N ew Industrial Property Law in Brazil ERICA AOKI - Dorsey & Whitney, Washington DC JOAO MARCOS SILVEIRA - FIESP- Federacao das Industrias do Estado de Sao Paulo The Brazilian Congress is in the process of approving new industrialproperty law1/ which should replace the Industrial Property Code in forcesince December 21, 1971.2.1 The Brazilian Government is attempting to realignBrazilian legislation with the international community standards (mainly tocomply with TRIPS rules3./), primarily by widening the field of patentablesubject matter as well as registrable trademarks. Furthermore, the new billNo. 824-D/91, proposes adherence to the Paris Convention on IndustrialProperty. M1 This article is based on the Bill No. 824-D/91, as approved by the Chamber of Deputies onMay 6, 1993, which is currently under submission of the Senate. This article will notcontemplate exhaustively the changes to be introduced by the new law. It is an attempt to showthe tendencies expressed by this Bill.2 Law No. 5,772 of December 21, 1971.3 Trade Related Aspects of Intellectual Property Rights (TRIPS) of the Agreement embodyingthe results of the Uruguay Round of multilateral trade negotiations.4 Brazil has recently ratified the revised Stockholm version of 1967, by the Decree No. 635/92.
Main Changes Proposed by the Legislative BillI. Patents A. Pharmaceutical and Alimentary Industries: Alimentary andpharmaceutical products will become patentable, as well as theirmanufacturing processes, which are not patentable according to the currentlaw. B. Biotechnology: Microorganisms originated by a specificmanufacturing process will become patentable. Living things andmicroorganisms naturally existing are not patentable. However, exception ismade to microorganisms used exc1usively in a specific product manufacturingprocess, which is patentable. C. Right of Prior Use: Any person who in good will is exploiting aninvention in Brazil, before the filing of a patent application or before thepriority date of a patent, will have the right to continue exploiting theinvention. The right to exploit a patented invention may be assigned orlicensed only when it is accompanied by the business or part of the business towhich it is attached. D. Nullity of the Patent: The bill proposes to grant a right to theinventor who has his invention pirated by another, to either request the 2
nullity af the pirate s patent ar ta request judicial assignment af the patent tahim. E. Compulsory License: A patent awner has ta work the patentgranted in Brazil. Campulsory licenses will be granted after the expiratian afa three year term caunted fram the day af granting af the patent when a patentawner abuses the exclusive rights canferred ta him or practices an act af abuseaf ecanamic pawer (e.g. cartel practices). F. Forfeiture by Lack of Use: The bill allaws the forfeiture af apatent in cases where a campulsory license is nat sufficient ta avaid abuses. G. Industrial Designs: Industrial designs, embracing bath industrialdesigns and madels, will na langer be patentable, but will be subject taregistratian valid for ten years, caunted fram the filing date af the respectiveapplicatian. This periad will be renewable for three successive, five yearperiads. H. "Pipeline": The bill foresees the passibility af filing patentapplicatians related ta alimentary, chemical and pharmaceutical inventiansenjaying the date af the first fareign correspanding applicatian, pravided thata patent has nat yet been granted in the cauntry af arigin, that its abject has 3
not yet been introduced in the market by the patentee or with his consent, andthat third parties have not yet undertaken actual and serious preparative forits exploitation in Brazil. Such applications will be accepted only during thefirst year after the publication of the new law. This right will be extended todomestic applicants, whose applications can benefit from the inventiondisclosure date. I. Validity: Patents of invention will be granted for the period of 20years and utility model for the period of 10 years, counted from the filing date.11. Trademarks A. Trademarks: The bill introduces the concepts of certificationmarks and collective trademarks. B. Unregistrable Signs: The bill identifies new types of unregistrablemarks, such as those which reproduce or imitate the characteristic or essentialelement of a third party s establishment or trade name, which cause confusionar are associated with such distinctive marks; civil names or signatures,family names or patronymic and other persons images, unless with theconsent of the person, his heirs ar successors; notorious pseudonyms orsurnames, individual or collective artistic names, unless with the consent ofthe name-holder, his heirs or successors; literary, artistic or scientific works, as 4
well as titles protected by copyright or which to cause confusion or areassociated with the work, unless with the consent of the author or holder;signs that imitate or reproduce in whole or in part a trademark, the existenceof which could not be ignored by the applicant considering his businessactivities and which belong to a person having an establishment or domicilein Brazil or in a country participating to an international agreement or treatywith Brazil or according reciprocal treatment, when such trademark is usedfor identical or similar products or services and causes confusion or isassociated with the other persons mark. C. Right of Prior Use: The Bill proposes a preference right toregister a trademark to any person who in good faith has been using thetrademark for identical or similar products or services, either under a priorapplication or merely by use. This right can be assigned with the business orthe part of a business to which the trademark pertains. D. Forfeiture by lack of Use: A trademark which is not used for fiveyears will be considered forfeit "ex-officio" upon request. E. Nullity of the Registration: A trademark owner may requestjudicial assignment of the trademark instead of the annulment of theregistration.
IH. Protection of Well-known Marks There is na legislatian ar caurt decisian in Brazil defining what shauldbe cansidered is a well-knaw mark, because af the difficulties in qualifying, inlegal terms, the attribute af being famaus ar well-knawn. These characteristicsare purely factual, and have ta be determined an a case by case basis. Theessential canditian is undaubtedly that the mark must be knawn by thegeneral public or at least by professianals and cansumers directly cancernedwith the product ar service. Ultimately, whether a mark is well-knawn inBrazil will be determined by the INPI in the administrative sphere, ar by thecampetent judges ar Caurts, within the Judiciary Pawer. The law in force in Brazil gives particularly broad protectian for well-knawn marks, cavering all classes af praducts and services. The peculiarity afsuch special protectian assured under the current Cade is that it requires apreviaus and formal recagnitian af the natoriaus status af the mark by theINPI (Natianal Institute af Industrial Property), through a proper registratian.The "declaratian af natoriety" shall take effect upan its publicatian at theIndustrial Property Review, and may nat be used ta appase applicatians forregistratian already granted ar filed prior ta the filing af the applicatian for thedeclaratian in questian. 6
Neither the new bill, nar the law presently in farce, defines ar sets fortllcriteria for establishing the nature af a well-knawn mark, which is and shallbe determined an a case by case basis by the campetent authorities. The Billhawever will grant ta well-knawn marks a broader protectian by eliminatingthe requirement af use in Brazil. The special protectian is maintained farmarks af high reputatian registered in Brazil, regardless af the products orservices, probably under a simplified procedure.
IV. ConcIusion The new law will bring Brazils intel1ectual property law into theregime of world c1ass protection. It should give international businessesconfidence that intel1ectual property rights sought elsewhere in the world canbe extended into Brazil and the investment in those rights, and the productswhich are covered by those rights, will be sufficient and adequately protectedto justify seeking protection under the new laws and the concomitantinvestment in the Brazilian market. 8