BRAZIL Law and Practice Contributed by: Eduardo Hallak, Juliana Neves, Jorge Tinoco and Lívia Dias, Licks Attorneys
an accounting expert to calculate the relevant amount owed. The parties are expected to intervene in this quantification phase and may designate their own accounting assistants and submit questions to the court expert. This calculation will also account for monetary adjustment as appropriate considering the date on which infringement took place. If an accused infringer that has been targeted by enforcement action (eg, through preliminary injunc ‑ tive relief) prevails in their defence, they may request damages from the patentee. This claim for damages is specifically allowed under Article 302 of the CPC. If third parties (ie, parties that were not directly target ‑ ed by infringement lawsuits) are affected by wrongful enforcement, they may seek damages through sepa ‑ rate proceedings, although this is very rare. In this scenario, the parties claiming damages must dem ‑ onstrate: • the harm they suffered; • the existence of an unlawful act by the patentee; and • the causal link between the unlawful act and the harm. 5.5 Legal Costs Under Brazilian law, some legal costs are recoverable, while others are not. The relevant provisions are found in Article 82 et seq of the CPC. Specifically, a successful litigant (plaintiff or defend ‑ ant) may recover the following costs upon prevailing in the lawsuit: • court costs (eg, filing fees, court expert fees); • travel costs (eg, travelling for in-person hearings); • technical assistance costs (eg, fees owed to a party’s technical assistant); and • daily stipends for witnesses (eg, expenses incurred to ensure the participation of witnesses in the pro ‑ ceedings). Legal costs associated with hiring and retaining law ‑ yers are not recoverable by the prevailing party, but the defeated party (plaintiff or defendant) must pay 10% to 20% of the claim’s value to the prevailing
party’s attorneys. This amount is not paid to the suc ‑ cessful party: it is owed directly to the attorneys of the prevailing party as a form of “award” for succeeding in the lawsuit 5.6 Relevance of Claimant/Plaintiff Conduct to Relief Although Brazil does not establish pre-litigation con ‑ ditions for the plaintiff (eg, a requirement to engage in pre-action correspondence), prospective claimants may benefit from being mindful of the following issues: • plaintiffs who take a long time to file claims against infringement are less likely to attain PIs and other forms of interim relief, considering that “urgency” is an important requirement when assessing these requests; • the Administrative Council for Economic Defence (CADE) is the Brazilian antitrust authority and may take action against plaintiffs engaging in patent misuse and sham litigation (eg, levying fines and other sanctions); and • courts may levy fines against bad-faith litigants who engage in conduct detrimental to the lawsuit (eg, making false representations, unjustifiably delaying proceedings, producing baseless filings). Trade mark disputes are common in the life sciences. Courts are often called upon to decide on infringement disputes, which are not limited to controversies over product naming, but also encompass presentation and trade dress concerns. Moreover, given the public interest issues inherent to the life sciences industry, judges tend to be stricter when assessing the risk of consumer error in a trade mark case. The governing law for trade marks is found in the BPS. However, life science trade marks are subject to addi ‑ tional regulatory scrutiny by ANVISA, as established in Statute #6,360/76. According to Article 5 of said stat ‑ ute, products regulated under health vigilance rules may not be marked with names, labels or packages that may induce consumer error. 6. Other IP Rights 6.1 Trade Marks
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