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At-a-glance: Instituto Nacional Da Propriedade Industrial Rua Mayrink Veiga, Nº 9 – Centro, Rio de Janeiro, Cep: 20090-910 Brazil Tel: +55 21 3037 3000, Fax: +55 21 3037 3398 Email: sercom@inpi.gov.br Website: www.inpi.gov.br While the intellectual... [more]

While the intellectual property market in Brazil is evolving – becoming more sophisticated, demanding and challenging – the country's regulatory authority is failing to keep up, according to IP professionals. But ready or not, the country's economic growth, which until 2010 was impressive, its international exposure and its upcoming role as host of two major sporting events have brought IP front and centre.

"The Olympics and the World Cup have forced the government to pass IP laws," explains one partner. "The courts are very pro-IP for both foreign and local companies, but their notion of IP varies," he adds.

There are no standards defining what constitutes a famous trade mark, for example. But an important decision recently issued by the Superior Court of Justice helped clarify rules regarding parallel imports. According to the court, which has the final word on the interpretation of federal laws, "the trade mark owner has the right to prevent the circulation of products placed on the internal market without his consent", explains one group of partners.

But trade mark attorneys still face plenty of challenges in Brazil. One key problem is that accountants are routinely tasked by smaller companies to file trade mark applications. Because Brazil's tax structure is so complicated, even the smallest companies need to hire accountants, so they often throw trade mark filing to these professionals in lieu of hiring separate trade mark counsel. "They don't perform searches and when their applications are approved by the PTO, no one informs the company about it," one lawyer explains. "So the number of applications filed by Brazilians that are converted into registrations is very low."

Another challenge is the poor quality work carried out by the IP office's (INPI) trade mark division. "Many decisions are not well-grounded; they are based on subjective viewpoints," notes one partner. As a result, many foresee an increase in litigation.

Patents face their own set of challenges, such as a significant delay in the review and approval of patent applications, despite the fact that Brazil has tripled the number of patent examiners since 2004. "Cancelling a patent in court takes five years – the judges are afraid to make the wrong decision," one attorney observes. "Education about IP is the biggest challenge."

Quantity also poses a problem, as both the trade mark and patent divisions of INPI experience significant backlogs. This in turn trickles down to enforcement, since "it can take up to seven years to decide a case", explains another lawyer.

These challenges, however, do not diminish the progress and positive developments for Brazil's IP market over the past year. "Brazil has reached a more favourable stage in terms of IP. Rio [de Janeiro] has had courts specialised in IP for a few years now, but São Paolo does now too," one partner remarks.

The country's patent and trade mark authority has also been involved in a project aimed at improving consistency among South American countries. INPI has helped create an integrated platform allowing patent and trade mark examiners to research laws in the nine countries participating in the project: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay.

Brazil's IP professionals expect more activity within their practice area, not just the realm of litigation, but in the number of filings as well. "The transactional IP market is becoming more sophisticated. More complicated cases are emerging," says one partner. "Clients are seeking more strategic advice regarding patent and trade mark prosecution. This is happening more than it was five or six years ago."

"Intellectual property is becoming more important to us in Brazil," remarks another partner. "We are more present in the international market now and the internal economy is very strong." But there is more to be done to improve the country's infrastructure before IP owners can rest easy: "The government still has some trouble with long-term planning, and IP takes long-term planning".