3. MANAGtNG tNTElUcrUAL PROPElUY ASSETSIN BR-121L
copyríghts deveIoped under an employment or contractual Planning
relationship wiII be owned by the hiring party unless the Effecrive management af yaur intelleetual property rights
agreement provides otherwise. reqmres special atrention aud a number of preventive and
enforcement efforts. Taking the proper acriou 'YiUminimise the
Copyright infringement has increasingly become an risks associated ,virh the enforcement of your rights andlor the
:-::;porrant Íssue in BrazíI and tnere are man}' dífferent possibIe Ioss of your intellectual property rights and the related
campaigns to combat copyright infringement. The consequential costs. Brazilian law provides intellecrnal property
phonographic and software industries are making a great holders ,•. im me tools to safeguard and enforce their rights.
r
effort to reduce infrmgement by educating society about the Nevertheless, intellecrual property holders should always take
ill effects of copyright infringement on the country's affirrnative steps to entorce their rights, both preventative and
economic developrnem. reacrive, by taking legal aetiou against alleged infringers.
Stroeter. Royster & Ohno Advogados, associated with Steel Hector & Davis UP l3U1lD!NG ANO ENfORCING INTHLEcrUAL PROPERTYVALUE169
5. lvlANAG1NG lNTELLECTUAL PROP"ERTY ASSHS IN BRAZIL
jurisdiction. Your headache may increase if you have to proposed trademark is necessary to avoid the costs
manage your intellectual property rights througb different associated with applying for a non-registrable trademark in
jurisdictions and submit to different regulations and laws. the case of the priority of a third party. If you do conduct an
internet search, you should keep in mind that the INPI's
The importance of protection data base is updated with a time lag of at least 15 days to a
As is the case with other property rights, to secure month. Thus, the results of the search may or may not
intellectual property rights, the interested party must take include newly filed applications.
some affirmative action, in which case a complete
understanding af the necessary measures to guarantee After filing me trademark registration application, it is very
property rights is essential. AIso, as with other property importam to continuously check for any trademark
rights, preventive measures to safeguard your interesrs wiU registration applications filed by third parties that may cause
save you a lot af time and money in the long termo association or çonfusion with your trademark, whether
registered or still in the application processo Filing an
First, you should recognise that, despite the fact that the opposition or nullity request with respect to any trademark
Brazilian legal system is often criticised and described as not application or registration during the administrative
being fully prepared to protect intellecrual property rights, the proceeding term against a third party application or
new laws governing intelleetual property in Brazil provide al1 registration tbat may increase the likelibood of confusion or
of the necessary tools to safeguard and/or guarantee the associarion with your trademark may reduce cost and time,
proper protection of intellectual property rights held in the when compared to filing a judicial action with respect to the
counrry. Recent changes to laws mean that Brazil has now same matter.
fulfilled the majority of its obligations under TRIPs.
To secure an interest over the applied for or registered
The rules for the protection of trademarks, patents and trademark, you must initiate the use of the object
copyrights in Brazil are in compliance with the mIes of of such trademark no later than five years after the
international convenrions such as the Paris Convention, Bern relevant registration date. The required proof of use
Convention and TRIPS. The registration procedure may may be satisfied by any commercial ar financial document or
differ in terms of detail and some minor aspects may also by a licence agreement. The trademark must be used
slightly differ from what you may be accustomed to in your in the exact form anel/or manner as specified in the
home country. relevam application ar registration and must be used
strictly with respect to the product or service related to the
Trademarks class of such registration or application. Where a trademark
As Brazil has a 'first to file system', you must be the first to holder fails to make use of the trademark in commerce in
file the relevam registration application, otberwise you may Brazil for more than five consecutive years, the registration
loose your rigbts to a trademark on account of a difference may be cancelled.
of just a few seconds from a third party that has previously
ápplied for registration of the same trademark. If the trademark owner is not a resident of Brazil, it musr
appoint a legal representative to represem it before the INPI.
It is highly recommended that you check on the viability of The failure to appoint a represemative may cause the
having the application approved for regisrration before you cancellation of the trademark registration. Ir is very
begin the processo The Brazilian Patem and Trademark importam to keep the INPI's data base updated on the name
Office's ('INPI') data base may now be searched via the of and currem information on the appointed representa tive
internet (http://www.inpi.gov.br). Although the proper who "',riUbe responsible for receiving aoy notification related
evaluation of the registrability of a proposed trademark to the rrademark. Furthermore, for the maintenance of the
requires some technical knowledge, you may nevertheless trademark registration, it is also necessary to inform the
receive some comfort by condueting a prior search 00 the INPI about any changes in your corporate name, principie
internet. The proper evaluation of the registrability of the place of business and/or any assignment made.
Stroeter. Royster & OhnoAdvogados. assodated with Steel Hector & Davis LLP BUILDING ANO ENFORCING lNTELLECTUAL PROPERTY VALUE I 67
6. MiJ.'JAGING INTEllfCTUAl PROPERTI ASSETS IN BRAZIL
Alrhough it is nor a legal requirement, ir is advisable to agreement. The technology transfer agreernent rnust also be
maintain only one represemative for ali of your trademark registered with the INPI and is also subjeet to cerrain specific
registrarions and/or applications. Maintaining multiple treannent as to rernittance and for pllrposes of deductibility
representatives for trademark registrations may make ir of raralty payments.
more difficult to control ali of the trademark registration
proceedings of yonr company. However, considering the Copyright
conflict of interest issue, in practice, ir is very difficult As me Brazilian legal s}'stem adopts the sarne rationale as the
to keep onl)' one legal representarive for )'our emire French system, copyright is considered the persanal right af
trademark portfolio. Therefore, it is ver)' importam the anthor who wil! always keep the moral rights over rhe
that )'ou reguest your legal represemative to check on the work created by him/her.
existence of any canflicts of imeresr berween your rrademark
and other trademarks handled by himJher and confirm the As copyrights are considered to be personal rights, the law
absence rhereof. does not aIlow corporate entities to be the author of any
work protected under a copyright. The corparate entity may
Apart from the managemem of the trademark, it is also very have patrimonial rights to use, distribllte, transmit and/or
important to check on rhe use of any trade names and cammerciaIly explore the work protected under copyright,
domain names mat could harm four interests. however such rights wiU be limited to the extent expressly
provided for in an assignmem agreemem. The new capyright
Patents Iaw in Brazil has intentionaIly excluded the 'wark made for
Vith regard to your patem rights, )'ou must also take alI hire' pravision, which was provided for under former
necessar)' steps to file a patem application in Brazil prior to legislation. This inrenrional excIusion was effected ta force
any use af rhe parem in an)' part af rhe warld ar at leasr parties to negotiate the use of and safeguard against the
during the priority term to satisfy the nove!ty requirement. abusive appropriation of copyrighted work.
To mainrain a parem registrarion in Brazil, it is importam to Copyright over a certain work is protected as of the creation
effect rimely paymenr of the reqnired annual fees and to of such work and no specific registration is required.
appoint a representative in cases where the patent is However, the registration of copyrighted works may serve as
registered in the name of a nan-residem. proof of the date of authorship of the relevam wark.
Although registration is not indisputabJe proof of
li you do not have a registered parem in Brazil, yau may not authorship, it wil! place rhe burden of proof of authorship ai
be able to license the patem and/or receive royalties for the such work on third parties claiming authorship.
licence since your patem will be treated as non-patented
technology in Brazil and thus in the pllblic domain. Becallse a carporate entity wiU not be recognised
as rhe author af any copyrightable wark created in Brazil, it
A patem infringement action requires a very careful technical is very importam to have a praper agreement regarding
analysis. Since patem attorneys in Brazil do not necessarily the rights over such works with any employees hired in
have rhe required rechnical background, attorneys usualIy Brazil so as to minimise the risk of copyright infringement
render opinions on such matrers with the assistance of, and of an employee's rights. Companies must take affirmative
based an, the technical expertise of an engineer. steps to cover this issue, which is critical for companies
whose most importam asset is the copyrighted material
If you curremly have or use non-patemed ar non-paremable created by employees.
technology which vou wallld like to rransfer to it
Brazilian emity, you may want to consider the formal This rule is nor applicable to saftware, despite the
transfer of such through a technology transfer agreement. fact that software is considered to be copyrighrable
This wiII alIow the recipienr to make use of sucb rechnology subject matter under Brazilian law. Software is governed
during and after rhe terminarion of rhe term of rhe in a specific law, which clearly provides that software
168 BUILOING ANO ENFORCING INTHLECTUAL PROPERTI VALUE Stroeter, Royster & Ohno Advogados. associated with Steel Heàor & Davis lLP
