Protecting and enforcing design rights: Brazil
In Brazil, the legal provisions for industrial designs are included in the Industrial Property Law (9,279/96). This law is supplemented by normative acts which regulate the National Institute of Industrial Property (INPI). The most recent of these are Normative Acts 44/2015 and 45/2015.
Industrial designs are classified according to the Locarno Agreement and are granted under a registration system that shares similarities with the Brazilian patent system.
Unlike the EU unregistered Community design system, Brazilian design law provides no protection for unregistered designs. This means that the author of a design must obtain registration in order to prevent unauthorised third-party use. In rare cases, pursuing copyright protection may be an option to prevent third parties from exploiting a design.
Definition and conditions
Article 95 of the Industrial Property Law defines an ‘industrial design’ as: “any ornamental plastic form of an object or any ornamental arrangement of lines and colours 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.” Thus, industrial designs may take a three-dimensional (3D) form as the manufactured form of an article, or a two-dimensional (2D) form as the arrangement of lines and colours that may be applied to a product.
Both 2D and 3D designs must include visual aspects which are considered ornamental. Designs created based on solely functional purposes are not registrable (Article 100 II). For instance, a blank spherical design created for a soccer ball is not eligible for registration, since without that shape the article would not perform its function correctly. Ornamental aspects may be understood as the visual features of a design which make it distinctive from other similar designs – particularly from similar articles which perform the same function.
Requirements for registration
Novelty is the first requirement for registration. An industrial design is considered ‘novel’ when it cannot be found in the prior art as of its filing or priority date.
However, a grace period exists which provides an exception to this rule. Accordingly, a disclosure of the design that takes place up to 180 days before its filing date (or its priority date, if applicable) will not be considered as part of the state of the art, provided that it is made by:
- the author;
- the INPI, through official publication of the design application without the consent of the author and based on information obtained from him or her or as the result of acts performed by him or her; or
- third parties, through information obtained directly or indirectly from the author or as a result of acts performed by him or her.
Originality is the second requirement for registration. A design is ‘original’ when it creates a distinctive visual appearance compared to other prior designs. This original visual effect may be the result of a combination of known elements.
Lastly, the design must serve as the basis for industrial manufacture. This means that identical specimens of the article featuring the design must be produced in the industry. This requirement usually provides the basis for the rejection of applications aimed at protecting artistic works as artisanal objects, because it is impossible to produce identical specimens.
Registration may be made by:
- the author or his or her heirs or successors in title;
- an assignee; or
- any person designated as the owner by law, employment contract or contract of service.
If an industrial design is created jointly by two or more parties, the application for registration may be made by all parties or a single party. If only one party applies, it must provide the names and particulars of the other parties in order to safeguard their rights.
Application and prosecution
The industrial design application may be submitted by paper copy or electronically. Once filed, the application is examined only according to formal aspects. However, after grant the owner may require the INPI to examine the design on the merits, based on registration requirements. The result of the examination is issued in the Official Bulletin. If the result does not favour maintenance of the design, the INPI will invalidate the design ex officio.
An industrial design application must refer to a single article. However, many variations are allowed, provided that each variation is part of the same set and maintains the same preponderant distinctive characteristics. Each application is limited to 20 variations.
An applicant may submit the drawings (at least 300 dots per inch on A4 print) in black and white or in colour. Designs relating to 3D objects should preferably be illustrated with regular and continuous lines, and from the perspective, front, rear, right, left, top and bottom views. Designs relating to 2D patterns must also be illustrated with regular and continuous lines; however, only the orthogonal front view need be shown.
Where the drawings of a priority document include dashed lines, in order to maximise protection it is advisable to file the application with a set of drawings in which the dashed lines are removed in one version and made solid in another.
A description of the illustrations of the design, including its technical field, is always recommended in order to enhance the examiner’s understanding, thus reducing the risk of office action in this regard.
During prosecution, failure to act within the legally prescribed term will result in the shelving of the application. Such circumstances include non-compliance with an office action or non-payment of a renewal fee during the given term. In addition, if an applicant is not domiciled in Brazil or delegates representation to an attorney, failure to present the power of attorney during the specified term will result in abandonment. Under this circumstance, reinstatement of the industrial design is not possible.
The publication of an industrial design occurs at the same time as grant. The rights holder may defer publication by requesting at the time of filing that the design remain secret for at least 180 days from the filing date. Decisions to shelve or reject applications are also published, including the claimed design in the state of the art.
In order for a design application to claim priority from an earlier filed foreign application, it must be filed within six months of the priority date; further, the applicant must file a certified copy of the prior application within 90 days of the Brazilian application. When the applicants for the priority application and the Brazilian application are different parties, an assignment of priority rights executed by both parties must be submitted. The assignment must be submitted within 180 days of the Brazilian application. No notarisation or legalisation is necessary.
An industrial design is valid for 10 years from its filing date. However, this term may be further extended by three successive periods of five years through filing requests for extension. Thus, the total term of validity for an industrial design may reach 25 years.
A third party may try to invalidate a registered design by bringing an administrative nullity procedure. This action may be attempted within five years of granting the design.
Administrative nullity proceedings may also be brought ex officio by the INPI where the examiner understands that the design is not novel or original.
After an administrative nullity procedure is commenced, the rights holder will be notified through publication in the Official Bulletin to present arguments in favour of the maintenance of the design within a 60-day term. Subsequently, the INPI will issue a technical report with an opinion, to which the rights holder and the petitioner must respond within 60 days. Regardless of whether a response is presented, the process will then be ruled on by the president of the INPI, who will issue the final decision for the administrative process.
Regardless of whether the five-year term has lapsed, a third party may also file a nullity action in the courts against a granted design. This action may be instituted at any point during the lifetime of the registration.
The unauthorised manufacture of a product that incorporates a registered industrial design – or a substantial imitation thereof – and that is likely to mislead or cause confusion constitutes infringement. In addition, a party infringes an industrial design if it:
- exports, sells, exhibits, offers for sale, keeps in stock, conceals or receives, with a view to using for commercial purposes, an article that unlawfully incorporates a registered industrial design or a substantial imitation thereof that is likely to mislead or cause confusion; or
- imports a product that incorporates an industrial design registered in Brazil, or a substantial imitation thereof, that may mislead or cause confusion and has not been placed on the external market directly by the registered owner or with its consent.
The penalty for infringement is imprisonment for between three months and one year or a fine.
Infringement actions may be filed by the rights holder or an authorised exclusive licensee (provided that the licence agreement vests the licensee with the power to act in Brazil). The lawsuit is filed before a state court of law with jurisdiction where the infringement is taking place; however, the venue may change depending on other factors.
The basic scope of an infringement action is to prove the existence of infringement and to request past and present damages for the use of the infringing product. The plaintiff may also request measures to reduce the damage caused by commercialisation of the infringing products (eg, seizure of the infringing products or cease and desist orders), either preventively or in the course of the litigation.
The first criterion to prove infringement is valid registration in Brazil. It is advisable to request the INPI to perform substantive examination of the design in order to have its official decision on the merits of the design before initiating the lawsuit, since the grant decision is almost automatic. Second, the infringed design must meet originality and novelty requirements. No evidence of the prior art is required, although expert analysis is advisable.
The grounds for infringement should be established through comparative analysis; technical examination by an expert in the art can also be helpful.
At this stage, preliminary injunctions may be requested, although injunctions can also be granted in the course of the litigation.
The most commonly used defences are those that undermine the infringed design’s claims to novelty and originality or make use of procedural flaws in order to invalidate the design registration. However, a defence should also demonstrate through comparison that the shape of the allegedly infringing product (as compared to the registered design) may not lead the consumer to make a mistake when purchasing the product (ie, cause confusion or undue association).
Ownership changes and rights transfers
An industrial design may be assigned in whole or in part. The INPI will record:
- assignments, including the full particulars of the assignee;
- limitations or conditions placed on the design; and
- changes to the name, headquarters or address of the registrant or owner.
The holder of an industrial design may conclude a licensing contract and may vest in the licensee full powers to act in defence of the design. Such contract will be enforceable against third parties only if it is recorded with the INPI. Any improvements made to a licensed design belong to the person which has made them; the other contracting party will have a preferential right to a licence.
Section 124 of the Industrial Property Law provides protection for figurative, composite and 3D marks, provided that the intended sign is not:
- protected by registration as an industrial design by a third party; or
- the necessary, common or usual form of a product or packaging, or a form that cannot be dissociated from a technical effect.
Protection for a certain view of the design as a mark may thus be sought, provided that it does not fall under the above prohibitions and it performs the function of a trademark (ie, it can be used to distinguish a certain product or service in the market).
Section 124 further forbids the registration of signs that are generic, necessary, common, usual or simply descriptive in relation to the products or services identified. Therefore, in order to be protected as a mark, the design must be both distinctive and distinct from any prior registered marks.
Although protection under copyright and industrial design law may overlap, the standards and scope of protection under the rights are different. Copyright protection covers works of art that are not identical to prior existing works. The originality standard is thus lower than that required for industrial design protection. The work of art must also be creative and designed by a natural person; therefore, if the applicant for registration is a company, an assignment from a natural person is required.
In Brazil, copyright is protected regardless of registration. However, it is usually advisable to protect the work of art through registration. This is granted automatically, since the registrar applies no scrutiny regarding the novelty or originality aspects of the design, but simply conducts a review of the documents presented based on formalities.
In addition to the general rules regulating unfair competition practices (which could thus be claimed in a design infringement case), Section 195 of the Industrial Property Law also expressly provides that a false declaration of design protection is a crime.
Under Section 195(XIII), an act of unfair competition is committed by any party which: “sells, displays or offers for sale a product falsely declaring that the product is protected by a pending or granted patent, or by an industrial design registration, or mentions in an advertisement or on commercial stationery that it is pending, patented or registered when this is not the case.”
The penalty for a false declaration of design protection is imprisonment for between three months and one year or a fine.
DANIEL Legal & IP Strategy
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Rio de Janeiro RJ 20031-170
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