The design system in the Federal Republic of Brazil differs from the design system in Japan in many ways, and the latest system understanding and strategies are required to protect and utilize designs locally. This article summarizes the Brazilian design registration system, including procedures from application to registration, examination and duration, relationship with international applications (Hague system), methods of exercising rights, and practical points and strategies that Japanese companies should keep in mind.
When filing an application for design registration in Brazil, application documents must be prepared in Portuguese. The main required documents are as follows.
Application form (Basic information such as name, address, and nationality of applicant and creator, name of design, classification of Locarno classification, etc.)
Drawings or photographs (A sufficient visual representation of the design. For three-dimensional objects, it is recommended to submit six or more views, including front, rear, left, right, top and bottom, and perspective views)
Specification (explanation of the shape and pattern of the design) and Claim (claim specifying the object of protection of the design right)
Power of attorney (POA) (Required if applying through an agent. If the applicant is a foreign company, it is obligated to appoint a domestically resident agent and must submit a power of attorney to delegate authority for administrative and judicial procedures to that agent. Note that the power of attorney does not need to be notarized or certified)
Deed of assignment (If the applicant is not the creator himself/herself, a document certifying the transfer of rights from the creator to the applicant. Officially called Inventor (creator) consent form, etc., it can be submitted at the time of filing or at a later date.)
Certificate of priority (Submitted when claiming priority of an earlier application in another country. Brazil is a member of the Paris Convention, and an application claiming priority can be filed within 6 months of filing in Japan. At that time, a priority certificate issued by the Japan Patent Office must be submitted within 90 days, a Portuguese translation and a declaration that the contents match. However, if the code is provided via Digital Access Service (DAS), the document submission can be omitted)
Supplementary information: Applicant qualifications – In Brazil, both natural and legal persons, residents and non-residents, can apply for a design. When applying, clearly indicate the name of the creator (designer), and if the applicant is different from the creator, state that the design has been assigned. In addition, Multiple design variants with the same features for the same use can be registered together in one application (up to up to 20). For example, a single application may include up to 20 variations that differ only in details such as color or dimensions. This allows related variations to be protected together, but multiple designs with different uses or design concepts cannot be included in one application. If you include multiple designs that are inappropriate, you will need to limit your application to one design or file a divisional application within 60 days of receiving a notice of reasons for refusal from the Brazilian Intellectual Property Office (INPI).
When you submit your documents via electronic filing (online), the formal requirements will first be formally examined. The formalities examination checks for missing application forms, drawings, and necessary information, as well as compliance with the unity requirement (one application, one design, but a maximum of 20 variations are allowed). If there are no problems with the formalities, the design will be gazetted at the same time as the registration decision. On the other hand, if there are problems such as incomplete documents or violations of the unity requirement, an Office Action will be issued and you will be given the opportunity to respond by submitting amendments and written opinions within 60 days of publication of the notice. If you respond appropriately, you will be able to proceed with registration, but please note that if you do not respond within the period, your application will be rejected (treated as abandoned). Examination efficiency has improved in recent years, and in cases where things go well, it tends to be registered within 4 to 6 months from the time of application (even in the case of a procedural response due to a formality flaw, the processing will only take a few months longer). Please note that Brazil does not charge any special registration fees at the time of registration.
As a publication system, Brazilian design applications arein principle published upon registration. Unlike patents, there is no interim publication for a certain period of time after filing, and the patent is kept private while it is being filed. However, if the applicant wishes, he or she may apply for **confidentiality (temporary postponement of examination)** for 180 days from the date of application. In this case, the application will not be processed immediately after submission, but publication can be delayed for up to 180 days, and the review process will resume after the confidentiality period ends. This system can be used when you want to delay the release of a product to match the timing of its release.
A major feature of Brazil's design system is the ``non-examination principle''. With regard to substantive requirements such as novelty and originality, there is no examination prior to registration, and if the formal requirements are met, the application is immediately registered (in other words, it is a registration system in which there is no official determination of novelty at the time of filing**). Therefore, it is possible to obtain rights quickly, but care must be taken regarding substantive validity of rights after registration.
After registration, the design right holder (applicant) can request a substantive examination (examination of novelty and originality) from the Patent Office at the request of the applicant. This is a voluntary systemand if there is no request, the rights will be maintained without examination until the expiry of the period. A prescribed fee (355 reais as of 2023) is required for requesting an examination. As a result of the substantive examination, if it is determined that the registered design lacks novelty and originality, such as by being a publicly known design, an invalidation trial may be initiated ex officioand the registration may be cancelled. Therefore, it is desirable to file a request for substantive examination and obtain a positive result (approval from the patent office) before exercising rights (infringement warning or filing a lawsuit). If novelty and originality are recognized in the substantive examination, it will be easier to defend even if the other party claims invalidity in the event of an infringement dispute, and the stability of rights will increase.
In addition, under the new design examination standards that will come into effect in October 2023, the "partial design" style of claim method is now permitted. Previously, Brazil did not have a partial design system, and it was interpreted that design registration could not protect only a part of a product. However, currently, it is possible to exclude a part of the product as a "reference part" by using a dotted line depiction and claim the design of only that part. A disclaimer (statement of non-inclusion) to the effect that the dashed line areas are not included in the scope of rights must be included in the specification. It is noteworthy that with this change, it is now possible to obtain rights in Brazil for the design of only the characteristic parts, rather than the entire product, in a form similar to Japan's partial design system.
The duration of a design right in Brazil is 10 years from the filing date. In addition,up to three extensions of five yearscan be granted, providing protectionfor a maximum of 25 years from the filing date. In other words, even after 10 years have passed, it is possible to extend the contract 5 years x 3 times (total of 15 years) by paying the specified renewal fee.
In practice, the first maintenance pension is due for paymenton the fifth year after registration. If you pay the first maintenance fee within the deadline (within 5 years from the date of application), the original 10-year protection period will be maintained, and thereafter, you can extend the protection period by paying a renewal fee in the 10th, 15th, and 20th years. The deadline for payment of the renewal fee is the year before the expiration of each protection period, and late payment along with additional fees is permitted within 6 months after the deadline. Please note that there is no registration fee at the time of registration (the first 5 years are included in the application fee). Additionally, extension procedures can be carried out up to three times (total of 25 years), and design rights cannot be renewed after 25 years.
Once you have obtained a design right in Brazil, be aware of how you can enforce the right against counterfeit products and infringement.
Civil Infringement Lawsuit: If you suspect infringement of your design rights, file a civil lawsuit in state court to enforce your rights. Jurisdiction is the court where the plaintiff (right holder) is located or where the infringement occurred. Remedies include injunctions (injunctions based on preliminary disposition and permanent injunctions based on judgment on the merits) and claims for damages. In order to obtain a preliminary disposition (preliminary injunction), it is necessary to prove that general requirements such as probability of success and imminent threat of invalidation are met. Court proceedings vary depending on the congestion of the competent court, but it is common for cases to take about two to three years from the filing of a lawsuit to a verdict. In addition, the defendant is permitted to assert the invalidity (lack of novelty, etc.) of the registered design as a defense in the lawsuit. Infringement lawsuits and invalidity determinations are originally separate procedures, but they are sometimes treated as one, and it is also possible for the court to make a preliminary judgment on the validity of the right and suspend the proceedings (suspended until a determination of invalidity is made).
Criminal proceedings: Infringement of design rights may be considered acriminal act under Brazilian law. Specifically, the act of manufacturing, selling, importing/exporting a registered design without permission, and the act of selling or possessing counterfeit products for commercial purposes are subject to criminal penalties. Rights holders (and exclusive licensees) can file criminal charges with the police, and if found guilty, the infringer may be subject to fines or imprisonment. However, proceeding with criminal proceedings involves a high burden of proof and procedural costs, so in practice it is common to first take civil measures (warnings and requests for injunctions), and then consider criminal measures in more serious cases.
Border Measures: Brazilian customs authorities have a system in place to detain counterfeit goods at the time of import/export based on requests from design rights holders. The right holder provides detailed information on the suspected infringing product and his/her own design registration information to customs and requests monitoring. If customs discovers the import or export of goods that closely resemble a registered design, the customs will temporarily hold the goods and notify the right holder. Once a rights holder receives a notice, they must promptly seek a formal injunction/seizure order through judicial procedures. Although the processing period varies on a case-by-case basis, customs measures are an effective means of preventing the distribution of counterfeit products.
As mentioned above, in Brazil, design rights infringement can be dealt with throughcivil, criminal, and administrative (customs) routes. There is no protection system for unregistered designs in Brazil, so if an unregistered design is imitated, it is necessary to consider remedies based on copyright and unfair competition prevention laws. Therefore, prior design registration is essential for design protection.
As mentioned above, in order to maintain the design right, it is necessary to pay maintenance pension/renewal fee at the specified time (after the 5th year). Here is an overview of the fee structure.
Official fees: Thetotal official fees required to maintain your design for up to 25 years from the date of filing areestimated at approximately 2,200 Brazilian Reals (BRL, approximately USD 390). This amount includesgovernment feesfrom the initial registration to three renewals, and each renewal fee is generally low (further reductions and exemptions are available for individual applicants). At the time of filing, the prescribed application fee must be paid at the same time as the application and drawings are submitted. In addition, additional fees will be charged if priority claims are involved.
Maintenance annuity/renewal fee: In Brazil, a maintenance annuity is paid in the 5th year to maintain rights until the 10th year, and thereafter, renewal fees are paid in the 10th, 15th, and 20th years to extend the rights period. For example, if a company maintains its rights in full for 25 years, a total of four payments (5th, 10th, 15th and 20th years) are required (the total amount will be around BRL 2,200 as mentioned above). The exact amount of renewal fees may change due to legal revisions, etc., so it is important to check INPI's fee schedule from time to time. If you do not follow the extension procedure, your rights will expire, but you can make a late payment within 6 months.
Agent fee: The above fees are for government offices, and Agency fee to the local agent will also be incurred for the actual application and maintenance. Agent fees vary depending on each agency, but in general, they are said to be at a level that is slightly lower to the same level as Japanin light of the price level in Brazil. In the case of Japanese companies, many cases involve hiring a local representative through a Japanese patent office, and please keep in mind that in this case, there will be costs for both the Japanese and local parties.
Brazil became a member of the international registration system for industrial designs (Hague Convention, Geneva Act) on August 1, 2023. This allows Japanese companies to designate Brazil through the Hague international application and obtain design rights in Brazil. Utilizing international applications has the advantage of being able to centrally manage design protection in multiple countries, but it is also important to pay attention to Brazil-specific requirements.
Points to note when designating Brazil: When designating Brazil in an international application (DM application), the applicant (holder) must be the creator. If you are filing in the name of a legal entity other than the creator, you must include a statement on the form stating that you have been assigned by the creator. This point can be handled through the international application procedure (eHague system). In addition, regarding submission of priority documents, it is recommended to enter DAS code when claiming priority in the Brazilian designation. If you do not have a DAS code, you must submit a priority document (with translation) to the Brazilian Intellectual Property Office via a local representative within 90 days from the date of publication in the International Gazette.
Unity requirement and division: In the Hague international application, it is possible to include multiple designs in one application, but on the Brazilian side, as mentioned above, a maximum of 20 designs, including variations, are allowed in one design application, and they are limited to the same use and features. Therefore, if you file an international application that includes, for example, designs for different products, a Brazilian examiner may reject the Brazilian designation as a violation of the unity of design requirement. Even in the case of a refusal, you are allowed to designate one design to keep and filelocal divisional applications for the rest within60 days of notification from the Brazilian Intellectual Property Office. For each divisional application, it is necessary to pay the prescribed national fee directly to the Brazilian Patent Office in order to convert it into a national application. Therefore, it is important to devise the design structure of the international application in advance in a way that satisfies Brazil's single design requirements (e.g., divide each design into separate international applications if necessary), or keep in mind how to deal with division after rejection.
Examination/Response: Even if the application goes through the Hague, the content and standards of the examination conducted at the Brazilian Patent Office are the same as for domestic applications. If there is a deficiency in the method or requirements are not met, a rejection notification (commonly known as an "A notification") will be sent via WIPO. In that case, unless you submit a written response within 60 days through your local representative, the Brazil-designated portion will ultimately be rejected. In other words, please note that even if you use an international application, you will need to reply in the local language and arrange a representative (on the contrary, even if you specify Brazil in your international application, it is advisable to work with a reliable local agent in Brazil).
When a foreign company or non-resident files a design application in Brazil, the involvement of a local patent attorney or agent is essential. Brazilian law provides thata person domiciled abroad must permanently appoint a qualified representative domiciled in Brazil. The appointed agent has the authority to receive notifications from the Patent Office and to represent the applicant in proceedings and trials. Even if you do not submit a Power of Attorney (POA) at the time of filing, it is still valid as long as you submit it within 60 days after filing (if you do not submit within the deadline, your application will be rejected). Although the power of attorney requires the signature of the applicant (company), it does not require notary certification or consular confirmation, so the procedural burden is relatively light. In the case of Japanese companies, normally a patent office in Japan will work with a local agent to handle the procedures on their behalf, but the local agent will be directly appointed on the POA.
A local lawyer is also required for exercising rights (litigation) after acquiring rights. In Brazil, only persons who are licensed as lawyers may represent themselves in court. If a Japanese company seeks an injunction or damages locally, it is essential that a Brazilian lawyer file the lawsuit. Therefore, it is an important practical point to select a local agent or law firm that can be trusted throughout the entire process, from acquiring rights to exercising them.
We will summarize the main reasons for refusal of Brazilian design applications and the opportunities for applicants to respond.
Violation of formal requirements/violation of unity: Missing required documents, incomplete descriptions in the application, including multiple different designs in one application, etc. will be pointed out at the formalities examination. In many cases, these can be corrected and will be notified in the form of an Office Action rather than a refusal. If the applicant takes measures such as submitting missing materials or filing a divisional application within 60 days, the examination can be continued. If you do not respond within the deadline, your application will be considered rejected (abandoned).
Designs ineligible for registration: Designs that are not eligible for protection under the Design Act will berejected from the beginning. Specifically, purely artistic works (those not intended for industrial use) cannot be registered as designs, and designs that violate public order and morals, those that harm the honor or likeness of others, and those that violate religious beliefs cannot be registered. Furthermore, common or inevitable shapes of articles (e.g. pure geometric shapes such as spheres and cubes, functionally stylized shapes such as screws and gears) are considered to be ``non-decorative'' and cannot be registered as designs. Similarly,shapes that are purely intended to ensure functionality (shapes determined by function) cannot be registered. In such cases, it is difficult to obtain relief through amendment, and the application will be rejected at the examination stage.
Scope of amendment: Amendments for formal deficiencies are permitted, but changes to drawings after filing are strictly restricted. Especially when priority is claimed, changes that do not completely match the drawings of the priority application are considered to be additions of new matter, and there is a risk of rejection of the amendment or loss of priority. The Brazilian Design Examination Standards require that the drawings be "the same drawings as the priority application," and it is not permitted to replace the drawings later to make them consistent with the priority application. Therefore, strategies such as carefully considering the drawings submitted at the time of filing and, if necessary, making voluntary amendments early after filing are required.
As mentioned above, in Brazil, the opportunity for amendment is basically limited to the formal aspects, and deficiencies in substantive requirements (violation of public order and morals, non-decoration, etc.) are fatal. However, it is possible to appeal (trial)** against the refusal decision. You can submit a request for appeal stating the reasons for your objection within 60 days from the date of the official gazette notification of refusal, which will be reconsidered by an internal examiner. In the appeal procedure, a period is set for a third party to submit an opinion, and the examiner also issues another opinion, and the applicant is also given an opportunity to re-argue it. As a result of the trial, if the refusal is overturned, the registration will proceed directly, and if the refusal is upheld, judicial remedies (litigation) will be considered.
The Brazilian design system does not have an opposition system at the application stage. Therefore, if a third party wishes to object to a design application, there is no formal way for them to intervene before registration. If you discover a design application by a competitor, you should first watch trends to see if the design will be registered and then consider what to do after it is registered.
Post-registration invalidation procedures: Once a design is registered, you can request an invalidation trial (administrative registration invalidation procedure). There can be any number of claimants (any interested person is sufficient), and the Brazilian Patent Office (INPI) may initiate the claim ex officio. A request for invalidation trial must be filed within 5 years from the date of public announcement of registration. In principle, invalidation procedures at INPI will not be accepted after 5 years. However, it is understood that it is possible to file a suit for invalidation ina federal court even after this period. Reasons for invalidation that can be asserted include deficiencies in formal requirements (violation of unity, etc.) and lack of substantive requirements (lack of novelty/originality, etc.). In invalidation proceedings, you can ask the Japan Patent Office to cancel the registration, and if you are dissatisfied with the Japan Patent Office's decision, you can ultimately bring it to judicial review.
Defense of invalidity: As mentioned above, a defendant in an infringement action can claim invalidity of a registered design as a defense. This case is characterized by the fact that a judgment can be issued whose validity is denied only between the parties to the lawsuit (interpartes effect). In other words, even without a formal invalidation hearing in federal court, a determination may be made that the design right cannot be enforced against the plaintiff in the context of an infringement lawsuit. However, this decision does not directly affect other third parties. If someone else also wants to confirm the invalidity, they will need to file a separate invalidation trial or invalidation lawsuit.
In general, 5 years after granting rights can be said to be a period of high risk of invalidation in Brazil. If you object to someone else's registered design, it is advisable to request an invalidation trial within this period, and right holders should keep in mind that the risk of administrative invalidation decreases after five years have passed since registration (although there is still a possibility that the design will be challenged in court).
Finally, we will summarize the points and strategies that Japanese companies should keep in mind when protecting and utilizing designs in Brazil.
Early acquisition of rights and utilization of international priority rights: Brazil has a non-examination registration system, so the time from application to registration tends to be shorter than in other countries. Filing in Brazil is a valid option if you want to quickly obtain rights in time for product launch. You can claim Paris priority and file an application in Brazil within six months of filing a design application in Japan, and from 2023 onwards you can also apply for a Hague international application. If you are considering the Brazilian market as a country for product development after filing in Japan, consider filing in Brazil as early as possible (or designating Brazil in the international application). Please note that Brazilian law allows a grace period of 180 days for novelty, so self-disclosure within six months before filing is not considered to have lost novelty. Even in the unlikely event that a Japanese company publishes a design in a product announcement, etc., there is still an opportunity for protection by filing a Brazilian application within six months. However, please be aware that once the priority period (6 months) has passed, protection will no longer be possible.
Bulk application for modified designs: Japan has a related design system, but the basic rule is one application and one design. On the other hand, in Brazil, it is possible to apply for up to 20 variations of the same concept in one application. In the case of products with multiple derivative designs, such as different colors or changes in details, it is more cost-efficient to file as many applications as possible. However, if you mix unrelated designs, it will be rejected, so please consult with your agent to determine the grouping range. Additionally, in Japan, there is a strategy of filing an additional application for a similar design that was not included in the initial design application, but in Brazil, if you file a separate application for a similar design after publication, your own earlier application may become a hindrance. Therefore, it is advisable tocover as much of the variants you wish to protect as possible when filing your first application.
Response to partial designs: As mentioned above, from 2023 it will be possible to make partial claims using broken lines in Brazil. However, it is not an independent system like Japan's partial design system, and there is still little experience with procedures. If a Japanese company wants to protect only part of its product in Brazil, it needs to limit the scope of its rights by cleverly using dashed lines in the drawings. In this case, please do not forget to state in the statement that the dashed line area is not included in the rights. Partial design protection is effective in countering counterfeit products, but registration may be refused if the examiner determines that the part in question is a "commonplace shape" (particularly for part shapes that lack originality when taken alone). This is an effective strategy if it is a noticeable visual feature, even if only partially.
Local agent/language support: Brazil's official language is Portuguese, and documents and publications submitted to the patent office are in Portuguese. It is difficult for Japanese companies to communicate directly, so it is essential to select a reliable local representative. Fortunately, when filing an application in Brazil, the power of attorney does not require notarization, so the procedure is smooth, but by choosing an agent with a proven track record in dealing with Japanese companies, you can avoid mistakes due to differences in culture and business customs. In particular, if it is necessary to respond to a refusal via The Hague, it is necessary to write a response in Portuguese within 60 days after the notification from WIPO, so it is advisable to establish a communication system with a local representativein advance.
Use of rights enforcement and substantive examination: In Brazil, claims for injunctions and damages are allowed for infringement of design rights, and in serious cases, criminal prosecution is also a possibility. When a counterfeit product appears on the market, it is common practice to first send a Cease & Desist letter by certified mail, requesting voluntary discontinuation. If the infringement still persists, we will file a civil lawsuit and, if necessary, apply for a customs injunction. The key point here isthe stability (validity) of rights. Rights obtained without examination are quick, but they also carry the risk of being invalidated by an infringer. Utilizing the above-mentioned request for substantive examination and obtaining approval for the novelty and originality of your company's rights will be a powerful weapon in your litigation strategy. Particularly in Brazil, ex-officio invalidation trials can occur depending on the examiner's examination results, so conversely, it can be said that the rights recognized by the examiner have credibility. Therefore, when a Japanese company acquires a design right in Brazil, it is recommended that actively request substantive examinationfor highly important designs to ensure that all possible precautions are taken.
Cost control: Official design fees in Brazil are relatively low, and there is the advantage that multiple variants can be filed at the same time, making it possible to achieve cost-effective and wide-ranging protection. However, it is important to estimate the total cost, taking into account exchange rate fluctuations and local agent fees, and consider designs in order of priority. For example, for products whose local market size is not very large, we consider the cost-effectiveness of filing applications and make decisions based on a comprehensive intellectual property strategy, such as whether the product can be covered by trademarks or copyrights rather than designs. There is a need for a sharp approach, such as applying for important core designs without hesitation and applying for peripheral designs as needed.
The above is a comprehensive explanation of the overview of the Brazilian design system and practical points. Although Brazil is moving closer to international standards by joining the Hague Agreement in 2023 and implementing new examination standards, it is a unique jurisdiction that still maintains a non-examination policy and its own unique procedures. It is important for Japanese companies to closely monitor the latest trends and collaborate with local experts to acquire and utilize rights appropriately. We hope that the contents of this article will be useful in ensuring that your designs are protected in the Brazilian market.
References and information sources: Brazilian Industrial Property Law (Law No.9,279/96), INPI Design Manual 2nd edition (revised in 2023), ICLG “Designs 2025 – Brazil”, HARAKENZO “Brazilian Design System” column, etc.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).