How to enhance your design registration rights in Brazil

January 2016 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

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The ornamental plastic form of an object, or a set of lines and colours applied to the same, providing a new and original visual effect, is protectable as an industrial design according to the Brazilian Intellectual Property Law.

Until the enacting of Law 9.279/96, the prosecution of design applications in Brazil was considered to contradict the sole purpose of this type of protection. The time spent by the Brazilian patent office with subject matter examination of industrial designs and industrial models resulted in the granting of a title with little economical use at the end.

Under the provisions of the TRIPS AGREEMENT, Law 9.279/96 created the automatic registration of design applications, with cost reduction and speediness of its prosecution, removing examination of the novelty and originality requirements, thus bypassing the legal security of the attributive system in favour of celerity of prosecution.

The new system, however, began to be challenged in court for providing a weak title, every time a claim was filed based on design infringement. Courts were reluctant to provide injunction relief to force a party to abstain from using the object of a design registration solely on account of lack of prior art examination upon its granting by the BPTO. This occurred even when the defendant failed to use the provision contained in the new Law, which determined the automatic and mandatory suspension of the design rights, when an Administrative Nullity Request was filed within 60 days from the granting date.

The substantial increase in legal demands filed in Brazil’s state courts involving design infringement enhanced the problem, making a common defence strategy to challenge the novelty and originality of designs being claimed as infringed.

In a recent decision, the Superior Court of Justice ruled that “the allegation that it is invalid the registration, obtained by the owner of a trademark, patent or industrial design before the INPI must be formulated in the proper claim to which is competent the Federal Justice. To the state judge is not possible, incidentally, to consider invalid a valid registration before the INPI”. Nevertheless, such understanding has not yet been accepted by all of Brazil’s state courts, as the fact that a design registration is granted without subject matter examination, works as a determining factor in many circumstances.

However, there is a solution to this uncertainty which affects design registrations. The same Law that created the current prosecution system establishes that once the registration of a design is granted, the owner can file for the subject matter examination of its object, which will see the novelty and originality requirements of the object analysed by the PTO and a conclusion certified. During such a procedure, the owner may be called to provide information, and voice their opposition, after which the confirmation of registration will hold the approval of the BPTO.

It is known that the difficulty of obtaining temporary relief in infringement cases, whether a trademark, patent or design registration, relies on the need to show the court that the right being claimed is undisputable, or at least based in a very strong title. As the request of subject matter examination can be filed immediately after the granting of the design registration, and often before an infringement takes place, such examination is usually carried without incident and, when an eventual judicial dispute arrives, the owner will have a strong title to base its claim.

Luiz de A. Araripe Jr is a founding partner and Renata Lisboa is an associate at Araripe & Associados. Mr Araripe Jr can be contacted on +55 24 2103 2200 or by email: luiz@araripe.com.br. Ms Liboa can be contacted by email: renata@araripe.com.br.

Luiz de A. Araripe Jr and Renata Lisboa

Araripe & Associados