Civil processes and procedures in Brazilian courts have been increasingly accelerated due to the digitization of cases and the allocation of courts specializing in specific issues (for example, in corporate law and intellectual property law. ). But the time frame for legal disputes regarding intellectual property rights in Brazil can be further accelerated for foreign companies by complying with the following procedural requirements.

1) Standing / Who should be named as plaintiff in legal proceedings?

Any foreign or national company holding rights to an infringing trademark in Brazil has the right to bring actions for infringement in the courts of the Brazilian state or actions for nullity in the federal courts, among other possible prosecutions.

The main qualification for bringing legal action rests with the trademark owner – (it is not always necessary to be registered with the Brazilian Patent and Trademark Office (BPTO)). Licensed or affiliated companies with specific powers to protect the exclusivity and integrity of the brand can also claim standing to initiate legal proceedings.

With regard to licensed companies, recent case law diverges on the acceptance of license agreements that have not been registered with the BPTO, since the purpose of license registration is to publicize the license as a precondition for its registration. enforcement against third parties (article 140, IP Law (federal law n ° 9.279 / 1996)). Therefore, although unregistered license agreements can be accepted, it is advisable to have the license properly registered with the BPTO to secure rights and enforce the trademark in court.

2) Formalities concerning the power of attorney

The foreign company must also be represented in legal actions; thus, a power of attorney must be filed meeting the requirements of Brazilian civil law, namely, notarization and apostille (under the Hague Treaty), certifying that the signatory of the power of attorney (POA) is entitled to grant the relevant powers to his acting Brazilian lawyers.

In intellectual property cases, it is also mandatory that prior to litigation, the foreign entity holding requests or registrations with the BPTO have attorneys registered in Brazil, in accordance with the provisions of Brazilian intellectual property law. It is mandatory to identify a legal representative in Brazilian territory to be served and notified in the event of a dispute regarding the application or registration submitted to the BPTO.

In case the foreign entity takes legal action alongside a Brazilian branch, subsidiary or licensee, the Brazilian company must also present a power of attorney, but no notarization or apostille is required. Simple signatures of its legal representatives and the articles of association of the company will suffice.

In either case, when there is an emergency, POAs can be filed after the legal action has been filed, as permitted by the Civil Procedure Law. Judges typically allow complainants 15 working days after receiving the initial brief to submit powers of attorney.

3) The link (and how to avoid it)

Foreign companies and individuals must post a bond to litigate in Brazilian courts. This bond protects opposing parties (such as the BPTO and private entities) and ensures that they are reimbursed for official litigation costs in the event of failure. After payment of the costs due to an occasional loss, the remaining amount recorded in the deposit is returned to the foreign entity.

However, if the foreign company wins its case in court, it is entitled to recover the full amount with interest once the decision is final, as well as the official fees, which will be reimbursed by the opposing parties.

There are a number of international cooperation treaties to which Brazil is a signatory that stipulate that it is not necessary to post a bond for individuals and companies covered by these treaties. These include the Hague Convention and bilateral treaties between Brazil and other countries. It is always advisable to consult these treaties, and to set them out carefully in the initial complaint, in cases where the foreign entity has its headquarters in a country covered by one of these cooperation treaties.

Also, the appointment of a local co-plaintiff is a recommended measure to avoid having to post a bond to plead in Brazil. Indeed, Brazilian law on civil procedure provides that a bond is not required when a company takes legal action with sufficient assets in Brazil to cover any costs resulting from the dispute.

However, the co-applicant must be a licensee, an official branch, a subsidiary or a company belonging to the same group of companies to effectively observe the provisions of the Code of Civil Procedure. In this case, the judge can ask for proof that the companies belong to the same group or are in one way or another associated, which can be proved by the production of financial statements, the reference in the articles of association, etc. .

4) Preliminary injunctions – Availability and requirements

Due to the historical backlog problem in Brazilian courts, injunctions are widely available to ensure effective litigation, especially in cases involving intellectual property rights.

There are legal provisions covering the availability and requirement of injunctions in civil procedure law (general) and in intellectual property law (specific). In addition, there are three basic conditions for the courts to grant a preliminary injunction even before hearing the other party (ex part):

1 – The probability of success on the merits: the plaintiff must demonstrate and provide relevant evidence in the initial complaint of the strength of the claim. Here, the applicant must prove that they actually own the rights to the relevant trademark (or other IP asset) and that the other party is infringing this right.

2 – Irreparable damage if the injunction is not granted: the applicant must demonstrate at the initial stage of the complaint the urgency of his complaint, indicating the damage caused by the infringement and the damage that will be suffered by the applicant, his business and consumers if not immediately stopped.

3 – No risk of irreversibility for the other party: the applicant must demonstrate that the requested injunction can still be subsequently annulled by the other party, since as a preliminary ruling it must be revocable if the claims are ultimately not received at the bottom.

Traditionally, a preliminary injunction is sought as part of the same legal action / proceeding as other substantive claims. Therefore, it is not necessary to bring a separate legal action to obtain such an injunction.

However, since 2015, with the enactment of a new civil procedure law, it is possible to file a separate legal action specifically requesting a preliminary injunction measure. This type of legal action follows a different and simpler process, so that if the injunction is granted and not contested by the other party, it becomes final and the case is immediately closed. Otherwise, if the preliminary injunction is not granted or if it is contested by the defendant, the plaintiff has the option of turning the case into an ordinary legal action and including other claims.

5) Sworn translations of foreign documents

Frequently, documents such as international registration certificates, proof of reputation, agreements, etc., are in foreign languages, and Brazilian courts require that they be submitted in Portuguese (the official language of Brazil).

However, companies must submit the original documents in the foreign language, as well as their respective sworn translations. Sworn translations can be provided after the legal action has been filed. Usually, the judge will ask for the sworn translations on pain of removing the foreign language documents from the file.

These are the main issues that foreign companies and agents should be aware of before deciding to initiate legal litigation in Brazil. In addition, it is always advisable to seek out a local law firm to effectively prepare the complaint in light of the documents gathered and reviewed, as well as to monitor, track and report the developments of the case for a profitable and prompt outcome. in legal action.

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Paulo Armando Innocente graduated from the Faculty of Law of the Federal University of Rio de Janeiro and holds a postgraduate degree in Civil Procedure Law from the Faculty of Magistracy of the State of Rio de Janeiro – EMERJ. He also completed the Basic Industrial Property Training Course, from which he graduated in 2013, and the Advanced Course in International Intellectual Property Treaties offered by the Brazilian Association of Industrial Property Agents – ABAPI, from which he graduated in 2013. graduated in 2015. Paulo began to get involved in intellectual property matters in early 2011, having practiced intellectual property litigation and trademark litigation.

Rafael Rocha has worked in the field of intellectual property since 2005 and is currently the partner in charge of the trademark protection and trademark litigation department of Daniel Law. He specializes in civil litigation and has extensive experience in litigation involving copyright and intellectual property rights (such as trademarks, patents, designs and unfair competition), as well as in the development and the application of strategies for the protection and enforcement of these rights.