BRAZIL Law and Practice Contributed by: Fabiano de Bem da Rocha, Gustavo Bahuschewskyj Correa, Kamille Trindade Machado and Milton Lucídio Leão Barcellos, Leão Intellectual Property
ECAD), which manages public performance rights. Tariffs are subject to regulatory oversight and may be challenged in court. While Brazil does not broadly adopt compulsory licensing schemes, certain statutory licences exist in specific contexts, and disputes over royalties or tariffs are typically resolved through judicial proceedings. 4. Industrial Designs and Trade Dress 4.1 Legal Framework and Protectable Subject Matter The law that governs the protection of industrial design registrations in Brazil is Law No 9,279, passed in 1996. However, trade dress is not registered; it is protected under unfair competition pursuant to Article 195, subsection III, of that law. Protection may be granted for the ornamental shape of an object, as well as for ornamental combinations of lines and colours that can be applied to a product. 4.2 Requirements for Protection In Brazil, novelty and originality are requirements for the protection of industrial designs. Furthermore, the law does not consider the following as registra- ble industrial designs: anything contrary to morality, public decency or the image of persons, among other things. It also excludes the common or ordinary form of an object, and a form determined by technical or functional considerations. No rights arise from unregistered industrial designs. Regarding trade dress, inherent distinctiveness, non- functionality and originality must be proven, and pro- tection is granted under unfair competition laws. 4.3 Registration and Term To register an industrial design in Brazil, you must file an application with INPI containing images or pic- tures of the object in five different views, with clear visualisation and high definition. Once the formal requirements are met, the application is published and simultaneously granted industrial design registration. Substantive examination can be requested after the
grant decision with the payment of a specific official fee. The registration fee is valid for five consecutive years. Registration protection lasts ten years from the appli- cation filing date and can be extended for three suc- cessive periods of five years each. The total term of the industrial design registration in 25 years. 4.4 Enforcement and Remedies Manufacturing products that incorporate a registered industrial design or substantially imitate one in a way that could lead to error or confusion constitutes an infringement. The same applies to the export, sale, storage, commercial use or import of a product pro- tected by an industrial design. In the case of trade dress, infringement occurs through imitating an external form that could mislead or con- fuse consumers. This is considered an act of unfair competition. The owner may take civil and criminal legal action against the infringer, including filing for injunctions, emergency/preliminary injunctions and border meas- ures to stop the infringement. 4.5 Functionality and Technical Features In Brazil, courts resolve functionality issues in infringe- ment or registration invalidation lawsuits by seeking technical expert opinions. These opinions are pro- vided by experts who have specialised knowledge of the relevant field. Under the Brazilian Industrial Prop- erty Law, there is no protection for partial designs. A design may be refused or invalidated for technical reasons. 5. Trade Secrets 5.1 Legal Framework and Protectable Information Brazil does not have a standalone “Trade Secrets Act”. Protection is mainly derived from: • the Industrial Property Law (Law No 9,279/1996) through the repression of unfair competition, including the criminal offence of unauthorised
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