BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
there is prima facie evidence of infringement and risk of irreparable harm (Article 300, Brazilian Civil Procedure Code and paragraph 1, Article 209, LPI). The judge must also weigh up the hardship caused by the decision granting the injunction, as opposed to the hardship caused by not grant- ing it. The plaintiff may be required to provide a bond or a fiduciary guarantee if the judge deems it necessary. If an interim injunction is eventually revoked, the plaintiff will be liable for damages possibly sup- ported by the defendant due to the injunction (item III, Article 302, Brazilian Civil Procedure Code). The damages shall be sought in a sepa- rate lawsuit filed by the defendant. 2.8 Protection for Potential Opponents Brazilian law does not allow for protective let- ters to safeguard a potential defendant against requests for interim relief. However, a potential defendant may appeal against an interim injunc- tion. It is also possible to require a bond to be posted by the patent owner; however, it is up to the judge to determine whether the party should submit a bond, and its value. Additionally, according to the Brazilian Civil Pro- cedure Code, the party that requests the injunc- tion is responsible for any injury that the enforce- ment of the injunction causes the other party. Alternative steps that may be taken by the potential opponent are to: • file a non-infringement declaratory action, aimed at obtaining a court decision attesting that there is no infringement; or • file a separate patent annulment lawsuit before the federal courts, aimed at obtaining
a court decision attesting that the patent is null or suspending the effects of the patent at least between the involved parties. 2.9 Special Limitation Provisions Under Article 225 of the LPI, lawsuits for damag- es from industrial property rights violations must be filed within five years, compared to the ten- year limit under the Civil Code. Actions against the BRPTO must also be filed within five years (Article 1, Decree 20,910/32). However, patent nullity lawsuits can be initiated anytime during the patent’s term. 2.10 Mechanisms to Obtain Evidence and Information The Brazilian Civil Procedure Code allows for early production of evidence, enabling courts to order the search and seizure of documents and infringing products, obtain technical opin- ions from court-appointed experts, or hear wit- nesses. Evidence gathered can be used in future lawsuits if necessary. During infringement cases, a court expert works with technical assistants from both parties to provide an impartial opinion to aid the judge’s decision. Brazil does not have discovery proceedings. 2.11 Initial Pleading Standards There are no special provisions for lawsuits in intellectual property proceedings. The same pleading standards as in other civil litigation apply. Concerning infringement lawsuits and bearing in mind that a request for an ex parte preliminary injunction is sought, it is essential that the plain- tiff presents robust evidence of infringement. In this sense, technical and legal opinions from the most prominent Brazilian and international experts are key.
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