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Which courts are empowered to hear trademark disputes?
Jurisdiction is decided by whether the Brazil Patent and Trademark Office (BPTO) is a defendant – as it is a federal entity, the federal courts have special jurisdiction to decide all court actions filed against it. Therefore, the federal courts are empowered to decide court actions concerning the nullity of registrations or the granting of rejected applications, as well as any other claims involving the BPTO. On the other hand, actions involving the enforcement of trademark rights (eg, infringement actions or declarations of non-infringement) must be filed at the state (district) courts. If a court action is filed with both purposes (eg, to cancel a trademark registration and to compel its owner to cease using the mark), it must be filed at a federal court.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
The most common and effective measure is to file an infringement court action requesting a preliminary injunction order to cease the infringement immediately. The requirements and basic key features for the filing of the lawsuit are:
- a power of attorney;
- a copy of the trademark’s registration or pending application; and
- substantial evidence about the infringement (eg, samples of the infringed product or documents showing the unauthorised copy of a registered trademark).
Who can file a trademark infringement action?
The owner of a registration or pending application or a licensee authorised by the rights holder to enforce the trademark rights.
What is the statute of limitations for filing infringement actions?
Although there is some disagreement about this (some specialists argue that the term is five years from the start of the infringement or the date that the rights holder discovered it), there is a significant body of case law stating that if the trademark infringement is continuous, there is no statute of limitations for claiming that it must cease – only for demanding compensation of damages.
What is the usual timeframe for infringement actions?
Upon filing a lawsuit, the court will analyse whether the initial brief meets the formalities required by the Code of Civil Procedure (and, if so, decide on a request for preliminary injunction, if one has been made). After that, and provided that all the requirements have been duly met, the court will schedule a preliminary/conciliatory hearing and determine whether the defendant can be served with a summons. If a conciliatory hearing is concluded without the parties reaching a settlement, the defendant has 15 days in which to file a response to the lawsuit under penalty of the facts raised by the plaintiff being considered true. If a response is filed, the plaintiff must then file a rebuttal within 10 days. After this, the court will determine what evidence may be produced (including expert opinions), beginning the evidence phase. Once the evidence phase is completed, the case is ready to be tried. The term for such proceedings can vary greatly, depending on the complexity of the case and the speed of the court. A decision on the merits in an ordinary trademark infringement case may be expected between six months and two years on average.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
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. Where a preliminary injunction is requested, the plaintiff must demonstrate urgency and 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. Final injunctions, in turn, are generally granted when the court confirms a decision on the merits.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
A wide variety of remedies are available for trademark infringement in both civil and criminal spheres. In the civil sphere, the most common remedies include the following:
- search and seizure of products;
- damages (both moral and material recovery of damages);
- ex parte injunctions with the broadest possible scope (eg, change of trade dress, replacement of labels and withdrawal of websites); and
- monetary penalties for non-compliance with injunctions.
In the criminal sphere, it is possible to seek search and seizure orders, and the destruction of counterfeits, among other measures.
What customs enforcement measures are available to halt the import or export of infringing goods?
The following customs recordal methods are available to rights holders:
- The National Directory to Combat Trademark Counterfeiting – this is a database in which government officials can consult whom to contact whenever assistance in fighting IP infringements is required. The database also accepts the filing of documents and materials that can be accessed by public officials (eg, customs authorities, state police and the Inland Revenue Service) in order to correctly identify and seize unauthorised products.
- The Anti-Counterfeiting Manual – a database managed by the Centre of Coordination of Customs Affairs, which was developed to help customs officials. As with the National Directory, the applicant may input information on the firm or company in Brazil and a contact for whenever a shipment is retained, together with any documents that may assist customs officials in identifying and seizing unauthorised products or products imported by unauthorised parties. The main difference is that the directory is restricted to customs procedures.
- Requests for inspections – brands are entitled to address specific requests for inspections to ports and airports where counterfeit goods are likely to enter the country.
Customs seizure procedures If the customs authorities identify a shipment of counterfeit products, they will immediately notify the rights holder and invite it to examine existing samples in order to verify the source and then to make a formal statement confirming whether the goods are illegal. For this reason, it is important to determine who in an organisation is responsible for receiving customs notifications concerning possible illegal shipments. This representative can be anyone appointed by the rights holder. Upon submission of the affidavit, the customs authorities will send the rights holder a formal notification with additional information regarding the retention (eg, total number of goods seized and administrative procedure reference). Customs authorities may also ask the rights holder to file a court action requesting the definitive seizure and destruction of the infringing goods. Such procedures are based on the Agreement on Trade-Related Aspects of Intellectual Property Rights which sets out a timeframe of 10 working days after notification for the rights holder to file a court action to maintain the seizure of the goods as per a judicial order. This term may be extended once for another 10 working days. Although the customs rules require this court action for definitive seizure and destruction of the products, the absence of a standard procedure among the different Brazilian ports and airports means that rights holders can try to obtain the earlier destruction of the goods without the need to file a court action.
What defences are available to infringers?
The defendant may argue a wide variety of defences, including the following:
- The sign does not function as a trademark;
- The parties are non-competitors;
- Prior existing similar or identical marks are being used in the same market segment;
- The mark is not sufficiently distinctive and therefore the two marks should coexist;
- There has been continued use or prior use of the mark in good faith and without opposition from the title holder; and
- It has prior existing rights over the same sign.
Most importantly, and whenever applicable, the defendant must provide evidence that there is no risk of confusion and/or undue association between the marks.
Besides these possible defences, the Industrial Property Act establishes that a rights holder may not:
- prevent merchants or distributors from using its distinctive signs together with the mark that identifies the product, in their promotion and commercialisation;
- prevent manufacturers of accessories from using the trademark to indicate the destination of the products, provided that they follow fair competition practices;
- prevent free circulation of a product placed on the domestic market by the owner or by another party with the owner’s consent; or
- prevent reference to the trademark in a speech, scientific or literary work, or any other publication, provided that no commercial deception is intended and without detriment to the trademark’s distinctive character.
In all these cases, the use of the mark is legitimate and justifiable.
Procedural flaws may also be raised in addition to non-infringement arguments, as well as the arguable nullity of the mark (eg, where the trademark is evidently descriptive or does not function as a trademark).
What is the appeal procedure for infringement decisions?
The losing party may appeal to the relevant appellate court, submitting all factual and legal matters discussed in the decision. The decision rendered by the appellate court in its turn may also be appealed to the higher courts. However, at this stage only matters of law (where an appeal is filed to the Superior Court of Justice) or constitutional questions (where an appeal is filed to the Supreme Court) may be heard. Other secondary appeals may be filed throughout the prosecution of the case, but with a limited or specific scope.
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