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INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - BRAZIL
Industrial Property Law - Law Nº 9.279, of May 14, 1996
CHAPTER X: ISSUE OF REGISTRATION CERTIFICATIONS
Article 161 - A registration shall be issued once the application has been allowed and proof is made of payment of the corresponding fees.
Article 162 - The payment of fees, and proof of payment, with respect to the issue of the registration certificate and to the first 10 years of protection, shall be effected within 60 (sixty) days as from the date of the decision to allow.
Sole Paragraph - The fees may also be paid and proven within 30 (thirty) days following the period referred to in this Article, independent from notification,on payment of a specific fee, under penalty of the application being deemed definitively withdrawn.
Article 163 - A registration certificate shall be deemed to have been issued on the date of the publication of the corresponding decision.
Article 164 - The certificate shall mention the mark, number and date of registration, owner name, nationality and domicile, products or services, registration characteristics and the foreign priority.
CHAPTER XI: NULLITY OF REGISTRATIONS
Section I: General Provisions
Article 165 - A registration granted contrary to the provisions of this Law shall be null and void.
Sole Paragraph - Nullity of the registration may be total or partial, and a condition for partial nullity shall be the fact that the remaining part is registrable.
Article 166 - The owner of a mark registered in a country that is a signatory of the Paris Convention for the Protection of Industrial Property, may, alternatively, institute legal proceedings to claim the ownership of the registration, in accordance with provisions of article 6 septies (1) of that Convention.
Article 167 - A declaration of nullity shall produce effect as from the filing date.
Section II: Administrative Procedure for Nullity
Art 168 - Nullity of the registration shall be declared administratively if the registration has been granted contrary to the provisions of this Law.
Art 169 - A nullity procedure may be instituted ex officio or at the request of any person with a legitimate interest within a period of 180 (one hundred and eighty) days as from the date of issue of the certificate of registration.
Article 170 - The owner shall be invited to submit his comments within a period of 60 (sixty) days.
Article 171 - After the period of time referred to in the preceding Article, even if no comments have been submitted, proceedings shall be decided by the President of INPI, and the administrative procedure shall be closed.
Article 172 - Nullity proceedings shall continue even if the registration has lapsed.
Section III: Nullity Proceedings
Article 173 - Nullity proceedings may be instituted by INPI or by any person having a legitimate interest.
Sole Paragraph - During the course of the proceedings the judge may grant an injunction suspending the effects of the registration and the use of the mark, provided that the relevant procedural requirements are complied with.
Article 174 - Proceedings to declare the nullity of a registration shall prescribe within a period of 5 (five) years from the date of registration.
Article 175 - Nullity proceedings shall be filed before the Federal Courts and in those cases in which INPI is not the plaintiff INPI shall participate in the proceedings.
Paragraph 1 - Where a defendant is the registered owner he shall be given a period of 60 (sixty) days to submit his comments.
Paragraph 2 - When the decision on nullity proceedings becomes final, INPI shall publish a notification to inform other parties.
TITLE IV: GEOGRAPHICAL INDICATIONS
Article 176 - A geographical indication shall be an indication of the source or origin denomination.
Article 177 - Indication of the source shall mean the geographic name of a country, city, region or locality in its territory, which has become known as the center of extraction, production or manufacture of a given product or of the provision of a given service.
Article 178 - Denomination of origin shall be the geographical name of country, city, region or locality in its territory, used to designate a product or service of which the qualities or characteristics are exclusively or essentially due to the geographical environment, including natural and human factors.
Article 179 - Protection shall extend to the graphical or figurative representation of a geographical indication, as well as the geographic representation of the country, city, region or locality in which the name is a geographical indication.
Article 180 - Where the geographical name has entered into everyday use designating a given product or service, it shall not be deemed a geographical indication.
Article 181 - A geographical name that is not an indication of source or denomination of origin may be used as a characteristic element of a product or service mark provided it does not suggest a false origin.
Article 182 - The use the geographic indication shall be reserved to the producers and service renderers established in that locality and, regarding denominations of origin, quality requirements shall also be complied with.
Sole Paragraph - INPI shall establish the conditions for registration of geographic indications.
TITLE V: INFRINGEMENT OF INDUSTRIAL PROPERTY
CHAPTER I: INFRINGEMENT OF PATENT
Article 183 - An infringement of patent of invention or utility model is committed by any person who:
Article 184 - An infringement of patent of invention or utility model is committed by any person who:
Article 185 - Supplying a component of a patented product, or material or equipment for carrying out a patented process, where the end use of the component, material or equipment, necessarily, implies exploitation of the subject matter of the patent.
Penalty - imprisonment, from 1 (one) to 3 (three) months, or fine.
Article 186 - The acts referred to in this chapter shall also constitute infringement even if they do not affect all claims under the patent or if they are limited to the use of means equivalent to the subject matter of the patent.
CHAPTER II: INFRINGEMENT OF INDUSTRIAL DESIGNS
Article 187 - Manufacturing, without consent authorization of the owner, a product that incorporates a registered industrial design, or a substantial imitation thereof that is likely to mislead or cause confusion.
Penalty - imprisonment, from 3 (three) months to 1 (one) year, or fine.
Article 188 - Any person who:
CHAPTER III: INFRINGEMENT OF MARKS
Article 189 - An infringement of a registered mark is committed by any person who:
Article 190 An infringement of a registered mark is committed by any person who imports, exports, sells, offers or exhibits for sale, conceals or keeps in stock:
CHAPTER IV: INFRINGEMENTS COMMITTED BY MEANS OF MARKS, TITLES OF ESTABLISHMENTS AND ADVERTISING SIGNS
Article 191- Reproducing or imitating, in whole or in part, in a manner that may mislead or cause confusion, armorial bearings, crests or official public distinctions, whether national, foreign or international without the required authorization, in a mark, title of establishment, commercial name, insignia or advertising sign, or using such reproductions for commercial purposes.
Penalty - imprisonment, from 1 (one) to 3 (three) months, or fine.
Sole Paragraph - Any person who sells or exhibits or offers for sale products branded with such marks shall be liable to the same penalty.
CHAPTER V: INFRINGEMENT OF GEOGRAPHICAL INDICATIONS AND OTHER INDICATIONS
Article 192 - Manufacturing, importing, exporting, selling, exhibiting or offering for sale or having in stock a product that bears a false geographical indication
Penalty - imprisonment form 1 (one) to 3 (three) months, or fine.
Article 193 - Using in a product, container, case, tape, label, invoice, circular letter or poster, or in any other means of disclosure or advertising, indicative terms such as "type", "species", "kind", "system", "similar", "substitute", "identical" or the like, failing to clearly state the true origin of the product
Penalty - imprisonment from 1 (one) to 3 (three) months, or fine.
Art 194 - Using a mark, commercial name, title of establishment, insignia, advertising expression or sign or any other form that suggests a source other than the true source, or selling or exhibiting for sale a product bearing such signs.
Penalty - from 1 (one) to 3 (three) months, or fine.
CHAPTER VI: ACTS OF UNFAIR COMPETITION
Article 195 - An act of unfair competition is committed by any person who:
Paragraph 1 - The liability for the offenses referred to in item XI and XII of this Article shall also extend to the employer, partner or administrator of the enterprise.
Paragraph 2 - The provisions of item XIV shall not apply to the disclosure of information by a government agency that is competent to authorize the marketing of a product, where necessary to protect the public.
CHAPTER VII: GENERAL PROVISIONS
Article 196 - The terms of imprisonment provided for in Chapters I, II and II under this Title shall be increased by between one third to half if:
Article 197 - The fines provided for under this Title shall range between a minimum of 10 (ten) and a maximum of 360 (three hundred sixty) daily-fines, in accordance with provisions of the Penal Code.
Sole Paragraph - The fines may be increased or reduced, by up to 10 (ten) times, taking into consideration the personal situation of the agent and the size of the advantage obtained, independent from the preceding Article.
Article 198 - At the time of clearance, customs authorities may seize, ex officio or at the request of an interested party, any products bearing falsified, altered or imitated marks or a false indication of source.
Article 199 - Proceedings with respect to offenses referred to in this Title may be instituted on a private complaint with the exception of the offense under Articles 191 with respect to which public criminal proceedings shall be instituted.
Article 200 - Criminal proceedings and preliminary measures of search and seizure, with respect to infringement of industrial property, shall be governed by the provisions of the Code of Criminal Procedure, with the modifications provided for in the articles of this Chapter.
Article 201 - During execution of a search and seizure measure relating to an infringement of a patent of which the subject matter is a process invention, the bailiff shall be accompanied by an expert who shall make a preliminary verification of the existence of the unlawful act to enable the court to order seizure of the products obtained by the infringer using the patented process.
Article 202 - In addition to the preliminary measures of search and seizure, the party concerned may request:
Article 203 - In the case of a lawfully constituted industrial or commercial establishment that operate in public, the preliminary measures shall be limited to inspection and seizure of the products as ordered by the judge; its lawful activity shall not be brought to a halt.
Article 204 - If a search and seizure order was requested in bad faith, for reasons of competition, simple caprice or gross error, the person who requested the measure shall be liable for losses and damages.
Article 205 - An allegation of nullity of a patent or a registration on which the proceedings are based may constitute a plea of defense in criminal proceedings. However, acquittal of the defendant shall not mean nullity of the patent or registration which may only be claimed in competent proceedings.
Article 206 - If information that is of a confidential nature, whether an industrial or trade secret, is disclosed in the course of proceedings, the court shall decide whether the proceedings shall continue in camera; the other party shall be prohibited form using such information for other purposes.
Article 207 - Independently of the criminal proceedings, the injured party may institute civil proceedings as he considers necessary in accordance with the Code of Civil Procedure.
Article 208 - Compensation shall be determined on the basis of the benefit that the injured party would have obtained had the infringement not taken place.
Article 209 - The injured party shall be entitled to compensation and damages in respect to acts that infringe industrial property rights and acts of unfair competitions that are not specified in this Law, but which are liable to prejudice another's reputation or business or to lead to confusion between commercial,. industrial establishments or service providers, or between products and services placed on the market.
Paragraph 1 - The judge may, in the records of the same proceedings, in order to avoid irreparable damage or damage difficult to recover, order an injunction to cease the infringement or act concerned, before summoning the defendant, subject, where deemed necessary, to bail or bail bond.
Paragraph 2 - In the case of flagrant reproduction or imitation of a registered mark, the judge may order the seizure of all merchandise, products, articles, packaging, labels or other objects bearing the falsified or imitated mark.
Article 210 - Loss of profits shall be determined by those of the following criteria that are most favorable to the injured party:
TITLE VI: TRANSFER OF TECHNOLOGY AND FRANCHISING
Article 211 - INPI shall register the contracts that involve transfer of technology, franchising contracts and the like to enable them to have effect with respect to third parties.
Sole Paragraph - Decisions regarding the application for the recording of contracts of the type referred to in this Article shall be issued within 30 (thirty) days, as from the date of the application for recording.
TITLE VII: GENERAL PROVISIONS
CHAPTER I: APPEALS
Article 212 - Unless explicitly stipulated to the contrary appeals may be lodged against decisions referred to by this law within a period of 60 (sixty) days.
Paragraph 1 - Appeals shall have suspensive and full devolutive effect and all provisions concerning first instance hearing shall be applied, where applicable.
Paragraph 2 - No appeal may be lodged against a decision ordering the final refusal of an application for a patent or for a design registration or against a decision allowing an application for a patent, a certificate of addition or the registration of a mark.
Paragraph 3 - The President of INPI shall decide on the appeals, and the administrative procedure shall be closed.
Article 213 - The interested parties shall be invited to file counter-claims within a period of 60 (sixty) days.
Article 214 - In order to supplement the claims of the appeal INPI may formulate conditions that shall be complied with within 60 (sixty) days.
Sole Paragraph - On expiry of the aforementioned period, a decision shall be taken on the appeal.
Article 215 - A decision on an appeal shall be final and there shall be no appeal from the administrative procedure.
CHAPTER II: ACTS OF THE PARTIES
Article 216 - The acts referred to by this Law shall be performed by the parties or their duly qualified attorneys.
Paragraph 1 - Powers of attorney in their original form, an official copy or a certified photocopy shall be drafted in Portuguese language; consular legalization or a certification issued by a Notary Public shall not be required.
Paragraph 2 - A power of attorney shall be filed within 60 (sixty) days as from the date of the first act by the party to the proceedings, independent from notification or requirement, under penalty of refusal, refusal of a patent application, and an application for registration of an industrial design or an application for registration of a mark shall be final.
Article 217 - A person domiciled abroad shall be required to have a standing qualified attorney domiciled in the Country, with powers to represent such person administratively or judicially and the attorney shall be empowered also to receive summons.
Article 218 - Petitions shall not be taken into consideration:
Article 219 - Petitions, oppositions and appeals shall not be taken into consideration if:
Article 220 - Whenever possible, INPI shall take into account the acts of the parties and may impose any necessary conditions.
CHAPTER III: TIME LIMITS
Article 221 - The time limits laid down by this Law shall be continuous, and the right to perform an act shall automatically lapse on termination of the time limit unless the party concerned proves that the act was not performed for legitimate reasons.
Paragraph 1 - Legitimate reasons mean an unforeseeable event, beyond the control of the party concerned which has prevented the party from carrying out the act.
Paragraph 2 - Where legitimate reasons are admitted, the party concerned shall carry out the act within the period of time afforded by INPI.
Article 222 - To calculate the time limits, the first day shall be excluded and the last day shall be included.
Article 223 - Time limits shall begin to run only on the first working day after notification is made by publication in INPI official organ of communication.
Article 224 - If no express provision is made by this Law, the time limit for a party to perform an act shall be 60 (sixty) days.
CHAPTER IV: PRESCRIPTION
Article 225 - Proceedings for damages suffered by industrial property rights shall become prescribed after 5 (five) years.
CHAPTER V: DECISIONS OF INPI
Article 226 - The acts of INPI in administrative proceedings regarding industrial property shall take effect only after publication in the respective official organ of communication, except:
CHAPTER VI: CLASSIFICATIONS
Article 227 - Classifications relating to the subject matter of Titles I, II and III of this Law, shall be established by INPI, in those cases where they were not laid down by an international treaty or agreement in force in Brazil.
CHAPTER VII: FEES
Article 228 - Fees shall be charged for the services provided in accordance with the provisions of this Law; the amounts of such fees and the form of collection shall be established by a decision of the head of the federal public administration agency to which INPI reports.
TITLE VIII: TRANSITIONAL AND FINAL PROVISIONS
Article 229 - The provisions of this Law shall apply to all applications pending, except with regards to the patentability of substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds or products, and medicines of any kind, as well as to the corresponding process for obtaining or modifying them, which shall only be entitled to privileges in accordance with the provisions established in articles 230 and 231.
Article 230 - An application for a patent may be filed with regard to substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds or products, and medicines of any kind, and the respective process for obtaining or modifying them by the person who holds protection afforded under a treaty or convention in force in Brazil, and with respect to which the date of the initial foreign filing is recognized, provided that its subject matter has still not been placed on any market, by a direct initiative of the owner or by another party with the consent of the owner, nor have serious and effective preparations for exploiting the subject matter of the application or patent been made in the Country by other parties.
Paragraph 1 - Applications shall be filed within a period of 1 (one) year as from the date of publication of this Law, and shall state the date of the initial application filed abroad.
Paragraph 2 - Applications for patent filed in accordance with to the provisions of this Article shall be automatically published, and the interested parties shall have the right to submit comments within 90 (ninety) days, on whether the aforementioned conditions of this Article have been complied with.
Paragraph 3 - Once provisions of articles 10 and 18 of this Law and the provisions of this Article have been complied with and grant of a patent in the country of first application has been proven, a patent shall be granted in Brazil in exactly the same terms as granted in the country of origin.
Paragraph 4 - A patent granted on the basis of this Article shall enjoy the remaining term of protection in the country of first application beginning with the date of filing in Brazil and limited to the term of protection laid down in Article 40, and the provisions of the sole Paragraph of that article shall not apply.
Paragraph 5 - An applicant who has filed an application that is pending with respect to substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds and medicines of any kind, as well as the corresponding processes for obtaining or modifying them, may file a new application within the period of time and under the provisions of this Article, submitting proof of relinquishment of the pending application.
Paragraph 6 - The provisions of this Law shall apply. where appropriate, to applications filed and to patents granted in accordance with the provisions of this Article
Article 231 - A patent application may be filed for the subject matters referred to in the preceding Article by a national or a person domiciled in the Country and enjoy the date of the disclosure of the invention provided its subject matter has not been placed on any market, at the direct initiative of the owner or by another party with the consent of the owner and that no other parties have carried out in the Country serious and effective preparations for exploiting the subject matter of the application.
Paragraph 1 - The application shall be filed within 1 (one) year as from publication of this Law.
Paragraph 2 - Patent applications filed in compliance with the provisions of this Article, shall be prosecuted in accordance with the provisions of this Law.
Paragraph 3 - A patent granted on the basis of this Article shall enjoy the remaining term of protection of 20 (twenty) years as from the date of disclosure of the invention as from the date of filing in Brazil.
Paragraph 4 - An applicant who holds a pending application for a patent relating to a subject matter to which the preceding Article refers may file a new application within the period of time and subject to the provisions of this Article submitting proof of relinquishment of the pending application.
Article 232 - The production or use, in accordance with the provisions of the preceding legislation, of substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds or products and medicines of any type, as well as the corresponding processes for obtaining or modifying them, even if protected by a product or process patent in another country in accordance with a treaty or convention in force in Brazil, may be pursued under the same conditions that existed prior to the approval of this Law.
Paragraph 1 - No retroactive or future claim of any value or on any grounds, shall be admitted with respect to products manufactured or processes used in Brazil in compliance with the provisions of this Article.
Paragraph 2 - Likewise, no claim as described in the preceding paragraph shall be admitted if, during the period prior to the entry of this Law into force, significant investment has been made for the exploitation of a product or of a process as referred to in this Article, even if protected by a product or process patent in another country.
Article 233 - Applications for the registration advertisement expressions and signs for declarations of notoriety shall be definitively refused and the registrations and declarations already granted shall remain in force for the remainder of their term, but may not be renewed.
Article 234 - Priority guarantees in accordance with Article 7 of Law no. 5.772 of December 21, 1971 shall be enjoyed by the applicants up to expiry of the current time limit.
Article 235 - Time limits granted under Law no. 5.772 of December 21,1971 shall be guaranteed.
Article 236 - Applications for industrial model and industrial design patents filed under Law no. 5.772 of December 21, 1971, shall be automatically designated applications for registration of industrial designs and for all legal purposes publications shall be deemed made.
Sole Paragraph - Payments made with respect to such adapted applications shall be taken into account to calculate due five-year fee.
Article 237 - The provisions of article 111 shall not apply to applications for industrial model or industrial design patents that have been examined in accordance with the provisions of Law no. 5.772 of December 21, 1971.
Article 238 - Appeals filed under Law no. 5.772 of December 21 1971 shall be decided in accordance with the provisions of that Law.
Article 239 - The Government is hereby authorized to carry out any changes within INPI required to ensure its financial and administrative autonomy; INPI shall be authorized to:
Sole Paragraph - The expenditure resulting from the enforcement of the provisions of this Article shall be paid by INPI with own resources.
Article 240 - Article 2nd of Law no. 5.648 of December 11 1970, shall be reworded as follows:
Article 241 - The Judiciary is hereby authorized to establish special courts to hear matters relating to industrial property.
Article 242 - The Government shall submit to the National Congress a draft law intended to promote, where necessary, the harmonization of this Law with the industrial property policy enforced by other countries that are members of the MERCOSUR.
Article 243 - This Law shall be in force on the date of its publication, with respect to the matter contained in Articles 230, 231, 232 and 239 and, 1 (one) year after publication with respect to the remaining Articles.
Article 244 - Law no. 5.772 of December 21, 1971, Law no. 6.348 of July 7, 1976, Articles 187 to 196 of Decree-Law no. 2.848 of December 7, 1940, Articles 169 to 189 of Decree-Law no. 7.903 of August 27, 1945, and all other contrary provisions are hereby repealed.