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INTELLECTUAL PROPERTY LAWS
IN BRAZIL
INTRODUCTION
Intellectual property is, in essence, information or knowledge and it
is divided into industrial property and artistic property. Artistic property
comprises literary, scientific and artistic property. Industrial property
consists of inventions and trade and service marks.
Artistic property, known in Brazil as "author rights," is regulated
by Law nº 4.944 of 04/06/1966 and nº 5.988 of 12/14/1973. According
to these laws, the author of an intellectual work has the exclusive privilege
of reproduction, distribution and economic exploration of the work itself.
Industrial property covers patents (inventions and utility models) industrial
designers (models and signs), as well as trade and service marks. It also
covers the elimination of unfair competition.
The government agency created to perform request for examinations, registration
and issuance of industrial property certificates, is the Brazilian Institute
of Industrial Property (INPI).
In relation to international protection of industrial property, Brazil
is as a member of the Stockholm Convention of July 14, 1967, under which
the World Intellectual Property Organization (WIPO) was set up. Therefore,
Brazil subscribes to both Paris and Berne Convention for protection of
industrial property, literary and artistic works. In addiction, Brazil
is signatory to the Patent Cooperation Treaty (PCT).
PATENTS
Patent is an incorporeal statutory right that gives an inventor, for
a limited period, the exclusive right to use or sell a patented product,
method or process. According to the new issued Law nº 9279 -- May/14/1996,
the essential requirements for the granting of a patent in Brazil are:
absolute novelty, industrial application and lawful nature. There are some
inventions and models that were not capable of being patented such as:
science theories, some methods, software, game rules, etc.
In order to create the exclusive right patents must be registered at
INPI. However, the proceedings are time and lengthy consuming. An application
must contain the inventor's claims, a full description of the invention,
its drawing (when applicable), and proof of compliance with all legal requirements.
From here on, a preliminary formal examination takes place and a certificate
of request is issued. Once the request for examination has been published,
there will be a time limit for any oppositions or appeals against the patent
application. Briefly, after all the proceeding schedule and no appeal be
filed, the final certificate is issued.
The protection granted by a patent extends as from the date the request
for protection is filed at INPI, for 20 years for inventions and 15 years
for utility and industrial models and designers. However, the patent may
lapse if in some situations : if its use is interrupted for a period of
two or more consecutive years; if the inventor fails to pay the required
annuities to INPI; if the inventor expressly waives the privilege; or if
it is administratively canceled or judicially annulled.
Priority Protection
A foreign patent owner might have a priority period claim after the
request at its country. Due to Paris Convention, European Patent Convention
and Patents Cooperation Treatment (Washington), the foreign owner has a
period of twelve months for patents of invention and utility and six months
for industrial designs and models, as from the date of application in the
country of origin.
Nevertheless, a foreign owner must have a proxy person living in Brazil
with power to represent itself in case of administrative or judicial issues.
TRADEMARKS
Ability to be registered:
Merchants and others use five marks or symbols to identity themselves
and their products, such as: 1) True trademark (used to identify goods
to a particularly manufactured or merchant); 2) Trademark ( used to identify
manufacture or merchant); 3) a service mark ( used by a group to identify
a person who provides service); 4) collective marks (used by a group to
identify itself to its members); 5) certification mark ( used by a licensee
or a franchisee to indicate that a particular product meets certain standards).
In Brazil the Law nº 9279 recognize all these marks above; however
all rights steam from registration at INPI. No protection whatsoever is
accorded an unregistered owner even though he/she may have been using a
trademark for years. There are some signs or symbols that will not be accepted
as a registered mark like common expressions and signs, colors, maps, country
sings, etc.
International Protection and Priority
The Brazilian law not only specially protects the worldwide known trademarks,
but also grated the exclusive priority period of claim. It is possible
to claim the international protection granted by The Paris Convention;
however, in order to qualify for this benefit, the owner must apply for
registration of its well-known trademark in Brazil. It might be protected
in all business field or in a particularly sector depending of the mark
The exclusive priority period also ruled by Paris Convention is grated
in Brazil. It establishes an exclusive period of six months from the date
of application in its country to apply for registration of the same trademark
in Brazil. The priority claim must include the dated application in the
other country and a simple translation. On the other hand, the priority
claim does not waive the necessity of registering.
Application may be made to register a trademark either as a foreign
or a Brazilian trademark. If a trademark is applied in Brazil by a foreign
party without the priority claim established in the Paris Convention, it
is considered a Brazilian trademark, and therefore the benefit of such
Convention will not be granted.
Extension
Once registered, a trademark protection extends for 10 years from the
date of the register approval and it can be extended for consecutive equal
periods. The use of a trademark is essential to its protection in Brazil.
A trademark will lapse if it is not used for two years from the date of
registration, or if its use is interrupted for more than two consecutive
years.
Brazilian law requires that the field of business of the trademark owner
in Brazil be related to the goods or services covered by such trademark.
In order to apply for registration of a trademark in Brazil, certification
that the applicant is a company duly organized in accordance with the laws
of its country and the company's field of business is required.
COPYRIGHTS
Artistic property, known in Brazil as "author rights," is regulated
by Law nº 4.944 of 04/06/1966 and nº 5.988 of 12/14/1973. According
to these laws, the author of an intellectual work has the exclusive privilege
of reproduction, distribution and economic exploration of the work itself.
All creative works of inspiration howsoever expressed are protected as
intellectual property (copyrights).
The author is considered as the person claiming to be the author or
whose name is included in the registered work. Individuals and corporations
are allowed to own the copyright to a work; however, a corporation must
file the transfer of rights.
Not only the right to claim a work, but also to have his name announced
as the author is grated by the Law. The right of conservation and modification
are included as the author’s right.
However, even though registration is optional and not essential for
its protection, any person who adapts, translates, arranges or edits a
work that is no longer under copyright may claim the right to the work.
Once registered it may not prevent the publication of another adaptation,
translation, arrangement or edition of the same work unless the new version
is derived from the original.
Nevertheless, in order to secure the copyright the author may register
his/her work with the following bodies, depending on its nature:
Any other work that cannot be classified within any of the above categories
may be registered at the Brazilian Copyright Information Center of the
National Copyright Council.
Therefore, any person who adapts, translates, arranges or edits a work
that is no longer under copyright may claim the copyright to the work,
but he/she cannot prevent the publication of another adaptation, translation,
arrangement or edition of the same work unless the new version is derived
from his/her own.
Infringement Consequences
Proceedings in the civil and criminal courts may be brought against
anyone who infringes another' copyright. The civil courts prohibit publication
of a work which infringes copyright, and can also award damages to the
owner of the copyright. Infringement of copyright can also be punished
as an offense by the criminal courts.
TECHNOLOGY TRANSFER AGREEMENTS
Technology transfer agreements in Brazil is now ruled by Normative Ruling
nº 120 12/17/93 issue by INPI. According to this ruling, agreements
that involve licensing of industrial property rights (trademarks and patents),
transfer of know-how, cost sharing with regard to research and development
programs, franchises, and technical, scientific and similar assistance
services will be limited to INPI examination and approval.
Other valid documents evidencing the transfer of technology and conditions
governing such transfers (invoices, for instance) may also be submitted
to INPI for approval.
The INPI approval of such agreements is not only essential for the registration
at the Central Bank of Brazil that will allow remittance of the remuneration
abroad, but also for the deduction of fees paid by the licensee or recipient
of the technology as operating expenses. In addiction, others documents
approval will permit remittance of funds abroad and tax deduction of payments resulting from the transfer.
Proceedings
The request for approval must be submitted to INPI on the proper form,
together with an original of the agreement or equivalent document. INPI may request further documentation. Approval
will be granted within 30 days, otherwise, the agreement or equivalent
document will be considered automatically approved.
General Contract Conditions
Parties may now freely agree on the conditions of the agreement without
INPI interference; however some requirements are necessary. Generally,
technology transfer agreements must clearly state their object and the
industrial property rights involved, and describe in detail how and where
the transfer will actually take place. For instance, the contract must
specify the acquisition of techniques, planning and programming methods,
research, studies and projects intended for execution or rendering of specialized
services.
The term of the agreement must not exceed the validity of the trademark
registration or patent. Contracts for rendering of technical and scientific
assistance services must state the time required to perform the specialized
services, the number of technicians required, their specialization and
training programs, and must specify the remuneration.
Remuneration of the technology to be transferred may be established
at a fixed price, a fixed price per item sold, a percentage of the profits,
or a percentage of the net sales price, less taxes, fees and other charges
agreed to by the parties.
Patent and Trademark License Agreements
Trademark and patent license agreements must also state whether the
license is exclusive, and whether sub-licensing is permitted. The term
of the agreement must not exceed the validity of the trademark registration
or patent. Trademark and patent license agreements will only entitle the
owners to collect fees if the requirements mentioned above are met.
In addition to securing protection, the register of a trademark or patent
within the priority period pursuant to the Convention, enables them to
be licensed or transferred in return for a royalty payment.
According to Brazilian legal provisions and regulations, royalties cannot
be charged for trademark or patent license agreements in the following
cases:
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if it is not duly registered in Brazil;
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if it was not filed in Brazil within the priority term;
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if the registration has been renewed;
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if the agreement is made between a branch in Brazil and a parent company
abroad;
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in case of transfer, if the previous owner is not entitled to remuneration;
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if it has been extinguished or is being annulled or canceled.
Both patent and trademark license agreements have to be registered at INPI
and require foreign capital investments. There are no royalty limits anymore
under this new law, therefore, the parties are able to agree in a reasonable
rate.
FRANCHISING
Franchising is rapidly increasing in Brazil and in order to regulate
this commercial activity Congress issues Law nº 8955 in 12/15/94.
Basically, it requires franchiser to give prospective franchisee a detailed
disclosure document at least 10 (ten) days before any money changes hands
or before a franchise is committed to a purchase.
The franchise rule’s disclosure document must provide the following
important information:
a summarizing of the franchiser business organization, the official
name of the company, as well as all the business organizations that franchiser
is involved;
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an audited financial report of the last 2 (two) years;
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all sues which directly involve the franchising business (intellectual
property, for instance);
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specifications regarding the building, accounting, advertising and other
procedures of franchising operation;
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the "ideal franchisee" personality report;
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how franchisee should run the business;
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budget information providing the total investment, all charged fees, the
estimated value of all equipment and necessary basic stock;
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all periodically fees or any amount payable between franchiser and franchisee
(he accounting basis and destinations such as royalties, equipment and
local rent, publicity fee, security fee, etc.);
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a complete report of all franchisee web including master and sub-franchisee
as well as who canceled the agreement in the last 12 months (names, addresses
and phones);
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the territory information that must include if there is an exclusivity
or priority rights and all the requirements. It also has to include if
franchisee is able to do business or export out of his/her territory;
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clearly and detailed information about the suppliers such as exclusivities
or necessity of franchiser approval, including the suppliers list;
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specifications regarding about:
1) inspections,
2)orientation and franchiser service,
3) franchisee training (including cost term and curriculum),
4) employee training,
5) franchising manual,
6) the business localization choice, and
7) layout and architecture structure;
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INPI (Brazilian Intellectual Property Institute) registration
and proceeding situation;
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the franchisee responsibilities after contract expiration
regarding the "know how" and business competition; and
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the provisional agreement and the final contract, including
the deadline and all attachment documents.
The franchising agreement requires two testimonies. It is not necessary
to be registered unless it is an international agreement. In this case,
INPI and Brazilian Central Bank registrations are mandatory.
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