1. N ew Industrial Property Law in Brazil
ERICA AOKI - Dorsey & Whitney, Washington DC
JOAO MARCOS SILVEIRA - FIESP- Federacao das Industrias do Estado
de Sao Paulo
The Brazilian Congress is in the process of approving new industrial
property law1/ which should replace the Industrial Property Code in force
since December 21, 1971.2.1 The Brazilian Government is attempting to realign
Brazilian legislation with the international community standards (mainly to
comply with TRIPS rules3./), primarily by widening the field of patentable
subject matter as well as registrable trademarks. Furthermore, the new bill
No. 824-D/91, proposes adherence to the Paris Convention on Industrial
Property. M
1 This article is based on the Bill No. 824-D/91, as approved by the Chamber of Deputies on
May 6, 1993, which is currently under submission of the Senate. This article will not
contemplate exhaustively the changes to be introduced by the new law. It is an attempt to show
the tendencies expressed by this Bill.
2 Law No. 5,772 of December 21, 1971.
3 Trade Related Aspects of Intellectual Property Rights (TRIPS) of the Agreement embodying
the results of the Uruguay Round of multilateral trade negotiations.
4 Brazil has recently ratified the revised Stockholm version of 1967, by the Decree No. 635/92.

2. Main Changes Proposed by the Legislative Bill
I. Patents
A. Pharmaceutical and Alimentary Industries: Alimentary and
pharmaceutical products will become patentable, as well as their
manufacturing processes, which are not patentable according to the current
law.
B. Biotechnology: Microorganisms originated by a specific
manufacturing process will become patentable. Living things and
microorganisms naturally existing are not patentable. However, exception is
made to microorganisms used exc1usively in a specific product manufacturing
process, which is patentable.
C. Right of Prior Use: Any person who in good will is exploiting an
invention in Brazil, before the filing of a patent application or before the
priority date of a patent, will have the right to continue exploiting the
invention. The right to exploit a patented invention may be assigned or
licensed only when it is accompanied by the business or part of the business to
which it is attached.
D. Nullity of the Patent: The bill proposes to grant a right to the
inventor who has his invention pirated by another, to either request the
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3. nullity af the pirate' s patent ar ta request judicial assignment af the patent ta
him.
E. Compulsory License: A patent awner has ta work the patent
granted in Brazil. Campulsory licenses will be granted after the expiratian af
a three year term caunted fram the day af granting af the patent when a patent
awner abuses the exclusive rights canferred ta him or practices an act af abuse
af ecanamic pawer (e.g. cartel practices).
F. Forfeiture by Lack of Use: The bill allaws the forfeiture af a
patent in cases where a campulsory license is nat sufficient ta avaid abuses.
G. Industrial Designs: Industrial designs, embracing bath industrial
designs and madels, will na langer be patentable, but will be subject ta
registratian valid for ten years, caunted fram the filing date af the respective
applicatian. This periad will be renewable for three successive, five year
periads.
H. "Pipeline": The bill foresees the passibility af filing patent
applicatians related ta alimentary, chemical and pharmaceutical inventians
enjaying the date af the first fareign correspanding applicatian, pravided that
a patent has nat yet been granted in the cauntry af arigin, that its abject has
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4. not yet been introduced in the market by the patentee or with his consent, and
that third parties have not yet undertaken actual and serious preparative for
its exploitation in Brazil. Such applications will be accepted only during the
first year after the publication of the new law. This right will be extended to
domestic applicants, whose applications can benefit from the invention
disclosure date.
I. Validity: Patents of invention will be granted for the period of 20
years and utility model for the period of 10 years, counted from the filing date.
11. Trademarks
A. Trademarks: The bill introduces the concepts of certification
marks and collective trademarks.
B. Unregistrable Signs: The bill identifies new types of unregistrable
marks, such as those which reproduce or imitate the characteristic or essential
element of a third party' s establishment or trade name, which cause confusion
ar are associated with such distinctive marks; civil names or signatures,
family names or patronymic and other persons' images, unless with the
consent of the person, his heirs ar successors; notorious pseudonyms or
surnames, individual or collective artistic names, unless with the consent of
the name-holder, his heirs or successors; literary, artistic or scientific works, as
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5. well as titles protected by copyright or which to cause confusion or are
associated with the work, unless with the consent of the author or holder;
signs that imitate or reproduce in whole or in part a trademark, the existence
of which could not be ignored by the applicant considering his business
activities and which belong to a person having an establishment or domicile
in Brazil or in a country participating to an international agreement or treaty
with Brazil or according reciprocal treatment, when such trademark is used
for identical or similar products or services and causes confusion or is
associated with the other person's mark.
C. Right of Prior Use: The Bill proposes a preference right to
register a trademark to any person who in good faith has been using the
trademark for identical or similar products or services, either under a prior
application or merely by use. This right can be assigned with the business or
the part of a business to which the trademark pertains.
D. Forfeiture by lack of Use: A trademark which is not used for five
years will be considered forfeit "ex-officio" upon request.
E. Nullity of the Registration: A trademark owner may request
judicial assignment of the trademark instead of the annulment of the
registration.

6. IH. Protection of Well-known Marks
There is na legislatian ar caurt decisian in Brazil defining what shauld
be cansidered is a well-knaw mark, because af the difficulties in qualifying, in
legal terms, the attribute af being famaus ar well-knawn. These characteristics
are purely factual, and have ta be determined an a case by case basis. The
essential canditian is undaubtedly that the mark must be knawn by the
general public or at least by professianals and cansumers directly cancerned
with the product ar service. Ultimately, whether a mark is well-knawn in
Brazil will be determined by the INPI in the administrative sphere, ar by the
campetent judges ar Caurts, within the Judiciary Pawer.
The law in force in Brazil gives particularly broad protectian for well-
knawn marks, cavering all classes af praducts and services. The peculiarity af
such special protectian assured under the current Cade is that it requires a
previaus and formal recagnitian af the natoriaus status af the mark by the
INPI (Natianal Institute af Industrial Property), through a proper registratian.
The "declaratian af natoriety" shall take effect upan its publicatian at the
Industrial Property Review, and may nat be used ta appase applicatians for
registratian already granted ar filed prior ta the filing af the applicatian for the
declaratian in questian.
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7. Neither the new bill, nar the law presently in farce, defines ar sets fortll
criteria for establishing the nature af a well-knawn mark, which is and shall
be determined an a case by case basis by the campetent authorities. The Bill
hawever will grant ta well-knawn marks a broader protectian by eliminating
the requirement af use in Brazil. The special protectian is maintained far
marks af high reputatian registered in Brazil, regardless af the products or
services, probably under a simplified procedure.

8. IV. ConcIusion
The new law will bring Brazil's intel1ectual property law into the
regime of world c1ass protection. It should give international businesses
confidence that intel1ectual property rights sought elsewhere in the world can
be extended into Brazil and the investment in those rights, and the products
which are covered by those rights, will be sufficient and adequately protected
to justify seeking protection under the new laws and the concomitant
investment in the Brazilian market.
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