Protecting Industrial Design in South America: Brazil Legal Framework
Registering an industrial design is an effective way to protect intellectual property for SMEs in several industries. In general, industrial design registration is exploited by companies active in the furniture, electronic and apparel sectors. Not many know, however, that this kind of protection can be exploited in other industries as well, and in certain limited cases can complement other IP tools like patents or copyrights. Moreover, design registration procedure in Brazil takes only 6 months, which is relatively quicker in comparison to trademarks -an average of 3 years or Patents -7 years. On the other hand, in Brazil, unlike in the EU, unregistered designs cannot be protected in any way.
Legal basis for industrial design protection in Brazil
Industrial designs are described by Art. 95 of the Brazilian Industrial Property Law, that says “An industrial design is considered to be an ornamental plastic form of an object or an ornamental arrangement of lines and colors which may be applied to a product, providing a new and original visual result in its external configuration and that may serve as a model for industrial manufacture.”
Therefore any 2D or 3D item that comply with the conditions of novelty, originality and industrial applicability can be registered as an industrial design.
A design is considered novel when it cannot be found in the state of the art. There is an exception: if the design is disclosed no longer than 180 days before its filing date, it can still be registered, provided that the disclosure is made by the author, the INPI Brazil or third-parties, through information obtained by the author.
Originality is the second condition for registration. A design is ‘original’ when it has a distinctive visual appearance compared to other prior objects.
Finally, the design shall be replicable by industrial means – which implies that artisanal objects that cannot be reproduced, cannot be registered as industrial design – although they can, if they have the requirements, be protected by copyright.
It has to be noted, that, according to article 100.II of the Brazilian Industrial Property Law, designs based on solely functional purposes are not registrable. In other words,the ordinary or necessary shape of an object cannot be registered per se.
As we saw, registering an industrial design is quicker than applying for copyright or patent, and although the protection is granted for only 10 years, extendable for three consecutive five-year periods, applying for an industrial design can be more efficient.
In some cases, although the issue is still very much debated in the case law, the protection can be cumulated. For instance, jewelery items -provided that they can be produced industrially – can be granted both copyright and industrial design protection.
In case of infringement, civil courts deal with the enforcement and can act relatively faster than for patent enforcements: the evaluation of the infringement is made by visual inspection, which can be done by the judge directly, without the need to rely on external experts. For the same reason, it is also easier to obtain a preliminary injunction.