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Brazil: access to justice in cases of infringement of Intellectual Property rights

Intellectual Property Rights are some of the most valuable assets which a company possesses. That is why these rights may suffer countless infringements which usually end up in court. These legal actions are characterised not only for their complexity, but also for the numerous disputes which they generate relating to procedural aspects, such as the authority with powers to judge them.

Whether or not the administrative investigation is closed, the National Institute of Intellectual Property (INPI) or any person with illegitimate interest may request, in a period of five years , that a granted registration be declared null and void, under articles 173 and 174 of the Intellectual Property Act, in which the sentence may declare partial or total nullity of a patent or mark, with ex tunc effect, that is, from the filing date.

A similar situation occurs when the INPI mistakenly rejects a mark or patent application. In this case, the holder must also present, in a period of five years, the application for nullity of the administrative action in order to attempt to revoke the decision and guarantee its right.

Because of its federal independence, the INPI has a privileged forum in accordance with article 109, I, of the Federal Brazilian Constitution. Therefore, considering that INPI’s presence in the trial is mandatory, the application for nullity of the administrative action of the INPI – which grants or rejects a mark or patient – must be proposed in the Federal Justice.

With regard to the awards (6th septies of the Paris Convention and articles 49 and 166 of Act 1979/96), it is important to mention that authority for processing and ruling on these actions is not provided for in our courts and doctrine.

A minority current maintains that this authority would have to be for the State Justice, as the INPI could never litigate the award for itself, nor could it demand the award.

However, the majority current, maintains that the effect of the legal decision obliges the INPI to declare its position, subjecting it to legal examination with the aim of the necessary retraction.

This automatically makes it a party with a legitimate interest in the action and it must therefore be judged in the Federal Justice. Such is it the case that it is now permitted for the author to request, alternatively to the application for nullity of the patient or mark, awarding of the mark or patents improperly granted to another party.

This awarding reduces the costs and administrative procedures necessary for the involved party, following invalidation of the registration of the mark or patents improperly granted to another party, to gain the right which had been misappropriated.

In compensation and/or abstention from use actions, that is, in the cases in which the infringement of the mark/patent is proved or an act of unfair competition, the action will be made only by companies and/or individuals, all within private law. Accordingly, because of the absence of a privileged forum, the authority with power to judge them will be the State Justice.

It is important to highlight that in all the above-mentioned legal actions it is possible, once the declarations and the periculum in mora have been verified, to demand immediate protection of rights, so that the judge may suspend the effects of a granted patent (art. 56, § 2nd and art. 118) or a mark registration (article 173, single paragraph). It is also possible to rule cessation of the infringement of the act which leads to possible granting of search and seizure.

However, this last aspect is more frequent in cases of legal action for an abstention from use filed with to the State Justice.

Consequently, in order to meet the needs of our clients and to guarantees them wide protection, we find ourselves with a major contradiction relating to legal actions regarding Intellectual Property: whether to file only an application for nullity of the mark or to also require abstention from its use and the losses and damages incurred. But in these cases, who holds the authority? Federal or State Justice?

Although many federal judges still do not feel they have the authority to judge applications for abstention from use and for losses and damages, it is important to state that the combination of both applications in one legal action is a satisfactory measure.

By doing this, the number of lawsuits is reduced, the risk of opposing decisions is eliminated, the evidence relating to a case is concentrated, and the actions of the parties, judge and court officials are improved.

In addition, it makes it possible to obtain better use of the legal process and thus avoid being subject to the five-year period (article to 25 of the Intellectual Property Act) to wait for the nullity to reach its conclusion only then to file the compensation application.

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Carmen Sánchez-Puelles