By Rafael Lacaz Amaral

Kasznar Leonardos Advogados' litigation team, specialized

in Intellectual Property matters, discussed the concrete

implementation of the new Code of Civil Procedure

(effective as of March 18, 2016) in a workshop held in the

São Paulo offices, on March 4 and 5, marking the closing

of a profound cycle of studies on the subject.

The past couple of years have seen some major developments in how Brazilian courts interpret and enforce trademark law at all levels. This article reviews some of the latest changes related to protection for non-traditional trademarks, the special rule for determining jurisdiction in trademark infringement cases and the administrative seizure of counterfeits by Customs.

The 1996 Brazilian Industrial Property Act (9,279/96) establishes a mixed trademark protection system by which an attributive arrangement grants first-to-file protection rights along with some declaratory system exceptions, such as *bona fide* six-month prior use of an unregistered trademark. Despite general satisfaction with this system, it is a fact that the law admits only the registration of visual-perceptive signs as trademarks (Section 122).

However, this limitation does not mean that non-visual signs which function as trademarks are bereft of protection. The Industrial Property Act sets out a so-called ‘gen

The growth of the Brazilian market and economy is paralleled by the increase in counterfeiting activities. The enforcement of IP rights involves planning, technology, intelligence, training and coordination, with support from a number of laws and treaties, as well as the relevant rules of the Federal Constitution, the Civil Code, the Criminal Code, the Civil Procedure Code, the Criminal Procedure Code and administrative statutory instruments.

The legal framework for anti-counterfeiting includes:

• the Industrial Property Law (9,279/96);

• the Copyright Law (9,610/98); and

• the Software Law (9,609/98).

In addition, Brazil is a signatory to the main international IP instruments, such as:

• the Paris Convention for the Protection of Industrial Property (as reviewed in Stockholm in 1967);

• the Agreement on Trade-Related Aspects of IP Rights (TRIPs);

• the Berne Convention for the Protection of Literary and Artisti

Brazil IP FOCUS – Managing IP Magazine – May 2013 edition

Generally, when IP rights holders decide to file a law suit in Brazil, they are looking for a swift answer to the violation of their rights. It is widely known, however, that law suits in Brazil usually take a long time to reach a final outcome. This is especially true in infringement and nullity actions involving patent rights, due to the technical background knowledge demanded to fully understand the technology at issue (in most of these law suits an expert is nominated by the trial judge to assist in clarifying technical aspects of the case). That is why injunctive relief plays an important role in litigation cases, as it is an efficient measure to put a stop to the infringement of IP rights while a final decision is being rendered in the case.