies;

III - on forfeiture; or

IV - on failure to comply with the provisions of Article 217.

Article 143 - A registration shall be forfeited, at the request of any person having a legitimate interest, if after 5 (five) years from grant, on the date of the request:

I - the use of the mark in Brazil has not begun; or

II - the use of the mark has been interrupted for more than 5 (five) consecutive years, or if, within the same period, the mark has been used in a modified form that involves alteration of its original distinctive character in accordance with the registration certificate.

Paragraph 1 - A mark shall not be forfeited if the owner gives legitimate reasons for failure to use.

Paragraph 2 - The owner shall be invited to submit his comments within a period of 60 (sixty) days, and shall prove that the mark has been used or justify failure to use for legitimate reasons.

Article 144 - The use of the mark shall comprise the products or services referred to in the certificate, under penalty of partial forfeiture of the registration with respect to these products or services which are not similar or related to those in respect of which the use of the mark was proven.

Article 145 - Requests for forfeiture shall not be admitted if the use of the mark has been proven or if failure to use has been duly justified in an earlier proceeding requested less than 5 (five) years previously.

Article 146 - Appeals may be lodged against decisions which declare or deny forfeiture.

CHAPTER VII: COLLECTIVE AND CERTIFICATION MARKS

Article 147 - Applications for registration of a collective mark shall include the regulations for use establishing conditions and prohibitions regarding the use of the mark.

Sole Paragraph - If the regulations for use do accompany the application, these regulations shall be filed within 60 (sixty) days from the date of filing, under penalty of having the application deemed definitively withdrawn.

Article 148 - Applications for a registration of a certification mark shall contain:

I - the characteristics of the product or service to be certified; and

II - control measures to be adopted by the owner.

Sole Paragraph - If the documents referred to in items I and II of this article, do not accompany the application, these documents shall be filed within 60 (sixty) days, under penalty of having the application deemed definitively withdrawn.

Article 149 - Any changes in the regulations for use shall be notified to INPI, by means of a duly filed request, stating the provisions that have been changed, under penalty of having changes disregarded.

Article 150 - The use of the mark shall not be dependent on a license; it shall be sufficient to have authorization for use included in the regulations for use.

Article 151 - In addition to the grounds for lapse referred to in Article 142, the registration of collective marks and certification marks shall lapse if:

I - the entity ceases to exist; or

II - the mark is used under conditions that differ from those laid down in the regulations for use.

Article 152 - Renunciation to the registration of a collective mark shall only be accepted if requested in accordance with the articles of incorporation or statutes of the entity or yet according to the regulations for use.

Article 153 - A registration shall be declared forfeited if the collective mark is not used by more than one authorized person, without prejudice of the provisions of Articles 143 and 146.

Article 154 - Collective or certification marks which have already been used and of which the registrations have lapsed may not be registered in the name of a another party before the five (5) year period as from the lapse of the registration has expired.

CHAPTER VIII: FILING

Article 155 - Applications shall refer to a single distinctive sign and, according to the conditions established by INPI, shall contain:

I - the application;

II - labels, where appropriate; and

III - proof of payment of the filing fee.

Sole Paragraph - The request and any other documents accompanying the request shall be filed in Portuguese language and any document filed in a foreign language shall have a uncertified translation submitted at the time the application is filed or within the following 60 (sixty) days under penalty of the document not being taken into considerations.

Article 156 - Once the application has been filed it shall be subject to a formal preliminary examination, and if found in order, the application shall be recorded and the date of submission shall be considered the filing date.

Article 157 - Applications that do not comply with requirements of Article 155, but which contain sufficient data on the applicant, the sign of the mark and the class, may be filed with INPI in return for a dated receipt. INPI which shall establish the conditions to be complied with by the applicant within 5 (five) days, under penalty of not being taken into consideration.

Sole Paragraph - Once the conditions have been complied with, the filing shall be considered to have been made the date the application was submitted.

CHAPTER IX: EXAMINATION

Article 158 - Once recorded the application shall be published to enable contestations to be filed within a period of 60 (sixty ) days.

Paragraph 1 - The applicant shall be notified of any contestation and shall be invited to submit his comments within 60 (sixty) days.

Paragraph 2 - Contestations, administrative procedure for nullity or nullity proceedings based on provisions of item XXIII of Article 124 or 126 shall not be admitted unless proof of the filing of an application for registration of the mark in accordance with this Law is provided within 60 days of filing if the contestation, nullity procedure or nullity proceedings.

Article 159 - On expiry of the contestation period, or if contestation has been lodged, on expiry of the period for submitting comments, the examination shall be carried out during which conditions may be established which shall be complied with within 60 (sixty) days.

Paragraph 1 - If no answer is received to the conditions the applications shall be deemed definitively withdrawn.

Paragraph 2 - Once the answer to the condition is filed, even if the condition has not been met, or if its formulation has been contested the examination shall be continued.

Article 160 - On completion of the examination a decision shall be issued allowing or rejecting the application for registration.