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
8.2 Cumulative and Overlapping Protection Brazilian law does not generally prohibit cumulative IP protection over the same subject matter, provided that each right meets its own eligibility requirements. A product design, for example, may simultaneously qualify for industrial design registration, three-dimen- sional trade marks, trade dress and copyright if it meets the originality threshold. Courts have recog- nised overlapping protection in practice, though they tend to analyse each protection independently. There is no absolute hierarchy among IP rights; rath- er, what applies is the principle of specialty and the prevalence of prior use and good faith. Rights-holders are encouraged to assert all applicable IP rights simul- taneously to strengthen their enforcement position. 8.3 Patents and Trade Secrets Brazilian law permits the concurrent use of patent and trade secret protection over different aspects of the same technology. It is common practice to file a patent application for a core invention, since it is suf- ficiently descriptive, while maintaining manufacturing processes, formulations or implementation details as trade secrets. Once a patent application is published by INPI – typi- cally 18 months after filing – the disclosed information enters the public domain and can no longer be inde- pendently protected as a trade secret. However, tech- nical information that was not disclosed in the pat- ent specification may continue to be protected under trade secret law after publication or even after the patent expires. If a patent is invalidated, trade secret protection does not automatically revive in relation to information that was publicly disclosed in the applica- tion; but undisclosed complementary know-how may remain protectable. 8.4 Trade Marks, Trade Dress and Industrial Designs Brazilian law distinguishes among trade marks, trade dress and industrial designs based on their function and registration regime. Trade marks protect distinc- tive signs that identify the commercial origin of goods or services and are registered before INPI under Law No 9,279/1996. Industrial designs protect the orna- mental or aesthetic aspects of a product’s appear-
ance and are also registered before INPI, but under a separate regime with distinct requirements of novelty and originality. Trade dress – the overall commercial appearance of a product or its packaging – does not have it is own regime in Brazil and is a doctrine creation, but it is recognised by the judiciary under unfair competi- tion law. Cumulative protection of product shapes or packaging as both industrial designs and trade marks is legally permissible in Brazil, provided the relevant requirements are independently satisfied, and is a rec- ognised strategy for extending IP protection beyond In Brazil, logos, artistic works and other brand ele- ments can simultaneously attract copyright and trade mark protection. Copyright arises automatically upon the creation of an original work, while trade mark requires registration before INPI. A stylised logo may therefore be protected as an artistic work under the Copyright Act (Law No 9,610/1998) and as a figurative or mixed trade mark. Copyright law does not impose explicit limitations on trade mark enforcement, nor does trade mark law restrict the exercise of copyright, and both sets of rights are generally enforced independently through civil proceedings. In practice, rights-holders routinely invoke both regimes in infringement actions to broad- en the scope of protection, while courts have not iden- tified a systemic conflict between the two regimes in the Brazilian context. 8.6 Enforcement and Remedies Across Multiple IP Rights Brazilian procedural law allows rights-holders to con- solidate claims based on different IP rights in a single set of proceedings before the state courts, provided the claims are factually and legally connected. Courts assess remedies on a claim-by-claim basis, and there is no statutory prohibition on cumulative recovery under different IP regimes in the same action. How- ever, judges retain discretion to avoid overcompensa- tion, and in practice awards are calibrated to reflect the actual harm suffered. the term of a design registration. 8.5 Copyright and Trade Marks
26 CHAMBERS.COM
Powered by FlippingBook