Volume 5, Number 26, Page 2

Brazil’s New Industrial Property Law: Trademarks

by Michael A. Ugolini

© 1998 By Michael A. Ugolini All rights reserved. Used with permission.

On May 14, 1998, Brazil enacted a new industrial property law. The trademark provisions of the new law define a “product or service mark” as a symbol used to distinguish the origin of a product or service from an identical, similar or related product or service of different origin. While the new industrial property law provides that “[a]ny distinctive visually perceivable signs, if not prohibited by law, shall be eligible for registration as a mark,” it also creates twenty-three categories of marks which are not registrable.

[Editors note: For a full listing of these exceptions, cited by Michael Ugolini, please contact the National Law Center for Inter-American Free Trade.]

As permitted by the Paris Convention for the Protection of Industrial Property, internationally famous marks enjoy “special protection” under the new law, and an application for registration may be rejected if a mark wholly or partially reproduces or imitates a well known mark.

A trademark registered in Brazil confers on its holder the exclusive right to use the mark for a term of ten years from the date the application for registration is granted, which may then be extended for successive ten year periods.

An infringement is committed by any person who:

1) reproduces the mark, without authorization of the owner; or,

2) imitates it in a manner which may cause confusion,or,

3) alters a mark which has been affixed to a product placed on the market;

However, the trademark owner may not:

1) Prevent merchants from using their own marks together with the owners’s trademark in promoting the sale of trademarked products;

2) Prevent manufacturers of accessories from using the trademark to indicate the use for its products;

3) Control the free circulation of trademark products placed in commerce by the trademark owner or others with consent to do so;

4) Prevent the citation of the trademark in speech, scientific or literary works, if done without commercial purpose and without prejudice to its distinctive character.

A trademark will lapse from failure of the trademark owner to use it for five years from the date of registration or if its use is interrupted for more than five consecutive years, unless such failure or interruption in use can be justified.

Administrative regulations related to the trademark registration process are contained in INPI’s Normative Ruling No. 131.

Unlike the United States, where legal protection of trademarks is derived from the use of the mark in commerce, in Brazil, all rights stem from the registration of the trademark within Brazil, and except for the right of priority provided for in the Paris Convention, no protection is provided to an unregistered owner. A foreign trademark may be registered in Brazil under the terms of the Paris Convention, which establishes an exclusive period of six months from the date of the application in the country of origin for the owner to apply for registration of said trademark in other signatory countries.

Regarding remedies, the industrial property law provides that the owner of a registered trademark or patent may institute civil proceedings against an infringer, and recover all damages caused by the infringement, including lost profits. Lost profits may be determined by reference to whichever of the following results in the greatest recovery to the owner of the trademark or patent:

1) The benefits the owner would have obtained if the infringement had not taken place; or,

2) The benefits received by the infringer; or,

3) The remuneration the infringer would have had to pay the owner for a license.

In addition, the trademark or patent owner may obtain preliminary injunctive relief, and, in cases of flagrant reproduction or imitation of a registered mark, the seizure of all articles bearing the falsified or imitated mark.

Michael Ugolini is an attorney with International Trade Advisors, an association of attorneys concentrating in the field of U.S. and international intellectual property, trade and investment, with offices in Springfield, Massachusetts and Hartford, Connecticut.