In a recent article, we highlighted how recent changes and improvements to the examination standards related to design applications in the Brazilian PTO could increase its use in IP protection strategies in future.
Since many companies are still unaware of the stronger protection now given to industrial designs in Brazil, we have compiled some quick information and insights below.
New Guidelines
In March 2019, the Brazilian PTO published guidelines making the process around industrial designs simpler and clarifying some prominent issues. For example, it clarifies that auxiliary figures will be accepted, including cross-section and amplified views to facilitate the examiner’s understanding, when the regular views are not enough to reveal specific ornamental features of the claimed object.
Other modifications included changes as to how priority requests are analyzed. Under the new rule, any new embodiment in the Brazilian application will receive an office action, allowing the applicant to move it to a divisional application without claiming priority.
The prosecution time for design applications, from filing to grant, has also now been reduced (currently around 3 months from filing if no office actions are issued).
Definition of industrial design under Brazilian Law
The Brazilian IP Law defines Industrial Designs as: “… any ornamental plastic form of an object or any ornamental arrangement of lines and colors that may be applied to a product, that provides a new and original visual result in its external configuration, and that may serve as a type for industrial manufacture.” (Article 95)
Definition elements at a glance
- Industrial Designs may be represented in a 3D form (the ornamental plastic form of an article) or in 2D form (the arrangement of lines and colors that may be applied to the product).
- Ornamental means the visual features of a design, which make it distinctive from others (particularly from similar articles which perform the same function).
- An Industrial Design is considered novel when it cannot be found in prior art before its priority or filing date.
- It must result in a distinctive visual configuration in relation to other prior objects. In addition, the original visual effect may be a result of a combination of known elements.
- The design must serve as the basis for industrial manufacture (this can be understood as meaning that identical specimens of the article featuring the design must be produced in the industry and not be considered as pure art objects).
- Note that there is a grace period applied to Industrial Designs in specified circumstances (this deals with a disclosure of the design 180 days prior to filing date or the priority date).
Applying for an Industrial Design
An industrial design application at the Brazilian PTO will require the following:
- Application form;
- Fee payment;
- Specification, claims (if any), and drawings, which must comply with the PTO standards established in the guidelines;
- Power of attorney;
- Priority and assignment documents (if applicable).
If the design application claims priority from an earlier foreign application, the term for filing the application in Brazil is six months counted from the priority date. In this case, it is necessary to submit the following:
- A copy of a proper document issued by the foreign PTO at the date of filing of the Brazilian Application (or within a 90-days of the filing date);
- A simple Portuguese translation of the cover sheet with the identifier data of the priority application (number, date, country, applicant, author(s), title, etc.);
- An assignment of priority rights duly executed by both parties (only where the priority applicant is different to the applicant in Brazil).
Duration for protection
According to the law, the validity of the Industrial Design is 10 years from its filing date. This term may be extended by three successive periods of 5 years through filing of a request for extension of the term.
In short, the total term of validity for an Industrial Design is 25 years provided that all renewals (five-year fee) are duly paid.
Infringement
Industrial design registrations are fully enforceable against third parties in Brazil. The industrial design owner or an authorized exclusive licensee may initiate an infringement action in the Brazilian courts. Such lawsuit is normally filed in a state court where the infringement is taking place, but may also be filed at the infringer’s place of business, or where the design owner has its business address. Prior to initiating litigation it is advisable to obtain the substantive examination of the design to ascertain novelty and originality requirements.
Further points:
- Federal courts only take jurisdiction where the federal government is a party to the action.
- Only few states have specialized IP courts (Rio de Janeiro and São Paulo).
- A court expert will normally be assigned to analyze the design and give an opinion on the infringement from a technical perspective during the evidence phase.
- The Brazilian PTO does not take part in the infringement action.
- In an infringement action, the plaintiff tries to prove the existence of infringement and seeks to have the infringer cease the use of the design.
- The plaintiff may obtain damages for past and present loss (including moral and material damages).
- Injunctions (preliminary and permanent) and orders to cease the infringement are available remedies in the Brazilian courts (among other measures).
- Common defenses to an infringement action include a claim that the industrial design in question is void (this involves a separate action in the federal court naming the Brazilian PTO as co-defendant) or that the object claimed is sufficiently different from the registered design.
In addition to the general rules regulating unfair competition practices (which could be claimed in a design infringement case), the Industrial Property Law also expressly provides that a false declaration of design protection is a crime.
If you have any questions on any of these topics, please contact us. We also invite you to sign up below and receive all the latest news and updates on matters related to intellectual property and technology in Brazil.
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