10 Common questions on Trademark Enforcement in Brazil

by | Jul 28, 2022 | Blog, Intellectual Property, IP Prosecution & Counseling, Trademarks

Are you interested to learn about some of the particularities of Trademark enforcement in the Brazilian courts?

Here we take a look at 10 common questions that people routinely want answered when looking to Brazil as a potential country to expand their trademark portfolios.

1. How and before what court can a trademark be enforced against an infringer?

An infringement lawsuit may be filed before a State Court (state jurisdiction) in which the infringement has taken place or the defendant is domiciled. In exceptional cases, the infringement lawsuit may be filed before a Federal Court when the defendant is a federal body or federal company, for instance. Most cases, however, come under the general rule and are brought before a State Court.

2. What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial?

Upon filing the lawsuit, the court will analyze whether the complaint meets the formalities required by the Brazilian Code of Civil Procedure (and, if so, analyzes and decides on any preliminary injunction request).

Subsequently, and if all the requirements have been duly complied with, the court will determine that the defendant be served with process. The defendant has 15 days to file a reply to the lawsuit under penalty of the facts alleged by the plaintiff being considered true. If a reply is filed, the plaintiff can file a rebuttal within 10 days. After such period, the court will determine which evidence is allowed to be produced (including the need for an expert opinion), thus beginning the production of supporting evidence phase. Once this phase is completed, the case is ready to be tried.

The term for such proceedings varies greatly, depending on the complexity of the case and on the speed of the court. A decision on the merits in an ordinary trademark infringement case may be expected within 12–24 months, on average.

3. Are (i) preliminary and, (ii) final injunctions available, and, if so, on what basis in each case?

Both preliminary and final injunctions are available and may be requested and granted to halt infringement before, or concomitantly with, a decision on the merits. If a preliminary injunction is requested, the plaintiff is required to demonstrate (a) urgency, and (b) clear-cut evidence of infringement. Another requirement is the analysis of the hardship caused by the decision and the possibility of returning the parties to the status quo ante if the injunction proves unfair or unnecessary. In turn, final injunctions are generally granted when the court confirms the decision on the merits.

4. Can a party be compelled to disclose relevant documents and materials to its adversary and, if so, how?

Yes, upon the court’s assessment and in accordance with the need for the specific evidence. Depending on the nature of the documents, the court may determine that the proceeding be held in secrecy, thus protecting the confidentiality of the information provided.

5. Is evidence presented in writing or orally, and is there any potential for cross-examination of witnesses?

In trademark infringement cases, the court usually relies on documentary evidence only. Oral evidence is rarely requested by the parties or determined by the court.

6. Can infringement proceedings be stayed pending resolution of validity in another court or the Patent and Trademark Office?

Yes, an infringement proceeding may be stayed due to an annulment action or proceeding involving the same mark until a resolution on its validity is handed down, at the court’s discretion.

7. After what period is a claim for trademark infringement time-barred?

A trademark infringement claim may be raised during the validity of the mark. Nonetheless, there is a five-year statute of limitations on filing a lawsuit, counting from the date the plaintiff became aware of the infringement, and there is also a five-year statute of limitations on seeking past damages.

8. Is there criminal liability for trademark infringement?

According to Brazilian law, a crime against a trademark registration is committed by someone who:

(a) reproduces a registered mark without consent or imitates it in a manner that can lead to confusion; or
(b) alters another’s registered mark which is already in use on a product placed on the market. A crime against a trademark registration is also committed by whoever imports, exports, sells, offers or displays for sale, conceals or keeps in stock:
(i) goods identified by another’s trademark, unlawfully reproduced or imitated either wholly or in part; or (ii) a product of its own industry or trade, held in a vessel, container or packaging, bearing another person’s legitimate trademark.

All IP-related crimes are generally considered petty crimes and, although they are punishable with imprisonment and/or a fine, imprisonment is usually converted into a fine.

It should be noted that the imprisonment penalties may be increased by one-third to one-half if:

(a) the offender is or was a representative, attorney of record, agent, partner or employee of the owner of the registration or a licensee; or
(b) the mark that has been altered, reproduced or imitated is highly renowned or well known, or is a certification or collective mark.

9. If so, who can commence a criminal action?

Prosecution should be commenced by the filing of a complaint by the owner of the mark or licensee (provided the licensee is a legitimate party), except for the infringement of national, foreign or international armorial bearings, crests or distinctions, when they are of an official character, in which case the criminal action will be public.

10. What, if any, are the provisions for threats of trademark infringements?

There are no provisions that punish threats of trademark infringement.

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