Brazil: Industrial Design In The Spotlight: Key Takeaways In Brazil

Investing in the creation of industrial designs is critical in modern business practice, as it allows a company's product to stand out in an increasingly competitive market dynamic.

Just as important as creating distinctive product is ensuring its protection in the country where the company does, or intends to do, business. This is crucial, as this protection guarantees the exclusive right to commercially use the created industrial design.

In Brazil, the industrial design must be new, original, and have both an ornamental aspect and external configuration.

Once registered, the industrial design guarantees national protection for a period of 10 years (which can be extended to a maximum of 25 years). However, a protected industrial design may be granted without the analysis of these requirements of the Brazilian Patent and Trademark Office (BPTO), guaranteeing to the owner a "precarious right." This happens because the registration of industrial design in Brazil does not require a merit examination, which must be requested after the registration is granted.

Since late 2023, the BPTO has been implementing several new procedures for industrial designs, culminating in the publication of the 2^nd Edition of the Industrial Designs Manual and the new electronic petitioning system. These new guidelines broaden the scope of industrial design protection and formalize the rules to include the Hague Agreement.

With this news likely signaling an increase in industrial design filings in Brazil, it is essential to understand the particularities of industrial design protection.

Merit examination and enforcement

A merit examination is how the BPTO confirms if an industrial design is "novel" and "original" when compared to prior art. Until the BPTO's merit examination is carried out, any enforcement of the industrial design is complicated in cases of infringement by a third party, as it is not possible to confirm if the industrial design is new and original. In this case, for example, it is difficult to obtain injunctive relief in cases of industrial design infringement.

Regardless of the merit examination, the owner must rely on the support of a technical expert to assess if the industrial design complies with the legal requirements, and if there were significant similarity between the products that would characterize industrial design infringement and unfair competition.

Therefore, for the defendant in an industrial design infringement lawsuit, it is important to verify if the allegedly infringed design had its merits examined. In addition, it is crucial to analyze the validity of that registration – that is, if it really meets the legal requirements to be fully enforced against third parties – to determine if it is a reproduction of a third party's industrial design.

On a case-by-case basis, it may be recommended as a defense strategy to file an industrial design nullity action with the Federal Court, and/or a non-infringement action at the State Court, to help safeguard the company's public image, especially given the reputational character involved in intellectual property lawsuits.

Industrial design and Copyright

This is a controversial topic in Brazil, as there are numerous diverging scholars opinions regarding copyright protection of an industrial design. The possibility of a cumulation of rights is accepted in the Brazilian law, but it must be assessed on a case-by-case basis, as not every industrial design can be protected by copyright—such as one that lacks artistic characteristics. On the other hand, it is important to assess if the copyrightable work meets the legal requirements of an industrial design, especially the industrial application.

Industrial design and three-dimensional trademarks

If the external aesthetic shape of an object is not associated with a technical effect, it can also be protected through a three-dimensional trademark, one made of a plastic shape capable of comprising the products or services for which it is intended. To register as a three-dimensional trademark, the product or packaging must differentiate itself from competitors. The advantages of this three-dimensional trademark are the lack of an "absolute novelty" requirement and the ability to be renewed for an unlimited period, while an industrial design can be protected for a maximum of 25 years.

It must be assessed on a case-by-case basis whether an external aesthetic shape can be classified as a three-dimensional trademark, and whether it is possible to cumulate rights in each specific case. In any case, when registering a product as a three-dimensional trademark, it is crucial to not jeopardize compliance with the absolute novelty requirement.

News of the 2^nd Edition of the Manual of Industrial Designs

The discussions about industrial design have been evolving in Brazil, and the BPTO recently published the 2^nd edition of the Manual of Industrial Designs, which established new procedures, while consolidating and improving those already on the books.

Hague Agreement – Industrial Design Protection in 96 Countries

The main highlight of the 2^nd Edition of the Manual of Industrial Designs was the setting of procedures and orientations about Brazil's adherence to the Hague Agreement, which came into effect on August 1, 2023. Since then, Brazil has become the second¹ Latin American country to join the group of 96 countries² that take part in the Hague system, which makes up 70% of international commerce.

Due to the Hague Agreement, it is now possible to register an industrial design in many countries with only one international application through the World Intellectual Property Organization (WIPO). Therefore, it is no longer necessary to individually file an industrial design in each relevant country, substantially reducing paperwork, costs, and delays.

This adherence aligns Brazil with the best practices of industrial design protection adopted globally, as it facilitates the registration of industrial designs both in Brazil and internationally.

New Possibilities for Industrial Design Registration

With the goal of modernizing the guidelines about industrial design in Brazil, the new Manual of Industrial Design has formalized new types of registration of industrial designs:

• Products consisting of parts without mechanical interconnection
• Static and dynamic graphical user interface
• Typographical families
• Industrial design that includes trademarks
• Logos
• Industrial design that includes textual elements

Could Brazil be a product launch hub?

According to WIPO's IP Statistics Data Center³, Brazil ranks 32^nd in the number of industrial design applications filed per country. Even as the highest-ranked Latin American country in this regard, the country has the potential to reach higher positions.

As mentioned earlier, the mere registration of an industrial design is not enough to fully ensure its protection and enforcement, and its merits must be analyzed by the BPTO to meet all legal requirements. Furthermore, depending on the case, the owners of distinct plastic forms may rely on other institutes—beyond the industrial design—to enhance the protection of its creation, such as copyrights and three-dimensional trademarks, but it should consider the specifics of each.

Yet, companies shall evaluate the potential measures that may be taken in case of a violation, as well as potential defense strategies in case they are accused of intellectual property crimes by third parties.

The recent changes to industrial designs represent progress in how the subject is handled in Brazil, either by increasing the possible protection of industrial designs in Brazil, or by facilitating easier registration at home and abroad through the Hague Agreement. This is certainly an incentive for companies to consider Brazil as a product launch hub based on the facilitation and diversification of registration of assets.

Footnotes

1. Mexico was the first Latin American country to join the Hague Agreement in 2019.

2. https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/hague.pdf

3. https://www.wipo.int/edocs/statistics-country-profile/en/br.pdf

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