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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:
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:
Section II: Signs not Registrable as Marks
Article 124 - The following shall not be registrable as marks:
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:
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:
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:
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:
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:
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:
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:
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:
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:
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.
Continuation: CHAPTER X - ISSUE OF REGISTRATION CERTIFICATIONS